Patent decision

BL number

O/006/13

Concerning rights in

GB0922420.5

Hearing Officer

Mr G J Rose'Meyer

Decision date

4 January 2013

Person(s) or Company(s) involved

YKK Europe Limited

Provisions discussed

Rule 111

Keywords

Delay

Related Decisions

None

Summary

The application was filed in the name of YKK Europe Limited on 22 December 2009. The application consisted of the various documents and Patents Forms 1, 7 and 9 (and their relevant fees) but the official forms filed did not include a request for the substantive examination of the application on a Patents Form 10. A search report was subsequently and the application was published on 30 June 2010. A Form 10 was therefore due by 30 December 2010. As no Form 10 was filed by 14 December 2010, the Office issued a Form 10 reminder letter to the attorneys. No response was received and the application was treated as withdrawn and was duly terminated with effect from 31 December 2010.

On 1 March 2012 the office received a letter from the attorneys asking when they might expect to receive the substantive examination report on this application. On 6 March 2012 the IPO informed the attorneys that the case had been terminated due to failure to file Form 10 and that it was now too late to either file the relevant form or to request reinstatement of the application under section 20A and rule 32.The attorneys filed the Form 10 on 13 April 2012, explaining that it was originally intended to file the Form 10 with the application but mistakenly, it was not mailed to the IPO along with the other documents filed. It was further explained that working on the basis that Form 10 had indeed been filed, the attorneys’ internal records were updated as if it had been, which led to no internal alerts being generated. It was also stated that no Form 10 reminder letter had ever been received at their offices. It was argued that failure to receive the Form 10 reminder letter was attributable either to an irregularity within the IPO or alternatively to a failure of a communication service. As such it was requested that the Comptroller extend the time prescribed by for filing Form 10 under the provisions of rule 107 or rule 111 respectively. The Office’s view was that there was no scope under r.107 or r.111 to extend the requested time period.

A hearing was requested at which the rule 107 ground was not pursued by the applicant leaving only a) the r.111 objection and b) an objection which the Office had raised prior to the hearing that as the application had been terminated, an extension of time under r.111 would not reverse the terminated status of the application. At the hearing, Counsel for the applicant addressed both issues, but requested an extension of time to gather more evidence on the former point. This was granted.

In his decision, the HO made it clear that he only needed to decide the latter point if the former was successful. The HO concluded that the failure to request substantive examination on time was, for the purposes of r.111 mainly attributable to the non-filing, by the attorneys, of Patents Form 10 at application stage, whilst at the same time mistakenly recording on their internal records system that Form 10 had indeed been filed. He accepted that other factors had contributed to the overall failure, but found that the failure to file Form 10 was not wholly or mainly attributable to the failure a communication service. He therefore concluded that he could not extend the period for filing the request for substantive examination of the application under the terms of r.111. As such, he did not need to determine whether the terminated status of the application could be reversed.

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