Patent decision

BL number
O/514/16
Concerning rights in
GB1205845.9
Hearing Officer
Mr G J Rose'Meyer
Decision date
3 November 2016
Person(s) or Company(s) involved
Peter David Hurley
Provisions discussed
r. 32(1); s.20A; r.107; r.49
Keywords
Reinstatement
Related Decisions
None

Summary

This decision concerns whether an application to reinstate the application in suit can be considered as having being correctly filed in time under rule 32(1), so as to go on to consider whether it can be reinstated under the terms of section 20A of the Act.

Patent application was filed on 31 March 2012. A preliminary examination report was routinely issued to the applicant to the address/address for service submitted on the application, to which the applicant responded in good time. On 20 May 2013 the patent examiner issued the Search Report and from here on a number of pieces of official correspondence relating to the application were issued, all to the address for service on record, but no response was received to any of these. Eventually a request for substantive examination (Form 10) was filed, but outside the time limit permitted. The applicant was told this and given an opportunity to extend that period, but no extension of time request was received. The application was terminated with effect from 2 April 2014 for the applicant’s failure to file the Form 10 on time and a refund of the Form 10 fee was issued.

On 1 April 2016 an application to reinstate the application was received, but the office took the preliminary view that the application was filed outside the time limit set by r.32(1). The applicant disputed this and requested a decision from the papers.

The evidence showed that the applicant had moved address soon after filing the original application, but had not requested that the office change his address and address for service on its records. The applicant disputed this because he pointed out that he had written his new address on the Form FS2 accompanying the filing of his request for a search on a Form 9A. He further showed through evidence that the Office has issued two receipts to that new address. He argued that the period for filing his application should be extended using the provisions of r.107 because the Office had made procedural irregularities by sending official correspondence which would have alerted him to crucial time periods etc to his old address, causing him to file the Form 10 too late. The Office argued that he had never requested that his address be changed and the filing of the new address on the Form FS2 did not amount to a request to do so, so no irregularity on the Office’s part had occurred.

The Hearing Officer found that the Office had followed its correct procedures when sending receipts to the address submitted on Form FS2. The fact that the applicant had written his new address on the FS2 did not amount to a request under r.49 to change his address/address for service. As such, no irregularity in procedure on the part of the Office had occurred and the period under r.32(1) - once the hearing officer had established what this was in this case - for filing the reinstatement could not be extended using those provisions. He concluded therefore that the application was filed outside the period prescribed in r.32(1).

It followed that he gave no further consideration under section 20A as to whether the application can be reinstated.

Full decision O/514/16 PDF document98Kb