Anning, Re Decision of Comptroller-General of Patents

This is an appeal against the decision no. BL O/374/06 of Mr R C Kennell acting for the Comptroller-General dated 27^th December 2006, in which he refused to reinstate Mr Anning’s application, serial no. GB 2369347. There have been two failures to meet time limits: Mr Anning failed to reply to the examiner’s report under s.18(3) Patents Act 1977 and, by the time of the hearing before the Hearing Officer, he had failed to meet the overall time limit for putting the application in order for grant under s.20(1) of the 1977 Act.

As usual in such a case, it is helpful to keep the chronology of events firmly in mind. In summary, the chronology is as follows.

On 24^th November 2000, the application was filed, receiving application no. GB 0028762.3. The preliminary examination report under s.17(2) was sent on 11^th December 2000. This report deals with formalities. The search report followed on 25^th May 2001. The search report, issued under s.17(5) of the 1977 Act, sets out the result of the search of the prior art conducted by the examiner and the scope of that search. In June and September 2001, Mr Anning’s then patent attorneys complied with the outstanding formalities requirements set out in the preliminary examination report. The application was published on 29^th May 2002.

The next stage in an application is for the applicant to request a substantive examination. This step has to be taken within six months of the date of publication in the ordinary case, and on 12^th November 2002 Mr Anning’s attorneys were sent the standard form reminder to request substantive examination on Form 10/77 by 29^th November 2002 (or pay the fee for an extension of two months from that date). On 27^th November 2002 Form 10/77 was filed.

During 2003, there was no activity on the Patent Office front, but Mr Anning received letters from his patent attorneys relating to an international application PCT/GB01/05119 in respect of a related invention. These letters have been disclosed in the context of the present application, but evidently form part of a longer sequence of communications. There are no replies from Mr Anning to any of these letters: it appears that his practice was to communicate with his patent attorneys by telephone. A letter of 2^nd September 2003 records that on 7^th April 2003 Mr Anning had had a telephone conversation with the individual dealing with his case and had instructed him not to proceed further with the PCT application. The letter of 2^nd September was written seeking instructions for the conversion of the PCT application into a European patent application, the date for which had passed but for which an extension of time was sought. The final paragraph of this letter reads “If we do not hear from you we shall assume that it was your intention not to proceed and no action will be taken in this matter”, and Mr Anning’s evidence was that “I took no further action”.

It is clear, I think, that Mr Anning gave no express instructions for the abandonment of the UK application with which the current application is concerned, but that he failed to respond to requests from his patent attorneys for instruction, because he wanted that it should be placed “on hold”, as he put it, until he was in a better position practically to demonstrate how his invention worked.

Another six months elapsed before the substantive examination report under s.18(3) was produced in answer to the request on Form 10/77. Accompanying that report was a standard form letter giving Mr Anning until 21^st October 2004 to respond. Essentially, the invention as claimed in claims 1, 3, 4, 6 and 10 of the then specification was, in the examiner’s view, anticipated, and the invention of claims 1, 2 and 4-11 was, in the examiner’s view, obvious. Accordingly, a reply was positively required, and would have to answer the examiner’s objections. It seems that there was a discussion between Mr Anning and his patent attorneys on 4^th October 2004, during which Mr Anning was asked to confirm in writing whether or not he wished them to proceed with the application. On 18^th October 2004, his patent attorneys faxed Mr Anning with a message headed “URGENT - DEADLINE THURSDAY 21^ST OCTOBER 2004”, asking for his instructions by return fax. It appears that no response was received to this fax and his attorneys took no further steps.

Notwithstanding the failure to comply with the direction given by the examiner for a reply to the substantive examination report under s.18(3) of the 1977 Act, the Comptroller did not refuse the application. The period prescribed under s.18(4) and 20(1), which was four years six months from the declared priority date, expired on 24^th May 2005, and on 13^th April 2005 the Patent Office wrote drawing attention to the failure to respond to the report. The letter, which is largely in standard form, is as follows:

“You have not filed a reply to the examiner’s report dated 21^st April 2004. The latest date for reply to that report was 21^st October 2004. Accordingly we intend to treat your application as refused.

If you wish to reply to the report even though the date set for doing so has passed, you should contact me immediately with your reply, explaining why it is late. For the Office to accept your reply at this late stage you will need to have a good reason for not replying to the examination report by the date set.

If you do wish to reply, you will have to do so by 24^th May 2005 since the Office will treat your application as refused if it is not in order for grant by this deadline. However, you can extend this deadline by two months by filing a Patents Form 52/77 and paying a fee of £135. and further extensions to this deadline may subsequently be possible. Even if you extend this deadline, a rely to the examiner’s report will still not be accepted unless you can provide a good reason for its lateness.

Please mark any correspondence about this case ‘Urgent’.”

There was no reply to this letter and the period for putting the application in order expired on 24^th May 2005.

This application was made on 22^nd May 2006. It is rendered possible by the provisions of s.20A of the Act, as follows:

“ 20A.–(1) Subsection (2) below applies where an application for a patent is refused, or is treated as having been refused or withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of this Act or rules within a period which is–

(a)

set out in this Act or rules, or

(b)

specified by the comptroller.

(2)

Subject to subsection (3) below, the comptroller shall reinstate the application if, and only if–

(a)

the applicant requests him to do so

(b)

the request complies with the relevant requirements of rules; and

(c)

he is satisfied that the failure to comply referred to in subsection (1) above was unintentional.”

Rule 36A sets out the “relevant period” for an application pursuant to s.20A for the reinstatement of an application. By rule 36A(2):

“(2)

The relevant period shall be the first to expire of–

(a)

the period of twelve months starting on the date on which the application was terminated, or

(b)

the period of two months starting on the date on which the removal of the cause of non-compliance occurred.”

These provisions require a number of factual determinations. The first is to identify the failure by the applicant to comply with a requirement of the Act or rules within a specified period, the direct consequence of which was that the application was either refused or was treated as having been refused or withdrawn. Next, it must be decided whether that failure to comply was unintentional. Finally, the period prescribed by rule 36A(2) must be identified.

In the present case, the Hearing Officer considered that the failure to comply with the Act or rules which had as its direct consequence the refusal or deemed withdrawal or refusal of the application was the failure to comply with the specified period under s.18(3) of the Act, as specified by the examiner for reply to the substantive examination report. This, the Hearing Officer held, was the direct cause of the failure to comply with the Act or rules at the end of the period for putting the application in order.

The Hearing Officer considered that Mr Anning had always intended to keep the application in being. He held, however, that Mr Anning intended not to reply to the examination report in question for an erroneous reason, namely that he was in a position to put the application “on hold” for the time being. The Hearing Officer held, and I agree, that an intentional refusal to answer the examiner’s report within the specified time is plainly not unintentional, a question to which I return below.

Finally, the Hearing Officer considered whether the request for reinstatement was filed in time. He analysed the facts on the footing that the letter of 13^th September 2005 quoted above was insufficient to overcome Mr Anning’s fundamental misapprehension that the invention required more work and that in the meantime the application could be put “on hold”. There were two candidates for the moment at which “the removal of the cause of non-compliance occurred”. These were the receipt of a letter of 13^th September 2005 from his then patent attorneys, which informed Mr Anning that an application must be made by the earlier of the two relevant periods, and saying of the time limit under paragraph (b) that “the latter is difficult to identify but I would suggest we rely on the date of this letter and make any application within two months of that date”. The other was a meeting which took place in March 2006 at which , according to the application for reinstatement, it “also became apparent that the applicant had not fully appreciated during the exchange of correspondence in late 2004 that in failing to address the examination report at that time, he would miss an opportunity to take action which might lead to the grant of a patent in the UK”.

The Hearing Officer decided this issue, with some misgivings, in favour of the later date. Accordingly, the application for reinstatement was in time, and the only issue upon which Mr Anning failed was the issue of intentionality.

Before me, Mr Pritchard submitted on behalf of Mr Anning that the direct reason for refusal of the application was failure to place the application in order for acceptance within the rule 34 period. He observes, correctly, that the Office did not refuse the application, or treat it as refused or withdrawn, in consequence of the failure to reply to the examiner’s report by 21^st October 2004, but rather the failure to respond to the letter of 13^th April 2005. In my view, this submission cannot be accepted. As the letter of 13^th April points out, the threshold condition for reinstatement is that Mr Anning must be capable of providing a good reason for the lateness of his reply to the examiner’s report under s.18. If asked to identify the reason why Mr Anning found himself the recipient of the letter of 13^th April 2005, the answer is that he had failed to reply to the examiner’s report, and it follows that that is the direct reason for the refusal of his application. The fact that he had the possibility of explaining his non-compliance does not, it seems to me, in some way extend the time within which that compliance should have taken place: it merely gives him a further opportunity to extract himself from the consequences of non-compliance, which will necessarily be fatal at the end of the period for putting the application in order for acceptance. The letter of 13^th April 2005 does not itself either require any act to be done or extend the period of time for doing that act, and is for this reason not within s.20A: and in my judgment the prescribed period under s.20(1) is merely the period during which the requirements of the Act and Rules must be complied with. It imposes no additional requirement on the applicant. So, if there is no reply to the substantive examination report before the end of the period, the application fails because there is no reply within the time specified in the report, and because nothing has subsequently been done to address that failure.

Finally, I must deal with the question of intention. The Hearing Officer found that Mr Anning did not intend that the application should be refused, but did intend that no response should be made to the examination report. The only effective failure (effective in the sense that it caused the refusal of the application) was the failure to respond to the report, and this was, on the findings of the Hearing Officer, intentional – a conclusion which finds clear support in the evidence. It is plain that Mr Anning’s then attorneys had clearly warned him of the deadline of 21^st October 2004, and the Hearing Officer rejected any suggestion that Mr Anning’s mistaken belief that an application could be put “on hold” could affect his conclusion that Mr Anning’s failure was intentional. In this, I think he was correct. Mr Anning’s patent attorneys had clearly directed his attention to a deadline, and the failure to meet that deadline was accordingly intentional. Had Mr Anning considered the position in detail, it may be that his intention would have been different, but the section is not directed to mistaken intentions.

It follows that this appeal must fail.