Patent decision

BL number
Concerning rights in
Whether a request to make a late declaration of priority under section 5(2B) for patent no. GB 0504687.5 should be allowed
Hearing Officer
Mr G J Rose'Meyer
Decision date
30 October 2006
Person(s) or Company(s) involved
Abaco Machines (Australasia) Pty Ltd
Provisions discussed
PA 1977, section 5(2B)
Priority date
Related Decisions


The application GB 0504687.5 was filed on 7th March 2005 and claimed priority from a Vietnamese application dated 7th January 2004, outside the twelve month period for normal priority claims. This filing was accompanied by a request to make a late declaration of priority under s. 5(2B) of the Act. The applicant had instructed its Australian attorneys to file a PCT application designating the UK and claiming priority from the Vietnamese application. Unfortunately due to a number of internal errors, the date for filing the PCT application was miscalculated in the attorney’s offices and the deadline for filing the PCT was missed. In order to try and retrieve the situation in the UK, this application was filed. The applicant asserted that the mistake in filing the PCT was an isolated error and that the failure to file that international application had been unintentional. The office accepted this, but took the view that the international application was not the “application in suit” specified in s. 5(2C)(b). The applicant was referred to the office decision in Sirna Therapeutics Inc - BLO/240/05, the only other decision to date on this matter, which essentially established the office’s view. At the hearing the applicant’s representatives acknowledged that decision, but argued that its conclusions were not consistent with s. 89(1) of the Patents Act. The Hearing Officer held in his decision that the substantive circumstances of this case and Sirna were effectively identical. Although not bound by that decision, nothing substantive at issue in this case led him to differ from the decision in Sirna. The hearing officer held that to satisfy section 5(2C)(b) the applicant had to have intended to file the very same GB national application within the twelve-month period. In the present case this had not been satisfied. Rather the applicant intended to file a different application, namely a PCT application, before the end of the twelve month period. The hearing officer also found that no such PCT application was in existence and for this reason also such an application could not be considered as 'the application in suit' for the purposes of s.5 of the Act. Therefore the request was refused. As also in the Sirna decision, the hearing officer held that the arguments surrounding the relationship between s. 5 and s. 89(1) of the Act were not substantive to this case, so did not deal with them.

Full decision O/309/06 PDF document37Kb