Another problem with dates

Working in patent practice requires, among other things, a keen eye for due dates. Getting a due date wrong by just one day can make a big difference. This can sometimes make all the difference for a patent application, as a recent example I wrote about here demonstrated. There are many other instances of critical due dates under the UK Patents Act and Rules where it is very important to know when a particular period ends. 

I wrote a long while ago about a decision from the UK IPO (Rigcool v Optima Solutions), in which the issue was about how to calculate the end of "a period of two years beginning with the date of grant" under Section 37(5) (as it was then worded), in relation to when proceedings for entitlement could be commenced for a granted patent. Did the period end on the day of the anniversary of grant or the day before? Following reasoning derived from how the term of a patent under Section 20 is calculated, this was determined to be the latter, i.e. the last day on which entitlement proceedings could be initiated was the day before the anniversary. This turned out to be very important in the case in question, since the claimant had filed on the anniversary of the date of grant, which was determined on this basis to be one day too late. 

Following that case, some amendments were made to the Patents Act and Rules by The Patents (Amendment) Rules 2011 (SI 2011 No. 2052) and the Intellectual Property Act 2014, which adjusted the wording used in various places in the Rules and Act respectively to clarify that any periods specified were supposed to end on the anniversary and not the day before. One example in the Rules was the period under Rule 32 for making a request for reinstatement of an application. This was one of the periods that was previously specified as being "beginning with", which was then changed to "beginning immediately after". The relevant period under Rule 32 was then defined as "twelve months beginning immediately after the date on which the application was terminated". The situation was then made clear that the period would end on the anniversary and not the day before. Or so we may have thought. 

In a recent judgment from the High Court in Ahmad v Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 936 (Pat), Mr Justice Mellor decided on an appeal by the claimant Mr Ahmad in relation to his patent application, which had been refused by the UK IPO in 2021. Mr Ahmad made various accusations and complaints about being badly treated by the UK IPO, accusing the Office of "malicious comments that are illegal and against all the guidelines with lots of fraud", among other things. It was fairly clear that Mr Ahmad, who was self-represented, was not particularly familiar with the usual way of prosecuting patent applications in the UK and was somewhat chaotic and unreasonable in his dealings with the UK IPO. Faced with Mr Ahmad's numerous failings and utterly hopeless arguments, Mellor J had no difficulty in striking out his claim by summary judgment, finding Mr Ahmad's claims to be totally without merit. One of the points raised was whether Mr Ahmad could have requested reinstatement of his application, which he failed to do. This was certainly not a deciding factor in the case, but Mellor J noted what the due date for making such a request would have been, calculating it in the following way: 

"The termination of the application was effective on 31 August 2021 (one day after the two month extension window elapsed following 30 June 2021). By operation of r. 32 (under s.20A) the applicant is then given a generous, but fixed, deadline within which to seek reinstatement. In Mr Ahmad's case, it was a deadline of 31 August 2022: twelve months after the application was terminated on 30 August 2021. That period is set by r. 32(1) and –(2) PR07, and is not extendable: see r. 108(1) PR07 and its Sch. 4 Part 1" (paragraph 50, emphasis in the original).

The letter from the UK IPO that started the period for requesting reinstatement referred to the application not being in order for grant on 30 August 2021, indicating that it was treated as having been refused on that date. The period under Rule 32(2) was therefore defined based on this date, being the date on which the application was terminated. Mellor J calculated, however, that the final date on which a request for reinstatement could be made would be 31 August 2022. Given all the history behind why the particular wording of Rule 32(2) as it now stands was arrived at, this seems to be wrong. The correct due date should actually have been 30 August 2022. It made no difference in that case but it is slightly concerning that a High Court judge can get this wrong. Perhaps the wording currently used is not as clear as we might think. 

Rule 126 EPC & deemed delivery

As part of my day job in the real world I have been looking into how Rule 126 EPC is interpreted, and in particular what is meant by Rule 126(2), which states:

"Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be."

It would be impolite of me to go into the particular details of why this is of interest, at least while the issue is still alive (an appeal is currently pending). I shall just say that someone has been attempting to put a somewhat unconventional interpretation on Rule 126(2) in an apparent attempt to get themselves out of a hole. Fortunately this someone does not work where I do.

The conventional interpretation of the "ten day rule", as it is usually known, is that the deadline for responding to a communication from the EPO where Rule 126(2) applies (i.e. a due date that is specified as running from notification of the communication) is calculated by first adding 10 days to the date on the communication, then adding the appropriate number of months (bearing in mind Rule 131), then taking into account whether the resulting day is one on which the EPO is not open for business (see Rule 134, together with the EPO's holidays for 2011 here) and finally determining the actual final day on which the act required can be done, whether this is responding to an examination report, decision to refuse or whatever.

So far, so easy. If the rule is followed to the letter, there should be no doubt about what the final due date will be.  Some people do, however, still get it wrong (see here for a good example of why it is very important to do the calculations in the right order), the results of which can be catastrophic, or at least expensive and/or embarrassing.

One interesting way of getting it wrong is, as I have discovered, interpreting Rule 126(2) to mean that the notification is only effected when the actual person to whom the communication is addressed sees it. This would normally be the patent attorney representative for the application. Could it possibly be the case that the date from which a due date is calculated is when the representative first sees the communication, for example when he gets back from holiday? This is what was argued in T 743/05, which resulted from a grounds of appeal being filed late, at least according to the conventional way of interpreting Rule 126(2) (corresponding to Rule 78(2) EPC1973). The representative argued that, since the decision to revoke the patent was first seen by him on 24 May 2005, this was the date on which the four month period for filing the grounds of appeal started, even though the decision dated 12 May 2005 had been received by the representative's office on 16 May 2005.  The representative argued that the wording in Rule 78(2) "delivered to the addressee" should be interpreted as "delivered to the person to whom the notification is addressed", which was himself.  As an auxiliary, however, the representative requested re-establishment of rights under Article 122 (or restitutio in integrum, as it was then called) since, by applying the literal meaning of Rule 78(2) the representative had taken all due care and there was no reason to believe that the provision should be interpreted otherwise.

Unsurprisingly, despite the representative's valiant attempt the board of appeal was having none of it and dismissed the appeal.  The main reason behind not taking the "literal meaning" of the rule was that this "would lead to an inextricable situation which would have as a consequence uncertainty for all the users of the European patent system. The answer to the question whether notification has effectively taken place could in that case depend entirely on the honesty, goodwill or organisational skills of the professional representative" (reasons, 1.7).  The request for re-establishment also had to be refused because the claimed interpretation, being a mistake of law on the part of the representative, could not be excused given the requirements for becoming a qualified representative (all grandfathers should take note, as it unlikely they would be given any different treatment to those who have taken and passed the EQEs).  All due care had not therefore been taken by the representative.

What I wonder now is whether, given exactly the same kind of fact situation, i.e. a letter being received by a representative's office within 10 days but the named representative not actually seeing it until later, it could ever be the case that the due date for responding could be any later than the usual 10 days + x months (+r134 extra days, as required).  I think not, and would expect a referral to the enlarged board if a board of appeal was minded to decide otherwise, but would like to see what others might think if they were placed in this situation. Any ideas?

Update 12 August 2021: I notice this is my most viewed post, so I thought I would put you all out of your suspense and reveal that the case in question was T 2210/10, at which I was representing the applicant/proprietor. I won, of course.

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.