Nestec v Dualit - a seriously flawed judgment?

A lot has been written about the recent case of Nestec v Dualit, which seems to have brought the idea of "poisonous priority" to UK patent law in a similar way to the "poisonous divisionals" idea in European patent law. The issue centres around whether an application that claims more broadly than its priority application discloses can be anticipated under Article 54(3) / Section 2(3) if the priority application itself publishes. This concept has been much discussed, and I have written about my own solution to the problem here.

What has not been discussed much, however, is whether the conclusion arrived at by Mr Justice Arnold in the case was actually correct. Having looked in more detail at the judgment, I have come to the conclusion that it is seriously flawed on the priority point.

Claim 1 of the patent, as sought to be amended (by the underlined parts) by Nestec, and as broken down into integers by Arnold J, reads:

[1A] Extraction system comprising a device for the extraction of a capsule and a capsule (16) that can be extracted in the device; 

[1B] the capsule (16) comprising a guide edge in the form of a flange, the device comprising

[1C] - a first fixed part (2),

[1D] - a second part (3) which is moveable relative to the first part, 

[1E] [-] comprising a housing (4) to receive the capsule and defining, in the closed position of the moveable part against the fixed part, a position for extracting the capsule on an axis (25) in said housing, 

[1F] - a part for insertion and positioning comprising guide means (6,7) for the capsule arranged so as to insert the capsule by gravity and position said capsule in an intermediate position; 

[1G] the guiding edge being received in the guide means (6,7); 

[1H] said guide means being insertion slides permitting the engagement of said flange; 

[1I] - a beverage-delivery system (19, 53), 

[1J] said second moveable part (3) being configured to displace the capsule (16) from the intermediate position to the extraction position when the device is closed, characterised in that 

[1K] the guide means (6, 7) comprise stop means (20) configured to retain the capsule (16) in an intermediate position, in a manner which is offset to the axis of the capsule in the extraction position; 

[1L] the flange bearing against said stop means in the intermediate position, and in that 

[1M] the second, moveable part (3) receives the capsule to displace it from the intermediate position to the extraction position on the axis (25) of the capsule in the extraction position in said housing (4) 

[1N] so that, when moved, the moveable part acts on the capsule to move it downwards, 

[1O] the flange of the capsule passing below the stop means (20), 

[1P] and to push it along the axis (25) of said moveable part into its extraction position.

The key part of the judgment relating to the priority question is in paragraphs 95 to 104. In this, Arnold J notes that claim 1 of the patent covers certain arrangements, outlined as: i) the housing receiving the capsule being contained in either the second part (integer 1D) or the fixed first part (integer 1C); and ii) the capsule being offset, inclined or both relative to the extraction axis. Arnold J's view was that, because the priority document did not disclose these different arrangements, which were only found in the later application, claim 1 lacked a valid claim to priority.

On the face of it, this seems to be plausible. However, as any first year trainee will know, there is a huge difference between what a patent claim covers and what it states. The claim in question makes no mention of the housing being in either of the parts [perhaps not: see update below], nor does it require the capsule to be anything other than being offset to the extraction axis. The possibilities of the different ways in which the housing and the capsule could be arranged were therefore only additional possibilities that were added in the later filing. In normal circumstances this would not affect any priority claim at all, as it is perfectly normal practice to add features that might provide further fall back positions in a later priority-claiming filing. Arnold J, however, seems to think otherwise. If correct, this would be extremely worrying as it would result in a substantial proportion of existing patent applications and patents lacking a valid priority claim merely because additional options were added in the later filing, even if claim 1 was left entirely unchanged. Am I missing something, or has Arnold J got it very very wrong?

Update 27 June 2013: To pre-empt any eagle-eyed readers, I have noticed that I may indeed have missed something, although it doesn't affect my conclusion. The addition of the word "comprising" to the start of integer 1E indicates that the housing is part of the second part, not the first part. This would only raise an issue of priority if this could not be unambiguously derived from the priority application, and it was agreed that this arrangement was in fact disclosed in the priority application (see paragraph 96). However, the other point relating to the capsule being possibly also inclined is, I think, still valid.

HTC v Apple - A broader signpost for patentability

Patentability under UK and European law has been something of an ongoing theme of mine for a few years, particularly in relation to patents for software or business methods (although I have been known to occasionally stray into other areas such as stem cells). The last time I visited the issue in any great detail was in May 2010 when the EPO Enlarged Board decision in G 3/08 was issued (see here), a few months after I summarised the position in the UK and Europe in a 'where are we now' style here, and correctly predicted the outcome of G 3/08. Since then, the issue has been largely left for the EPO to get on with what they were doing already (principally based on the reasoning in Comvik, T 641/00), while the UK approach has developed from the flawed Aerotel/Macrossan judgment, followed and augmented by Symbian, both from the UK Court of Appeal. There have been other judgments in the UK that have tinkered with how the Aerotel four step test should be viewed and how to judge whether something is technical, such as Halliburton (see here for my comments) and AT&T/CVON (see here for some interesting comments), but nothing that has significantly altered the way patentability is assessed according to UK law.

As a result of the case law in the UK not really evolving beyond Symbian, reading through the decisions from the IPO relating to Section 1(2) each month (which I do for the CIPA Journal out of the goodness of my heart) has become something of a mind-numbing process. Seeing the same reasoning and the same relentless refusals time and time again can become a bit boring, so I try to avoid reporting too many of them. Something that seems to turn up every time in a decision relating to patentability is the list of 'signposts' from AT&T/CVON. These were intended to be used as a check to see whether there was any relevant technical effect (bearing in mind the fourth step of the Aerotel test, which Symbian indicated should be taken together with the third), and were of course not meant to be exhaustive, let alone binding. They have, however, been used fairly systematically by the UK IPO to determine the presence of anything technical. The signposts, as set out by Lewison J (see paragraph 40 of the judgment) are as follows:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 

iii) whether the claimed technical effect results in the computer being made to operate in a new way; 

iv) whether there is an increase in the speed or reliability of the computer; 

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

The fourth signpost is often used by applicants (or more usually their attorneys) claiming a technical effect, where there is at least an arguable case for an improvement in efficiency obtained as a result of a new computer program. UK IPO hearing officers, however, tend to view this signpost quite narrowly, and usually only allow such efficiencies to be relevant if they are somehow tied to something outside the normal operation of software. Simply making a piece of software more efficient is usually not enough to point towards an increase in the speed or reliability of the computer, despite what Symbian might have suggested.

A recent judgment from the UK Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 might help in allowing arguments relating to the fourth signpost to be given more weight. The case related to European patents EP2098948 (application number 09154313.2) and EP1964022 (application number 06846405.6), both of which were found by Floyd J in the Patents Court to be invalid (see here). EP1964022 related to the well-known "slide to unlock" feature (shown in the drawing on the right, taken from the patent) used in Apple's iPod, iPad and iPhone products. This was found by Floyd J to be either not novel or to lack an inventive step over the prior art.

EP2098948 was also found to be invalid, although for relating to excluded subject matter, in particular for being a computer program as such. This patent related to how multi-touch gestures were processed so that recognised multi-touch gestures could be directed accordingly to software elements in the device. Apple argued that the invention met all the signposts of AT&T/CVON, meeting the fourth one because the invention simplified application coding. Floyd J disagreed, and considered that the invention was concerned with the way in which software operated on the data relating to touch events, which did not make the computer operate in any new way and there was no evidence of an increase in speed or reliability. On appeal, however, both Kitchin LJ and Lewison LJ (as he now is) considered that the narrow interpretation placed on the fourth signpost was too restrictive. Lewison LJ reflected on the signposts that he formulated and thought that they "may have been expressed too restrictively", preferring the judgment of Mann J in Gemstar-TV Guide v Virgin Media, who said "It would be a relevant technical effect if the program made the computer a better computer in the sense of running more efficiently and effectively as a computer" (paragraph 42). Kitchin LJ also considered that they were "useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case. I have also had the benefit of reading in draft Lewison LJ's judgment in this case. I respectfully agree with that too, including his observation that, in the light of Mann J's judgment in Gemstar-TV Guide International Inc v Virgin Media Ltd [2009] EWHC 3068 (Ch), [2010] RPC 10, he would adopt as his fourth signpost the less restrictive question whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. Indeed, this is, to my mind, another illustration of the still broader question whether the invention solves a technical problem within the computer" (paragraph 51).

I now eagerly await the first decision from the IPO where this newly broadened signpost has been properly taken into account. Although the change will probably not have a great effect on extending the boundary of what is considered patentable for computer-implemented inventions, it will certainly result in some greater consideration at the IPO of what constitutes a technical effect according to UK law.

Faster patents from the UK IPO but not the EPO

Last month the UK IPO announced a consultation on a new "superfast service" for processing patent applications, proposing that a patent could be granted as quickly as 90 days from filing if the applicant paid a fee in the region of £3.5 to £4k. Apart from the new fee, the only real differences over existing ways of accelerating applications (for example by using the Green Channel) are that: i) no reason would be required for acceleration; and ii) the usual 3 month period for third party observations after publication would be shortened to 1 month. As far as the UK goes, these proposals are not particularly ground-breaking, and the only objection I would have is that the high fee will probably put most applicants off, resulting in very little use of the service. There may, however, some cases where applicants really do need to get a patent granted quickly and cannot afford to wait for the application process to take its usual course.

If the UK IPO is happy to grant applications quickly, then why not the EPO? After all, the end result as far as protection in the UK is concerned is (or should be) the same. This is where one of the differences between the UK Patents Act 1977 and the European Patent Convention comes into play, and it comes down to that pesky Article 54(3) EPC again (corresponding to Section 2(3) in the UK Act).

If an application is searched and examined earlier than 18 months from its filing date, there is a possibility that some prior art might be missed, because Article 54(3) / Section 2(3) prior art will only make itself fully known after this date. Under UK law, this does not need to hold up grant because any missing prior art  can be searched for by the examiner doing a 'top up' search after grant. If anything relevant does come up, the examiner can offer the proprietor the opportunity to comment and amend as required, under Section 73(1) (although the downside is that by that stage the only amendments allowed are narrowing ones). The EPC, however, has no corresponding provision because, once a patent has been granted, it is no longer the responsibility of the EPO, except if an opposition is filed or in the limited circumstances of a request by the proprietor for limitation or revocation. Therefore, even though Article 93(2) suggests that grant might occur earlier than 18 months from the date of filing this does not in practice happen. I would, incidentally, be very interested to be pointed towards anything that would disagree with this.

This difference in the ability to speed up prosecution has been confirmed by T 1849/12 (in German only; see K's Law here for an English summary and discussion), in which the EPO board of appeal agreed with the examining division's decision to refuse the applicant's request to have their application granted earlier than the 18 month publication date. Their reason was that the examining division was required to come to a decision on grant based on all the requirements of the EPC, i.e. including Article 54(3). Only when the ED was of the opinion that all requirements were fulfilled could the application proceed to grant.

The conclusion seems to be that, at least as far as choosing between getting a patent from the UK IPO and EPO goes, you can either have slow and sure or fast and loose. Which would you prefer?

Imaginary claims and conflicting divisionals

After my last post about the "poisonous divisionals" hypothesis, I have been thinking about the issue a bit more, helped by some very useful comments on the post, as well as on other articles about the issue. I now have what I think is an answer that may make the problem go away.

For anyone who is not yet aware (and for those who are, simply skip to the next paragraph), the issue relates to a European patent application having a claim that is broader than anything in the priority application becoming invalid through lack of novelty once a divisional application is filed and published, because the divisional application becomes prior art under Article 54(3) EPC as a result of the claim not being entitled to priority. This strange result comes from a literal interpretation of the wording of Article 54(3), which makes no distinction between applications that may be related to the one in question and other applications (or indeed, as might be argued, the application itself).

My solution to the problem relates not to some unwritten rule that divisionals and priority documents should not be considered to be prior art (which some would argue), but to Article 88(2) EPC, which states:

"(2) Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority".

The simplest way of thinking about a claim having more than one priority would be where the claim contains alternatives, in which case it can be easily divided into two or more separate claims. Some alternatives might have a valid claim to priority, while others might not. Let's say a claim is directed to a widget made of copper or iron, and the priority document discloses only copper. The claim is entitled to priority only for the copper widget, but the claim can be rewritten anyway to: i) a widget made of copper; and ii) a widget made of iron. The first claim would be entitled to priority, and therefore not at risk if a divisional is filed, while the second lacks a valid priority claim but is novel over the priority disclosure, so would also not be at risk.

No distinction in Article 88(2) is made regarding the form the claim takes. More complicated forms of claims can therefore also have multiple claims to priority, although separating them out may be more tricky. To take a slightly more complicated example, let's say claim 1 is directed to a widget made of metal, and the priority document only discloses widgets made of copper. The claim cannot easily be divided into two from the wording alone, but can at least theoretically be considered to be two claims: i) a widget made of copper; and ii) a widget made of a metal other than copper. These claims together have the exact same scope as the original claim. As before, the first claim is entitled to priority and is therefore not at risk if a divisional is filed, while the second claim is novel over the priority disclosure and is therefore also not at risk.

Some of the discussions about how to tackle the conflicting divisionals problem focus on what kinds of disclaimers might be used to get around the problem in this kind of way. In my view this misses the point, although the idea does get part of the way there. The concept that a broad claim can theoretically be divided into two parts, one of which is entitled to priority and the other which is inevitably novel over the priority disclosure, is itself sufficient to overcome the problem even if the exact form of wording is not easily derived from the application. This is because the collective scope of the resulting two imaginary claims would be exactly the same as the original claim, and Article 88(2) EPC indicates that there is no need to actually rewrite the claim to be two separate claims. There is therefore no need to find the right form of wording to satisfy added matter requirements because no amendment is needed.

I see a nice parallel here with mathematics, where imaginary numbers are of great use in solving real problems, for example in finding the roots of a cubic function or in modelling electrical circuits in response to time-varying signals. Just because there is no real solution to the square root of -1 does not mean that an imaginary solution (usually termed i) cannot be a useful way of looking at a particular problem where this might arise. In the same way with problematic claims, just because there may not be a way of rewriting the claim as two parts, each of which would be valid for different reasons, does not mean that considering such imaginary claims cannot be a useful way of solving the problem of conflicting divisionals.

As usual I may, of course, be wrong. Any thoughts on the issue would be welcome.

Update 25 May: A commenter has pointed me to T 1222/11, which seems to support the idea. See point 11.5.5 in particular.

Update 15 June: There is an interesting discussion on the IPKat here on the related issue in the Nestec v Dualit case.

Update 31 November 2016 / 7 February 2017: I have been proved right! See my posts on the outcome of G 1/15 here and here.

"Poisonous divisionals" hypothesis confirmed

A couple of years ago I wrote a post on the question of whether a divisional application could effectively poison its own parent if the priority document became Article 54(3) prior art as a result of a claim to priority being invalid. At the time I thought it was a bit far-fetched, although I could not see any actual reason for the hypothesis to be wrong.

Prompted by a recent decision in the Patents Court (Nestec v Dualit - see paragraph 111, and the IPKat here for more details) in which claims of a European patent were found to lack novelty over its own priority document, I have now been pointed towards a recent decision by the EPO, T 1496/11. In this, the similar but potentially more dangerous "poisonous divisionals" (now a registered trade mark - see below) hypothesis appears to have been put to the test and found to work in practice.

The Board of Appeal found that claim 1 of patent EP0930979, as maintained by the opposition division, did not have a valid claim to priority because it had been generalised to encompass more options than were disclosed in the priority document. As a result, a divisional application became relevant for novelty under Article 54(3), and the claim was found to be anticipated. In this case the problem could be (and was) easily fixed by narrowing claim 1 to again have a valid claim to priority. I expect a fix similar to this would be possible in most cases, although it would probably result in a less satisfactory scope than the patentee was hoping to get. The decision does, however, confirm that the potential prior art effect of divisional applications should be carefully considered and not just dismissed as a theoretical possibility. More importantly, it shows that great care should be taken when filing an application from which priority will be claimed, particularly when the priority filing is narrow in its disclosure and needs to be generalised in a later filing. In some cases it might even be worth abandoning a priority filing and re-setting the clock to avoid such a problem.

Update 8 May 2013: See also the news article here from Hoffmann Eitle, K's Law here, and a (typically wordy) article from Avidity here.

Update 9 May 2013: In what seems to me to be a rather strange move, Avidity IP Limited have registered the terms 'poisonous divisional' and 'poisonous divisionals' as a series of trade marks at the UK IPO under class 45 for various intellectual property and other services. Whether they will seek to (or be able to) enforce the marks in relation to the terms being used in a blog post or otherwise is, however, unclear.

Update 16 May 2013: The generally excellent IPCopy blog from Keltie has picked up on the issue here, and added some interesting points about the relevance of Nestec v Dualit., as well as proposing an alternative to the 'poisonous divisionals' trade mark.

Update 12 June 2013: See the follow up post on my solution to the problem here.

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. 

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.