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Patents: when things go wrong


14th Jun 2013

Given that the process of obtaining and maintaining a patent is characterised by a succession of deadlines and time limits, it is inevitable that once in a while applicants or patentees may find themselves unable to take the action required of them within the prescribed term. In many cases, the penalty imposed by the Patent Office is a ‘loss’ of the proprietor’s rights which, though it may be only temporary, can pose a threat to the ultimate protection provided by a patent. Here, we examine the situation that presents itself when, regrettably, ‘something has gone wrong’.

Missed Deadlines

When a deadline is missed by an applicant, the ensuing communication from the Patent Office advising that the failure to act may result in the loss of any and all rights can portray the consequences of such a mistake as cause for considerable alarm.

Thankfully, in these situations refuge can often be found in one or more useful rules provided in patent law. The UK Patents Act 1977, for instance, has separate sections devoted to the reinstatement of a patent application that has been deemed withdrawn following failure to meet with a procedural deadline, and to the restoration of a patent that has lapsed owing to a neglected renewal fee payment. The European Patent Office’s one-size-fits-all “re-establishment of rights” procedure is another example of a procedure that exists, essentially, to give the applicant or the patentee – for a price – a chance to rectify their mistake. In both cases, however, restoration of lost rights is not automatic: the rightholder will need to petition the Patent Office to revive their application or patent, placing it back on the list of pending applications or rights that are in force.

Procedure

While practical differences exist between the European procedure for reviving an application or patent and that followed in the UK (the timescales involved are not identical; the costs even less so), the substance of the respective provisions is similar in many respects. Both jurisdictions, for example, impart ongoing rights to third parties who, upon noticing that a patent or application has ceased to have effect, begin to work the associated invention, only to find it out of bounds once more following a successful application for restoration. Further, in both cases work must be done to convince the authorities that the proprietor did not mean to give up his rights – but it is here, in the degree of convincing required, that perhaps the most notable discrepancy between the two systems can be found.

With All Due Care

The European Patent Office, before agreeing to re-establish any rights whatsoever, must be satisfied that a time limit was exceeded “in spite of all due care required by the circumstances having been taken”. Without descending into a detailed discussion of the case law on the subject, it is fair to characterise the hoop as, at best, an awkward one to jump through. Force majeur aside, acceptable excuses are few and far between: proven systems must generally be in place to ensure that these things simply cannot happen, and failure of those systems must be a one-time occurrence. Plain lack of funds will generally not be reason enough for a missed deadline to be deemed met, though the test does have some latitude for financial difficulties to be advanced as arguments in favour of re-establishment. Providing those difficulties are unavoidable – the lack of funds persisted in spite of the requester having exercised all due care in seeking financial assistance – the plea can succeed (J 22/88).

‘Unintentional’

For its part the UK IPO has, since 2005, reinstated applications and restored patents wherever it could be shown that the failure on behalf of the applicant or patentee was “unintentional”. (Prior to the revision, the UK Patents Act 1977 implemented a ‘reasonable care’ test not dissimilar to that of the EPO.) The natural and everyday meaning of the respective wordings would suggest that this latter threshold, whilst still a de facto hurdle, is a considerably lower one, and indeed the case law in the UK since the new test was introduced bears this out. For example, where the application or patent lapsed because the applicant’s intentions were not properly communicated, restoration will generally be possible.

Notably, in contrast to the situation before the EPO, failure to secure funds has been found not to fall within the meaning of ‘unintentional’ on more than one occasion. The most recent example is the decision of the Hearing Officer in BL O/034/13 earlier this year. There, it was held that a “conscious decision” not to pay a fee could not “logically” be held to be unintentional, irrespective of the reasons behind that decision (including incapacity to finance the payment).

Cases such as these serve as a useful reminder that, while the ‘unintentional’ test is in general a less stringent one than Europe’s ‘all due care’, the differences between the two are not straightforward. Moreover, neither has a definition that is written in law: each case will fall to be determined by its facts, ultimately at the discretion of the Patent Office.

That, perhaps, is the material point that needs to be borne in mind by those in possession of or seeking to obtain patent rights. But it also gives rise to a cautionary note to third parties with an interest in the rights of others. The status of a patent or application can usually be ascertained from the patent register, and where one is keen to exploit an invention there can be a temptation to interpret the marking of a patent as having lapsed as notification that the technology is in the public domain. However, what is not generally published is the extent to which that loss of rights is definitive. In other words, third parties are often in the dark as to whether any reinstatement, restoration or re-establishment procedures are open to the proprietor. Since those procedures, if used successfully, result in the restoration of the patent or application to its original condition, the status “terminated” or “expired” might more usefully read: “proceed with great caution”.

Whether you are seeking to revive your application or patent or are in need of advice as to your position in relation to somebody else’s rights, your Reddie & Grose LLP attorney will be able to help.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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