Chitolie v Patent Office

I have before me today an appeal by Dick Lucian Chitolie from a decision of the Assistant Director, acting on behalf of the Comptroller, dated 25 March 2004, in relation to Mr Chitolie’s patent application GB0106932.7.

There was a hearing to determine when this appeal should come on, at which Mr Chitolie was present. He was informed that the appeal would come on in a window of three days, commencing with today’s date. I am told that, on the date of that hearing, a letter was sent out to the parties, including Mr Chitolie, notifying him of the trial window. Mr Chitolie has not attended this morning on this appeal. I am informed by Mr Tappin, who appears on behalf of the Comptroller, who is a respondent to this appeal, that an attempt to contact Mr Chitolie this morning at the telephone number which was last known to be his correct telephone number has resulted in the Comptroller being informed that Mr Chitolie no longer is present at that telephone number. The result is that this hearing has come on for determination without the presence of Mr Chitolie.

I have, nevertheless, been supplied with a very full skeleton argument prepared by Mr Tappin and, of course, I have had an opportunity to read in advance the decision of the Assistant Director. The essential facts are as follows.

On 20 March 2001, Mr Chitolie filed the present patent application. The application was published on 14 November 2001 and, accordingly, the six month period for requesting substantive examination pursuant to the provisions of section 18(1) of the Act and rule 33.2 of the Patent Rules expired on 14 May 2002. The grace period provided by rule 110.3 expired on 14 June 2002. Mr Chitolie did not file a request for substantive examination within that period. Despite a reminder sent by the Patent Office on 30 April 2002, no request for substantive examination has been received. As Mr Tappin points out in his skeleton, accordingly the application was treated as having been withdrawn pursuant to section 18(1) of the Act and rule 33.2, and a notice to that effect was published in the Journal on 28 August 2002. That means that as and from the latter date, members of the public were informed via the register that this patent application had been withdrawn.

Many months later on 31 March 2003 Mr Chitolie applied for his patent application to be allowed to proceed. That request was published in the Journal on 31 May 2003. Thus it will be seen that, between 28 August 2002 and 31 May 2003, members of the public would have believed, entirely reasonably, that this patent application was withdrawn and would not give rise to any valid patent monopoly.

Pursuant to Mr Chitolie’s request, by letters dated 12 September 2003 and 19 November 2003, Mr Chitolie was informed by the Office that his request would be allowed on payment of the prescribed fee and acceptance of certain conditions. Those conditions, in effect, mirror those to be found in section 28(a) of the Act, which apply when a patent is restored under section 28. They give protection to third parties who may have commenced acts, or have set about preparing to commence acts, which might infringe the patent during the period when, according to the public register, the patent application had been withdrawn or had lapsed. The necessity or desirability of imposing such terms was discussed by Mr Justice Faulkner in Coal Industry Patents Limited Application [1986] RPC 57. Mr Chitolie declined to accept the conditions and requested a hearing. Such a hearing was duly appointed and took place before the Assistant Director, Mr Wright, on 4 March 2004.

The Comptroller has a very wide discretion in a belated application like this either to allow or refuse to allow the application to be brought back to life and, if he allows it to be revived, to impose terms. As I have indicated, pursuant to the judgment of Mr Justice Faulkner, the imposition of such terms is a fairly standard condition imposed by the Comptroller. In his decision of 25 March 2004, the Assistant Director explained clearly and, in my view, perfectly fairly why the imposition of such conditions in this case would be appropriate.

On any appeal, the onus is on the appellant to demonstrate that the decision appealed against is in error. That is a particularly heavy onus when the appeal is essentially one against the exercise of a discretion. In my view, there is no need for me to go through all the considerations which are set out in the Assistant Director’s decision. In my judgment, the Assistant Director’s decision is unimpeachable. Indeed, had this not been an appeal but had come to me at first instance, I have no doubt at all that I would have arrived at exactly the same conclusion as was arrived at by Mr Wright. The appeal is, therefore, dismissed.