Monday, 13 June 2011

Rigcool v Optima Solutions - some confusion over dates

How do you calculate a "period of two years beginning with the date of grant"? Does this period include the anniversary date of the date of grant or not? This was the essence of the recent case of Rigcool Limited v Optima Solutions Limited, which resulted in a pair of decisions issued on 5 May (BL O/149/11) and 1 June 2011 (BL O/182/11).  Following these decisions, the period may well not be what you previously thought it was.  This could have rather interesting (if not worrying) consequences for other periods specified in the UK Patents Act and Rules.

Applications were made by Rigcool (which was termed the pursuer because the hearing was held in Scotland by request of both parties) under sections 37 and 72 on 27 August 2010 in relation to a GB patent granted on 27 August 2008 to Optima (the defender). The issue to be decided was whether the applications had been filed out of time, because both sections specify a time limit of "the end of the period of two years beginning with the date of grant".

However, according to section 130(7), both sections were framed to have, as nearly as practicable, the same effects as Article 23.3 of the Community Patent Convention (CPC), which states that legal proceedings "may be instituted only within a period of not more than two years after the date of grant". The defender submitted that the two year period ended on the day before the second anniversary of grant, which would mean the applications were filed out of time. The pursuer did not disagree, but argued that the wording of the CPC should be worked from directly. The hearing officer agreed that, if the CPC were to be followed, the anniversary date would be included.

The pursuer argued that applying the CPC directly was consistent with Bristol Myers Squibb v Baker Norton Pharmaceuticals [1999] RPC 253, in which Jacob J (as he then was) stated that "save in the rare event of a specific contention that a provision of the 1977 Act has a different meaning from a corresponding provision of a Convention, it will be better [...] to work on the basis that the corresponding provisions of the Conventions are of direct effect" (paragraph 4). From this, however, the hearing officer considered that the case was in fact one of those rare events where the UK Act did have a different meaning from a corresponding provision in the CPC. The CPC did not therefore have direct effect.

Reference was also made to the judgment in Yeda Research and Development v Rhone-Poulenc Rorer International Holdings [2007] RPC 9, in which Jacob LJ stated that the court should construe section 37(5) to have the same meaning as the provision in the CPC about bringing entitlement more than 2 years after grant. In that case, however, the hearing officer noted that the argument was not about the precise start and end date of the two year period, and any difference did not appear to have been considered. The hearing officer therefore concluded that, once such a difference had been identified, the court must take a different view of the draftsman's re-writing. The wording of the Act should therefore be followed rather than the CPC in relation to the end date of the two year period. It followed that the pursuer's applications had been filed out of time, resulting in a need for the revocation action to be ruled inadmissible and no order being possible as a result of the entitlement proceedings.

The hearing officer allowed the parties to make further submissions on the question of whether, in this case, rule 107 should apply, i.e. whether the comptroller should extend the period by one day for the purpose of the proceedings. In the subsequent decision the hearing officer then considered whether the conditions for exercising discretion under rule 107 applied. According to the Court of Appeal in M's application [1985] RPC 249, the applicant had to show that the Office was guilty of an error, default or omission, that this had contributed to the failure to meet the time limit, and that the contribution played a significant part in the applicant's failure. The pursuer argued, in light of previous decisions by the Office and the Office's litigation manual and manual of patent practice, and the fact that practice in relation to trade marks had been revised in 2010 in relation to the same issue, that the Office had contributed to a general understanding that the period included the anniversary. The defender argued against the discretion being used, since there had been no error on the part of the Office and, as the manual of patent practice stated (MPP 123.10), the power should not be applied too readily but only in cases where it was warranted and only in accordance with the case law.

The hearing officer considered that the passages cited from the litigation manual and MPP did not support the pursuer's argument as much as they proposed, but neither did they support the defender's view, with the result that the manuals did not clearly point out that the second anniversary date was excluded. The hearing officer accepted that it had not been clearly Office practice to regard the second anniversary date as being outside the two year period. The Office had therefore contributed in part to the failure of the applications being filed out of time. The irregularity could therefore be rectified by extending the period by one day in the particular case. The hearing officer ordered accordingly.

It is fairly clear from this case that the IPO will need to revise their stated practice to indicate clearly that the two year period expires on the day before the anniversary date, so as to prevent this sort of thing happening again.  The issue does, however, seem to raise the fundamental question of whether the IPO have got their calculations right for other periods, because the same form of wording is used in several other places in the Act and Rules.  Here are a few examples:

If the IPO is correct in their interpretation of the 2 year period under Section 37(5), does this mean that the same interpretation should apply to all the other periods where the same wording is used?  If so, why does the IPO not follow this rule in practice (an example being the date given for requesting examination)? If not, how can the same wording be interpreted differently for different purposes? Alternatively, is the IPO wrong in their calculation of the 2 year period? Either way, something serious seems to be wrong and needs to be sorted out.

Update: Thanks to Filemot for pointing me to the trade marks tribunal practice notice that was referred to in the first of these decisions. This states in part:
"4. The term 'beginning with' requires that the publication date be included in the calculation of the opposition period (as opposed to periods starting ‘from’ where the day of the initiating event is excluded from the calculation). Explanations of the interpretation of wording in respect of time periods can be found in Trow v Ind. Coope (West Midlands) Ltd CA [1967] 2 QB 899 and Zoan v Rouamba [2000] 2 All ER 620, at paragraph 24.

5. According to the Interpretation Act 1978 a month means a calendar month. It appears from Halsbury's Laws of England that:

"When the period prescribed is a calendar month running from any arbitrary date the period expires with the day in the succeeding month immediately preceding the day corresponding to the date upon which the period starts: save that, if the period starts at the end of a calendar month which contains more days than the next succeeding month, the period expires at the end of the latter month."

6. Consequently, where an opposition is made under section 38(2), or an extension is requested to the opposition period under Rule 17(3), the opponent should ensure that it is filed, at the latest, on the day immediately preceding the day corresponding to the date two months after the date of publication. For example, a trade mark advertised in the trade mark journal on 24 September 2010 would have a latest date of 23 November 2010 by which to file an opposition on a TM7 or request an extension to the opposition period on a TM7a."
The inference from this, as applied to all other periods in the Patents Act where the words "period beginning with" are used, is that almost all are interpreted wrongly as a matter of course, in particularly by the UKIPO themselves.

Update 1/7/11: As expected, the Manual of Patent Practice for section 37 has now been updated (see here).  New section 37.20.1, in relation to the two year period under s37(5) now states:
"The reference must be made by, at the latest, the day before the second anniversary of the date of grant. This was confirmed by the Hearing Officer in Rigcool Ltd v Optima Solutions UK Ltd BL O/149/11. In this case, the reference was made two years to the day (27 August 2010) from the date of grant (27 August 2008). The Hearing Officer held that the words “the period of two years beginning with the date of the grant” meant that the period included the date of grant, and ended the day before the second anniversary of the date of grant – i.e. 26 August 2010 in this case. This is consistent with the way the Office interprets the words “beginning with” in s.25(1), relating to the term of the patent (see 25.04.1). However, the corresponding Art.23(3) of the CPC [1989] provides that entitlements proceedings may be instituted only “within a period of not more than two years after” the date on which the patent is granted. The Hearing Officer held that the plain meaning of this provision of the CPC is that the period would end on the second anniversary of the date of grant, rather than the day before. He decided that in this case where there was a clearly different meaning of the Act compared with the corresponding provision of the CPC, he was obliged to follow the wording of the Act".
There is, however, no mention of what this means for all the other places where the same wording is used.


  1. The EPC at least is very clear on this

    R131EPC - Calculation of periods

    (1) Periods shall be laid down in terms of full
    years, months, weeks or days.

    (2) Computation shall start on the day following
    the day on which the relevant event
    occurred, the event being either a procedural
    step or the expiry of another period. Where the
    procedural step is a notification, the relevant
    event shall be the receipt of the document
    notified, unless otherwise provided.

    Should not the IPO follow suit?

  2. Seems that this is consistent with the trouble over on the trademark side where this *beginning with* problem was discovered last year see TPN4/2010

  3. Thank you for the comments.

    On the first one, I agree that the EPC is very clear on this. Unfortunately Rule 131 EPC does not apply to terms under the UK Patents Act.

    On the second one, the trade marks notice was mentioned in this case as a reason for supporting the extension under rule 107.

  4. It is evident from the Patent Office's own concordance between the 2007 rules and the previous rules, that no change of practice was intended for the compliance period of Rule 30 in particular, or for various other time limits potentially affected by the new wording of the 2007 rules.

    As the transitional provisions of the 2007 rules provide that time limits that were set by the old rules before the new rules took effect, continue to apply, the compliance period for applications filed before 17th December 2007 under old Rule 37 is apparently one day longer than for applications filed subsequently under new Rule 30.

  5. Where do you get the idea that the old Rule 34 period (it was not called the compliance period then) ended one day later?

  6. It follows from the crtieria referred to in the Trade Mark decision TPN 4/2010, in view of the different wording of the pre-and post-2007 Rules.

    Patent Rules 2007 Schedule 5 "Transitional Provisions" para 2 " Where, in relation to any proceedings under this Act, a period of time prescribed by the 1995 Rules for the purposes of a particular provision of the Act has not expired before the date on which these Rules come into force, that period continues to apply".

    Old Rule 34 uses "from", so the filing/priority date itself is excluded when calculating the "period for putting into order".

    New Rule 30 uses "beginning from", so the filing/priority date itself is included in the "compliance period".

    Thus the "period for putting into order", which is a period whose duration is established by the 1995 rules as of the filing date for applications filed before 17 Dec 2007, and continues to apply to such applications, is one day longer that the "compliance period" of later-filed applications governed by new Rule 30.

  7. The penultimate paragraph should have said "beginning with", not "beginning from".

  8. Thanks for the explanation. How do you fit that with the interpretation from Halsbury's Laws of England quoted in the post above? I don't see any difference myself.

  9. I don't think there is any conflict with Halsbury, which simply sets out how, given a starting date, the end date is to be calculated. Thus, if the start date is the 20th of a month, then the end date is the 19th of the subsequent month.

    The pre- and post 2007 end dates are different because their start dates are different. This follows from the case law mentioned in the quoted para 4 of the Trade Mark Tribunal practice notice, which explains that, where the period is defined by "starting with", then that date is the starting date for the computation. Conversely, where it is defined by "from", or "after", then the starting date for computation is the day after that date.

    So for an application filed under the 1995 rules on (say) 14th Aug 2007, the starting date for the computation of the 4 1/2 year period is 15th Aug 2007, and the period for putting into order expires on 14th Feb 2012.

    Had the 2007 rules been in force on 14th Aug 2007, the starting date for computation of the "compliance period" would have been 14th Aug 2007 itself, and the compliance period would have ended on 13th Feb 2012.

    Both periods are calculated in accordance with Halsbury: it is the starting dates for the purposes of computation that are different.

  10. I suppose that is at least consistent. I have my doubts however that the period under the previous rules would be calculated from a different date. This also does not, of course, resolve the issue surrounding all the other periods that are specified as a "period beginning with" (or words to that effect) throughout the Act itself as well as the 2007 Rules.

  11. It has long been established that the term of a patent as determined by Section 25(1) of the Patents Act, expires the day before the anniversary of filing. See MPP 25.04.1, referring to a notice in OJ(P) 22 July 1992, and explicitly stating "Thus a 20 year period that starts on 4 November 1992 ends on 3 November 2012"

    The previous procedure for determining the expiry date was changed by the notice.

    The implications for other time limits defined by similar wording was evidently not appreciated when the 2007 rules were drafted.

  12. Where the event that triggers a time period falls on 28th Feb [not a leap year], the period as determined by the new rules could be as much as 4 days shorter than under the old rules.

    Consider an event that falls on 28th Feb [28th Feb =X] that triggers a 1 month time limit.

    Under the pre-2007 rules ["after"] , the starting date for the 1 month period is (X+1), which is 1st March. The 1 calendar month period expires on 31st March.

    Under the 2007 rules ["beginning with"], the starting date is X. The 1 calendar month period therefore expires on day (X-1) of March, ie 27th March, 4 days earlier than under the old rules.

    Thus the time periods as determined under the 2007 rules could be 0, 1, 2, 3 or 4 days shorter than under the old rules, according to whether the date which triggers the time limit falls on the 28th, 29th, 30th or 31st of a month, and the number of days in the month in which the time limit expires. [An example of the "0" situation is where X is the 30th of a 31 day month, and the period expires in February. The expiry date would be the last day of February under both the old and the new rules.]