Tulane Education Fund v Comptroller General of Patents
| Jurisdiction | England & Wales |
| Judge | Mr Roger Wyand |
| Judgment Date | 17 April 2012 |
| Neutral Citation | [2012] EWHC 932 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: CH/2011/0449 |
| Date | 17 April 2012 |
[2012] EWHC 932 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building. Fetter Lane. London EC4A 1NL
Mr Roger Wyand QC
(Sitting as a Deputy High Court Judge)
Case No: CH/2011/0449
In the Matter of s28, sl28B and Schedule 4A of the Patents Act 1977
and
In the Matter of Application No. SPC/GB99/033 in the name of Tulane Education Fund
and
In the Matter of an appeal from the decision of the Comptroller General of Patents dated 20 July 2011
Mr. Phillip Johnson instructed by Elkington and Fife LLP appeared for the Appellant
Miss Charlotte May instructed by The Treasury Solicitor appeared the Respondent.
Hearing date: 24 January 2012
Approved Judgment
This is an appeal from the Decision of Ben Micklewright, the Hearing Officer acting for the Comptroller, dated 20 July 2011. The case concerns SPC/GB99/033 (the SPC), which is in the name of Tulane Education Fund (the Appellant).
The application for the SPC was filed on 9 September 1999 and the SPC was granted on 11 August 2000. The basic patent upon which the SPC application relied expired on 10 July 2008 and the SPC was due to come into effect on 11 July 2008.
However, pursuant to paragraph 5 of Schedule 4A to the Patents Act 1977, an SPC does not take effect unless either (a) the prescribed fee is paid before the end of the prescribed period or (b) the prescribed fee and any prescribed additional fee are paid before the end of the period of six months beginning immediately after the prescribed period. The prescribed period is defined in Rule 116(2)(a) of the Patents Rules 20071 as the three months ending with the start date, and the start date is defined in Rule 2(1) of the Patents Rules and Rule 6(5) of the Patents (Fees) Rules 20072 as the first day following the day on which the basic patent expires. It follows that in this case, the start date was 11 July 2008 and the prescribed fee was due between 11 April and 11 July 2008; alternatively the prescribed fee and additional fee were due before 11 January 2009.
The Appellant granted an exclusive licence under the Patent (and SPC) to Æterna Zentaris GmbH, who instructed a third party Dennemeyer and Company Sarl ("Dennemeyer"), to pay its various patent and SPC fees, including the prescribed fee in question in this case (which amounted to £4000). Dennemeyer is a Luxembourg based agency that specialises in the payment of fees in relation to patent and other intellectual property rights. Dennemeyer failed to pay the prescribed fee within the prescribed period, but attempted to pay it (without the additional fee for late payment) on 22 July 2008, which is within the six months immediately following the prescribed period.
Dennemeyer attempted to pay the fee using the electronic patent, design and trade marks renewal system. The payment was made at the same time as 3075 other payments for various third party patent renewals.
The payment was given a particular reference. The first part of the reference included the SPC number SPC/GB99/033. The second part of the reference included the client code and cost centre, and the client reference number.
However, since the electronic renewal system is intended for the renewal of patents (and not SPCs), it automatically converted the SPC number into a patent number GB0099033. This number was not recognised by the system as a valid patent number. As a result, the system generated an automatic report stating that the payment had been rejected because the patent number quoted was invalid.
The evidence from Dennemeyer is that the relevant personnel were "confused" by this report because they had not instructed payment of a patent with that number. This is despite the fact that the "Customer Ref" number given on the report is the same as the client code and cost centre and the client reference number that Dennemeyer had used as part of the payment reference, and therefore could have been used to work out to which payment the report was referring.
Ms Grasser of Dennemeyer in her witness statement in these proceedings says that the payment officer usually waits for a notification of rejection of a patent renewal, but that since one was not received in this case no further action was taken (Grasser para 14–15). It is, perhaps, surprising that Dennemeyer did not take a more proactive role in getting to the bottom of what the rejection was about, bearing in mind that the rejection report advised (twice) "Please check your records and refile". Furthermore it is the normal practice of the Office (as set out in part 8 of Patents Form SP2 — the
correct form for paying SPC fees) to send a certificate once SPC fees have been paid, but there is no evidence that Dennemeyer was expecting one or was alerted when one did not arrive.It is apparent that Dennemeyer (i) failed to appreciate that the payment of SPC fees is subject to its own system and procedure and (ii) therefore incorrectly assumed that it could use the electronic patent renewal system to pay the SPC fees. Furthermore, these errors did not come to light until 16 January 2009, shortly after the period of late payment for the prescribed fee had expired (see Grasser para 16).
The consequence of the failure to pay the prescribed fee in time is that the SPC lapsed on the date of expiry of the basic patent, ie 10 July 2008. As a result, the Appellant (who only became aware of the problem on 20 February 2009), applied to the Office (i) for a correction of an irregularity under rule 107 of the Patents Rules 2007; (ii) for the SPC application to be reinstated under s.20A of the Act; or (iii) for the SPC to be restored under s.28 of the Act.
In his decision dated 20 July 2011 the Hearing Officer rejected each of these applications. In this appeal the Appellant appeals against the decision on applications (i) and (iii), but not (ii). The Appellant has a further ground of appeal in that it contends that paragraph 5 of Schedule 4A of the Patents Act is ultra vires. This matter was addressed by Dr Wright, the Patent Attorney who appeared before the Hearing Officer on behalf of the Appellant
I shall deal with each of these three grounds of appeal in turn.
Ground 1 — Application of Rule 107
Rule 107 of the Patents Rules 2007 is headed "Correction of Irregularities" and provides as follows:
(1) Subject to paragraph (3), the comptroller may, if he thinks fit, authorise the rectification of any irregularity of procedure connected with any proceeding or other matter before the comptroller, an examiner or the Patent Office.
….
(3) A period of time specified in the Act or listed in Parts 1 to 3 of Schedule 4 (whether it has already expired or not) may be extended under paragraph (1) if, and only if —
(a) the irregularity or prospective irregularity is attributable, wholly or in part, to a default, omission or other error by the comptroller, an examiner or the Patent Office; and
(b) it appears to the comptroller that the irregularity should be rectified.
Rule 107(3) is the relevant rule in this case, because it concerns a period of time specified in Part 1 of Schedule 4 to the Rules (namely Rule 116(2)). However, in accordance with that Rule, the time period can only be extended if there has been an irregularity by the Comptroller, an examiner or the Office. It is clear from Rule 107(1) that it means some irregularity of procedure.
The requirement for establishing when rule 107(3) applies was explained by the Court of Appeal in M's Application [1985] RPC 249 at 272:
Mr. Laddie submitted—and speaking for myself, I would have thought this was right— that the proviso only comes into operation on three conditions. First, the applicant has to show that the Patent Office is guilty of an error, default or omission; and by "omission ", I mean an omission to do something which it can be said there is some sort of obligation to do, and that I think does not include, as in this case, the answering of routine letters within any particular time limit.
Secondly, he has to show that such error, default or omission can be said to have contributed to the failure to meet the time limit.
Thirdly, Mr. Laddie's submission is that the contribution must be shown to have played a "significant" or a "substantial" part in the applicants' failure. I find that submission an acceptable one, subject to this that it seems to me that it is to some extent a matter of words. It is always dangerous to paraphrase statutory wording but it seems to me that the word "attributable" involves the concept that what has to be demonstrated is that the error, default or omission upon which reliance is placed, does play an active causative role in the irregularity which has taken place. It clearly does not have to be the sole cause, but it has I think, to be something more than a mere causa sine qua non so that it can be said to be a partial cause of the irregularity in the sense of having actively brought it about.
Mr Johnson, who appeared before me on behalf of the Appellant, submitted that the Comptroller and/or the Intellectual Property Office (the "Office") committed two errors and one omission:
Error 1: On or about 22 July 2008, the Intellectual Property Office's software erroneously converted the entry in the data file from "LP 21 SPC/GB99/033" to "GB0099033";
Error 2: On 29 July 2008, the Intellectual Property Office's computer system sent an automated response erroneously stating that the rejected payment related to "GB0099033";
Omission: The Intellectual Property Office omitted to send an adequate response (or any response) in relation to the rejection of the payment "LP 21 SPC/GB99/033".
Mr Johnson submitted that the Hearing Officer erred in principle by his decision being predicated...
To continue reading
Request your trial
-
S.28, s.128b and Schedule 4A of the Patents Act 1977 v Spc/gb99/033 in the name of Tulane Education Fund and Another
...DIVISION) ON APPEAL FROM THE HIGH COURT OF JUSTICE CHANCERY DIVISION (PATENTS COURT) Roger Wyand QC (sitting as a Deputy Judge) [2012] EWHC 932 (Pat) Royal Courts of Justice Strand, London, WC2A 2LL Before: THE CHANCELLOR OF THE HIGH COURT Lord Justice Kitchin and Lord Justice Underhill Cas......