Wednesday 10 April 2013

UK Divisional Applications - how (not) to get caught out

The UK Patents Act 1977 has a particular, and some may say peculiar, way of dealing with so-called divisional applications (which, for the pedants among you, are not referred to as such in the Act but only by reference to section 15(9); see more on the subject here). For those unfamiliar with UK practice, this might on occasion result in an applicant being caught out while prosecuting a parent application, unaware that the deadline has already passed. Instead of having a (reasonably) clear deadline by which a divisional application must be filed, which at the EPO is the latest of the day before the parent application is granted or the end of 24 months from the earliest relevant examination report (Rule 36 EPC), the UK defines the latest date for filing a divisional application with reference to the compliance period of the parent. Specifically, in the case where an application is not allowed straight away, according to rule 19(3) a divisional application must be filed no later than 3 months before the end of the compliance period. The deadline can therefore easily be missed if the applicant is still trying to get the parent application granted towards the end of the compliance period. Given delays in the UK examination system, it is now quite common to have only 12 months from the date of the first examination report to the end of the compliance period, as a result of the extension allowed under rule 30(1)(b), 9 months of which can easily be used up with only a few rounds of correspondence.

Although the compliance period can be extended as of right by two months under rule 108(2), this is clearly not enough if the compliance date is already less than a month away. In such a case, as further extensions can only be allowed if an as of right extension has already been requested, the applicant has to rely on the discretion of the comptroller. This was the situation for Knauf Insulation's application GB1219243.1, filed out of earlier application GB0807777.8, which resulted in a recent decision from the UK IPO, BL O/098/13. The applicant, as represented by a European attorney based in France, filed the new application after the end of the period under rule 19(3)(b) (3 months before the compliance date), following several rounds of examination in which various issues including lack of unity were raised. Shortly after filing the application the applicant requested a discretionary extension of two months to the compliance period under rule 108(3), but the examiner indicated that this would not assist because the extension would not bring the date of filing of the application within 3 months of the extended compliance date, and discretion to allow the late filing under rule108(1) could only be exercised in exceptional circumstances. The parent application was then granted, while search and examination of the new application was deferred pending a decision on whether it could be treated as a divisional application.

The hearing officer indicated that there were two questions to be answered, the first being whether discretion should be exercised under rule 108(1) to extend the date by which the divisional application had to be filed, the second being whether discretion should be exercised to extend the compliance period under rule 108(3) which, under rule 30(3)(b), determined the compliance period for putting the divisional application in order. In relation to whether the comptroller's discretion may be exercised in favour of extensions under rules 108(1) and (3), the hearing officer referred to Ferguson's Application BL O/272/09, which indicated that the test to allow late filing of a divisional application should be consistent with the test for exercising discretion to allow a divisional application to be filed out of time, i.e. that the applicant needed to demonstrate that the circumstances were exceptional and that the applicant had been properly diligent.

The hearing officer accepted the arguments put forward by the applicant that there had been a genuine and serious attempt at all times throughout prosecution of the parent application to progress the application through to grant, and that any delay in resolving objections raised by the examiner was largely inevitable. The circumstances that led the divisional application to be filed so late were therefore considered by the hearing officer to be exceptional, and the applicant should not lose out when serious and consistent attempts had been made to progress the application through to grant. The hearing officer ordered the compliance period to be extended under rule 108(3), and the period for filing the divisional application to be further extended under rule 108(1), with the result that the divisional application had the same compliance date as the parent. A further discretionary extension to the compliance period would be required to put any amendments into effect, which the hearing officer indicated would be allowed.

Although the decision in this case came out in favour of the applicant, it is clearly not a process that is easy or cheap to go through and a positive outcome is by no means guaranteed. It does, however, appear that as long as an applicant pursues their parent application diligently, an apparent schoolboy error of missing the usual deadline for filing divisional applications can be forgiven. I am sure that the attorney in this case will not allow the same mistake to happen again, and will be paying more attention in future to the differences between EPO and UK IPO practice regarding divisionals. 

Friday 5 April 2013

Marks & Clerk come undone

When filing and prosecuting patent applications, deadlines are extremely important. There is a deadline for most things, and missing one can make the difference between life and death for a patent application, as well as the difference between a satisfied client and a very large insurance claim. One of the most important, if not the most important, things a patent attorney must have therefore is a reliable system for monitoring deadlines so that none are missed unintentionally.

Not filing a request for examination is one of these important deadlines, the latest date for which is 6 months beginning immediately after the date of publication under section 16 (rule 28), in the case of a direct UK application. The deadline can be extended by two months, but only if a request is made under rule 108(2) in time. More time can be bought under rule 108(3) if a good enough reason is provided. Even more time is available by requesting reinstatement under section 20A up to one year after termination of the application, provided it can be shown that the applicant missed the deadline unintentionally. After this, one would normally think that an application can be considered to be finally dead and buried. Sometimes, however, this does not stop people from trying to resurrect an apparently dead application. A recent decision from the UK IPO (YKK Europe Limited, BL O/006/13) shows how far this can go. It also shows that even well-respected large partnerships of patent attorneys have systems and people that can go wrong from time to time.

Patent application GB0922420.5 was filed on 22 December 2009 in the name YKK Europe Limited (a well known manufacturer of zips and other fasteners) by their patent attorneys Marks and Clerk LLP in Manchester, the application being filed with patents forms 1, 7 and 9 together with the appropriate fees but without a request for examination (requiring patents form 10). No request for substantive examination was made in due time following publication of the application on 30 June 2010, which resulted in the application being treated as withdrawn and terminated with effect from the day following the final date on which the examination request was due.

On 1 March 2012, over 14 months after the end of the 6 month period for requesting examination, the office received a letter from M&C asking when they might expect to receive a substantive examination report. They were informed by the office that the case had been terminated and that it was now too late to request reinstatement under section 20A. M&C then filed patents form 10 together with an explanation that it was intended to be filed in due time but the form had never been mailed, even though M&C's internal records had been updated to indicate that the form had been filed. M&C's main argument to have the deadline extended was that the standard form 10 reminder letter sent by the office and usually received before the end of the 6 month period, had not been received. If it had been it would have alerted them to the omission. This, M&C argued, led to the failure to file the form in time being attributable to an irregularity with the IPO or a communication service. As such, an extension of time under rule 28(2) was requested under rule 107 (correction of irregularities) or rule 111 (delays in communication services). The office indicated that there was no scope under either rule to extend the time limit because a check of the office's records indicated that the letter had been issued and there was no indication an irregularity had occurred. Furthermore, while the reminder letter might have highlighted the failure of the attorneys to file the form 10 it could not be said that the failure to receive the reminder was the main cause of the form not being filed in time.

M&C, represented by counsel Richard Davis, argued that they were entitled to rely on the failsafe of the reminder letter in the event of a breakdown in their own systems, referring to Carrington's Patent, BL O/22/98 and the EPO decision J 23/87, arguing that but for the loss of the reminder letter the form was not filed in time. Witness statements from the M&C's records system manager and the office managing partner explained how their systems worked, of which the form 10 reminder letter formed an integral part, and indicated the specific training given to its patent attorneys in relation to its records systems that would have prompted the attorney to check the correct status of the case in the event a reminder letter was received.

The hearing officer considered that the issue was whether the applicant's failure to file form 10 on time was wholly or mainly attributable to a failure in the postal service which led to the non-receipt of the reminder letter. Only if this was the case would it be necessary to consider whether rule 111 allowed the comptroller to reverse the terminated status of the application. Regarding whether the failure was attributable to a failure of a communication service, evidence showed that M&C's records system had been updated to indicate that it had been filed, which meant that the alerts built into the system were not triggered. Furthermore, official records indicated that two pieces of correspondence were sent by the IPO and there was no evidence to suggest that these were not received. Despite the apparent stringency of M&C's records system, at least two signposts had been overlooked, the last of which should have been the reminder letter. Although the evidence indicated that, on the balance of probabilities, the reminder letter had not been received this was not the sole indicator supplied by the IPO that something was awry, and the hearing officer did not accept that the failure to file form 10 in time was wholly or mainly attributable to the non-delivery of the reminder letter.

In relation to the "but for" test, although the final error appeared to be a failure in the communication service this was not the main reason for the failure as there was at least one earlier failure to file the form. The fundamental failure to file the form in time resulted from the unexplained failure by M&C to send the form when the application was filed and the erroneous entry on their internal records system that the form had been filed. This error was compounded by the fact that two pieces of correspondence were overlooked, whilst a third was not received. None of these would have come into play had it not been for the original error. In conclusion the hearing officer considered that the failure was not wholly or mainly attributable to the failure of communication service, and that the period for filing the request for examination could not be extended under rule 111. The question of whether the rule could allow a terminated status to be reversed did not therefore arise.

It appears that the lesson to be learned from this case, at least for patent attorneys, is not to blindly assume that your own records are correct. Even if nothing appears to be awry, it is always best to check the patent office records to make sure, and it is certainly not good practice to ignore reminders from the patent office about deadlines that might be missed unless you can be sure there is no problem. The fact that M&C were unable, or unwilling, to explain the discrepancy between their own records and those of the patent office, which would have been publicly available online as from the publication date, indicates that there may have been an over-reliance on their own records system. Records are, of course, only as good as the data that is entered into them, and errors can occur. What is important is having a system where errors can be spotted and corrected. This of course requires people who can think about what the piece of paper in front of them actually means, rather than dismissing it as being somebody else's problem