Patent decision
- BL number
- O/660/17
- Concerning rights in
- GB1404625.4
- Hearing Officer
- Dr J E Porter
- Decision date
- 21 December 2017
- Person(s) or Company(s) involved
- Cummins-Allison Corp.
- Provisions discussed
- Patents Act 1977 section 15(9); rules 19 and 108
- Keywords
- Divisional application, Extensions of time, Section 20 period
- Related Decisions
- None
Summary
An intention to grant letter was issued on 15 August 2017, exactly one month before the compliance date of the case. On the compliance date itself, the applicant’s attorney filed a new patent application and requested that it have divisional status. Also filed was a request for an as-of-right two month extension and a further discretionary extension of the compliance period on the earlier case - so that the divisional application would be filed before the statutory deadline.
Evidence showed that there had been a changeover in US attorneys, a changeover in attorneys within the UK firm, and a move from paper to electronic files within that firm leading to the loss of a paper note which had been created by the previous attorney regarding a potential divisional application. This led the present attorney to clear a timely reminder from their system without filing a divisional application. The hearing officer held that this constituted an exceptional course of events.
The hearing officer weighed the administrative error that had occurred against the diligence shown generally by the applicant and US and UK attorneys in the way that the case was progressed, in the divisional reminder properly put into the UK attorney’s system for the right date, and in the timely response from the applicant and US attorney when prompted by the UK attorney’s interpretation of the notification of intention to grant as setting a new divisional filing deadline. On balance he held that those involved acted diligently overall.
Discretion was therefore exercised favourably to extend the compliance period. In light of this, the hearing officer did not consider separate arguments that discretion should be exercised favourably in light of a purported deadline for divisional filings being set by the intention to grant letter.
Full decision O/660/17 
92Kb
