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:

• Section 2(4): 6 month period for a breach of confidence disclosure;
• Rule 30: the compliance period;
• Rule 12(3): provide name and address;
• Rule 12(9): file a translation into English (or Welsh);
• Rule 28(2): request substantive examination;
• Rule 32: request reinstatement;

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.