IN THE MATTER OF THE PATENTS ACT 1977

This is an appeal from the decision dated 23^rd September 2005 of Mr R C Kennell acting for the Comptroller. The Deputy Director refused to “rescind” the grant of GB 2377401 so as to permit the applicant to file a divisional based upon the corresponding application. The application to “rescind” the grant was made pursuant to rule 100 of the Patents Rules 1995. The Deputy Director accepted that there was a jurisdiction to “rescind” the grant, but refused in his discretion to exercise that power. This appeal challenges the exercise of the Comptroller’s discretion, assuming that the discretion fell to be exercised afresh. It does not: whether the appeal is by way of review or by way of rehearing, the exercise of a discretion will only be revisited if the tribunal below has taken into account things it ought not to have taken into account, has failed to take into account things which it ought to have taken into account, or is plainly wrong.

GB 0211639.0 was filed on 21^st May 2002, claiming priority from 25^th May 2001. It was concerned with fugitive casting patterns. It followed from the declared priority date that the application would have to be in order for grant by 24^th November 2005, as would any divisional applications claiming priority from the same date. On 8^th November 2002, the search report under s.17(5) pointed out that there was plurality of invention, and in accordance with the normal practice the search dealt only with the first identified invention.

Notice of publication of the application was given on 17^th December 2002, and the date for requesting substantive examination was 15^th July 2003. The application was published on 15^th January 2003.

The request for substantive examination was made on 29^th April 2003, well within the time limit, and the examination report under s.18(3) appeared on 30^th January 2004. The examiner objected to plurality of invention, and indicated a need to amend. As always when the objection of plurality of invention is taken, the examiner’s letter pointed out to the applicant that it might wish to consider filing divisional applications. The standard form is as follows:

“You will need to amend your claims, so that they relate to only one invention or inventive concept. You will also need to make consequential amendments to the description. You may wish to consider filing divisional applications. Any such applications should normally be filed no later than 3 months before the expiry of the period for putting the present application in order.”

The agents acting on behalf of the applicant replied to the examiner’s report on 22^nd July 2004, amending the claims so as to relate to one invention only. The letter said this:

“The amendments are made without prejudice to the applicant’s rights to seek protection subsequently in the prosecution of this application or on any divisional for any subject matter originally disclosed in this application.”

The examiner maintained an objection to the amended claims on the grounds of novelty and/or lack of inventive step, and this objection was finally overcome by 21^st March 2005, where the only remaining objections to the specification were identified in a further examination report as being a want of clarity in respect of certain of the claims as then formulated.

On 26^th April 2005 the Patent Office sent the letter under s.18(4) informing the applicant that the application complied with the requirements of the Act and Rules and that “you are therefore granted a patent (for the purposes of Sections 1-23 of the Act) as from the date of this letter”. The grant of the patent was stated to be expected to be published in the Journal on 25^th May 2005 (as in fact happened) and accordingly informed the proprietor that “the patent will be treated for all later sections of the Act as having been granted and as taking effect on that date”.

Although s.15 of the Act has now been extensively amended by The Regulatory Reform (Patents) Order 2004 (SI 2004/2357) from 1^st January 2005, the substance of the relevant provisions is unchanged. We are here concerned with the filing of a divisional application or applications under s.15(4) before amendment or s.15(9) after amendment. In both cases, the period for filing a divisional application comes to an end with the grant of the patent. While for the purposes of the provisions of the Act following s.25 a patent is treated as having been granted and as taking effect on the date on which notice of its grant is published in the Journal, there is no corresponding provision in respect of the sections preceding s.25. Section 18(4) provides for grant (subject to matters which are not for present purposes relevant) on payment within the prescribed period of any fee prescribed. No such fee has been prescribed, and it seems to me that the effect of the content of the letter which I have quoted above is that the patent is granted by virtue of s.18(4) from that date. The period allowed for a divisional application accordingly came to an end on that date.

It is the Comptroller’s practice to permit what is called “rescission” of the final report under s.18(4) or of the grant of the patent referred to in the letter. The Manual of Patent Practice (May 2003 edition) states that rescission of grant in these circumstances (this can only mean rescission prior to advertisement of grant in the Journal) is possible where rule 100 of the Patents Rules 1995 (as amended) is satisfied. Rule 100 provides as follows:

“100.

—(1)  Subject to paragraph (2) below, any document filed in any proceedings before the comptroller may, if he thinks fit, be amended, and any irregularity in procedure in or before the Patent Office may be rectified, on such terms as he may direct.

    (2)  In the case of an irregularity or prospective irregularity—

(a)

which consists of a failure to comply with any limitation as to times or periods specified in the Act … or prescribed in these Rules … which has occurred, or appears to the comptroller is likely to occur in the absence of a direction under this rule;

(b)

which is attributable wholly or in part to an error, default or omission on the part of the Patent Office; and

(c)

which it appears to the comptroller should be rectified,

the comptroller may direct that the time or period in question shall be altered but not otherwise.

(3)

Paragraph (2) above is without prejudice to the comptroller's power to extend any times or periods under rule 110 or 111.”

The effect of “rescinding” the grant of the patent is to extend the time for applying for a divisional under s.15(4) or s.15(9). The Comptroller considers that such a course amounts to the rectification of an irregularity in procedure in or before the Patent Office within rule 100, and thus to be possible only if it is attributable wholly or in part to an error, default or omission on the part of the Patent Office.

In the present case, the Hearing Officer was prepared to assume in the applicants favour that there had been such a default or omission in the failure to send the letter known as EL26 in the circumstances set out in paragraph 15.46 of the Manual. The passage in the Manual describing the circumstances in which EL26 is to be sent is certainly undesirably obscure. The entire passage is as follows:

“If a divisional application has been foreshadowed in a letter but not yet filed, an “in order” marking on the parent application should also be deferred. (Applicants should not be allowed to abuse this practice as a way of postponing grant or to keep options open as a matter of general policy (Luk Lamellan und Kupplungsbau GmbH’s application [1997] RPC 104) but account should be taken of the genuine needs of applicants. If a divisional filing is “foreshadowed” in circumstances where division appears unlikely, the applicant should be asked for further details of his intentions.) Whenever an applicant has indicated the possibility of filing a divisional application, or when an application is found to be in order following amendment to meet an objection under s.14(5)(d), EL26 should be issued provided that at least one month of the r.24(1) period allowed for filing divisionals remains. If less than one month of this period remains EL26 should not issue but nevertheless the “parent” application should not be marked in order for grant immediately. When EL26 has issued the “parent” application subsequently should be sent for grant two months after the date of the letter if a divisional has not been filed or explicitly foreshadowed in the meantime. When EL26 did not issue because the expiry of the r.24(1) period was imminent, the “parent” should be sent to grant one month after the period has expired unless a divisional has been filed or explicitly foreshadowed before then. The application can be sent for grant earlier if the applicant or agent requests this in writing. If a definite intention to file a divisional application has been stated without any indication of timescale (or with an unreasonably long one) and no objections remain on the “parent”, the examiner should write to the applicant indicating that if the application is found to be in order on or after a certain date (eg a month from the date of the letter) then it will be sent to grant, precluding the possibility of filing a divisional application.”

It will be noted that one of the more striking features of this procedure is that the reminder letter is sent if two conditions are satisfied: (i) a divisional filing has been “foreshadowed”; and (ii) more than one month of the rule 24(1) period remains. Thus if less than that period remains, there is no need to send an EL26.

Howmet contended on three separate grounds that the Office had made an error in failing to send the EL26. These were, respectively, (i) failure to send an EL26 when they were indicating the possibility of filing a divisional; (ii) failure to send an EL26 after an amendment to deal with an objection of lack of unity; and (iii) granting a patent which contained product claims, but also disclosed an embodiment of the invention consisting of a method. The Hearing Officer accepted that it might be said that there was an error in failing to send an EL26 after an amendment to deal with lack of unity, largely because of the ambiguity in the Manual entry that I have described above. Although the amendment had taken place in July 2004, and there had been two further rounds of examination, it might be said that that was irrelevant.

The Hearing Officer nonetheless determined the case against Howmet in the exercise of his discretion. It seems to me that a straightforward approach to the exercise of a discretion in a case of this description, once it is accepted that there has been a relevant error, default or omission on the part of the Office, is to ask whether, had the Office done what it should have done, the applicant would have taken the step closed to him in the events that have happened. What the Hearing Officer did in the present case was (rightly) to criticise the applicant for its failure to respond timeously to the need to make divisional applications. The Hearing Officer’s findings as to what took place on the applicant’s side was not criticised and I shall set it out here.

“6.

The applicant, Howmet Research Corporation, is a wholly-owned subsidiary of Howmet Corporation, itself a subsidiary of Alcoa Inc. Mr Topolosky says that at the time the application was filed he was a patent attorney with Alcoa’s IP Law Group in Pittsburgh with supervisory responsibility for Howmet’s IP portfolio, although the ultimate authority for many IP matters including the filing of divisional applications rested with Howmet. This arrangement continued until 30 September 2003 when Alcoa disbanded the IP Law Group and outsourced responsibility for its IP function to Eckert, with Mr Topolosky joining the firm as special counsel on 1 October 2003.

7.

However, initially Mr Topolosky retained only a supervisory responsibility for Howmet. The day-to-day responsibility in the present case rested with an attorney in private practice, Mr Edward Timmer, who had drafted and filed the originating US application before Mr Topolosky joined Eckert. The UK application was being handled by Langner Parry on the basis of instructions from Mr Timmer via its US associates Ladas & Parry. On 8 July 2004, in response to the Patent Office’s first substantive examination report dated 30 January 2004 and objecting amongst other things to plurality of invention, Mr Timmer instructed Ladas & Parry to hold the filing of divisional applications in abeyance and asked for advice as to the latest date when they could be filed. Plurality of invention had in fact been raised by the Patent Office in its search report dated 7 November 2002. It appears that as a result of that report Mr Timmer had already been advised by Ladas & Parry in a letter dated 10 December 2003 that he had until August 2005 to file divisional applications, and that the additional search fees should be paid not later than April 2005 in order to ensure that the Patent Office had time to carry out the searches.

8.

Mr Topolosky says that these dates were entered into Eckert’s electronic docketing system. He explained that it was standard practice in Alcoa and other firms to defer the filing of divisional applications until the prospective divisional claims had been searched and their allowable scope had been settled, and that no decision had been taken in this case not to file divisionals.

9.

All this took place against a background of Mr Topolosky gradually assuming closer control of Howmet’s foreign patent portfolio, with overseas associates corresponding directly with him. He says that this resulted in a substantial extra workload which entailed him dealing with matters on a priority basis, so that Mr Timmer still gave the instructions to respond to the Patent Office’s second examination report dated 26 August 2004. However following receipt of a third examination report dated 20 January 2005, it was Mr Topolosky – on the expectation of Eckert that the contact through Mr Timmer should be phased out – who gave instructions to Ladas & Parry on 2 March 2005 to respond.

10.

At this point the question of what to do about the further inventions identified by the Patent Office remained in abeyance. From a timeline of events and associated correspondence submitted by Mr Topolosky, it appears that Eckert’s docketing system generated a reminder on 1 April 2005 that the matter was outstanding, and that Mr Topolosky followed this up by e-mail enquiries to Mr Timmer and to Dr Martyn Matheson of Ladas & Parry on 6 and 7 April 2005 respectively. However these enquiries appear to have crossed with a letter sent by fax and mail to Mr Tomolosky by Dr Matheson on 4 April 2005 asking for instructions about additional searches and divisional applications. Mr Topolosky does not recall seeing this until the fax reached his desk on 19 April 2005 and is unable to establish a reason for the delay; although the letter was mis-addressed to the Intellectual Property Law Group at Alcoa, he says that his office location had not actually changed. He believes the delay was most likely due to technical communications problems or to a clerical error, and exacerbated by the changes in IP responsibilities within Eckert.

11.

Having received the letter, Mr Topolosky contacted Howmet for instructions, as a result of which he e-mailed instructions on 25 April 2005 to Dr Matheson at Ladas & Parry for a search to be made on one of the further inventions identified by the Patent Office. Dr Matheson wrote accordingly to Mr Doble at Langner Parry on 2 May 2005. However, suspecting that grant of the UK patent might be imminent, Mr Topolosky e-mailed Dr Matheson again on 5 May 2005 instructing the filing of divisional applications on all the further inventions identified by the Patent Office. Unfortunately, by this time Langner Parry had already written to Dr Matheson (on 27 April 2005) notifying him of grant in the UK. I asked Mr Doble what exactly had prompted Mr Topolosky to raise the matter of divisionals at this stage, but Mr Doble was unable to shed any further light.”

In paragraph 38 of the Decision, the Hearing Officer accepts that

“if the examiner had issued EL26 when the application was found to be in order, then Langner Parry would have been able to alert their associates to the need to speed up the filing of divisional applications. I also accept that the delay of around 14 days in the 4 April fax reaching Mr Topolosky was a one-off situation … and that without it Mr Doble would in all probability have received the instructions for further search in time to head off grant of the application by the Office.”

The Hearing Officer accordingly found that had the Office sent EL26, it would, on a balance of probabilities, have been acted upon. He nonetheless decided the case against the applicant for the reasons set out in paragraphs 39 to 41 of his Decision. In these paragraphs, he identifies certain failings on the part of the applicant and its representatives. He finds that had their strategy for dealing with divisionals been less risky, they would anyway have applied for those divisionals. I do of course accept this, but it does not seem to me to be an answer to the application. Once it has been shown that the applicant would not have failed to take the step in question if the Office had not been guilty of an error, default etc., there can, in my judgment, be few reasons why the Comptroller’s discretion should be exercised against him. Of course, the applicant could have set up a system which would have enabled it to apply for its divisionals in plenty of time, but the sending of EL26 is an obligation publicly assumed by the Office and therefore constitutes part of the safety-net provided by the Comptroller to the advantage of careless applicants. That the applicant has himself been careless does not, it seems to me, constitute a reason for denying him the safety-net which the Comptroller should have provided, but did not.

Mr Hamer, on the part of the applicant, raised a number of interesting points relating to the impact of the European Convention on Human Rights on circumstances such as these. I hope it is not discourteous if I do not discuss these contentions. This appeal must be allowed and I will hear Counsel on the appropriate procedural steps to take to enable the position to be rectified.