Patent decision

BL number
O/388/17
Concerning rights in
EP(UK)2069635
Hearing Officer
Mr G J Rose'Meyer
Decision date
18 August 2017
Person(s) or Company(s) involved
A.E.B. S.R.L.
Provisions discussed
Section 28; rule 40(1)
Keywords
Restoration
Related Decisions
None

Summary

This decision concerns whether an application to restore the patent in suit can be considered as having being correctly filed in time.

The renewal fees in respect of the eighth year of this patent fell due on 31 July 2014. The renewal fees were not paid by that date nor during the extended period of six months allowed under section 25(4) upon payment of the prescribed additional fees.

An application for restoration was filed on 17 October 2016, outside the period prescribed under rule 40(1) of the Patents Rules 2007 for applying for restoration. The date by which the application should have been filed was 29 February 2016.

The evidence provided showed that due to an administrative error in the office of the applicants’ Italian attorneys, the patent in suit’s details were incorrectly transcribed on to their systems which resulted in the renewal fees not being paid. The Hearing Officer later found that the mistake in the Italian attorney’s office was not relevant to these proceedings as these circumstances went to the further provisions of s.28 and not to whether the application had been correctly filed in time.

The applicants argued that there had either been an irregularity in the IPO under rule 107 or a failure of a communication service under rule 111, but at the hearing, Counsel for the applicants relied purely on the latter ground as two official notifications which should have been received by the applicants and which would have meant the applicants would have acted to either renew the patent on time or to file the application for restoration on time, never arrived.

The HO was satisfied by the evidence filed by the applicants showing that on the balance of probabilities, there had been a failure in a communication service (in this case the UK postal service) and as such, he utilised the provisions of r.111 to extend the period under s. 28 and r. 40(1) for applying for restoration.

He remitted the application to the IPO to make a full determination under s.28 whether the patent could be restored or not.

Full decision O/388/17 PDF document80Kb