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Comptroller not a mere rubber-stamp for patent restorations

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Another decision that slipped by last week was the ruling of Mr Justice Mann (Patents Court, England and Wales) in Matshusita Electric Industrial Company Ltd and others v UK Intellectual Property Office, a decision that has so far only made the columns of the subscription-only LexisNexis Butterworths service.

Matsushita owned four patents for which no renewal fees were paid on the due date (9 December 2005). Those fees remained unpaid on 25 April 2006, the latest date of the extended statutory period for late payment. On 9 October 2006 -- 10 months after the original renewal date, Matsushita applied for restoration of the patents, invoking s.28(1) of the Patents Act 1977 ("Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the comptroller within the prescribed period... "). By s.28(3) of the same Act it is provided that

"If the Comptroller is satisfied that the failure of the proprietor of the patent

(a) to pay the renewal fee within the prescribed period; or

(b) to pay that fee and any prescribed additional fee within the period ending with the sixth month after the month in which the prescribed period ended,

was unintentional, the Comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee... ".

These applications for restoration were supported by a witness statement prepared by
Computer Patent Annuities (CPA), which asserted that the failure to pay the necessary renewal fees had been unintentional.

The Patent Office wrote to ask for further details of the reasons behind the non-payment, but CPA took the view that, for the purposes of s.28(3), a mere assertion to that effect was sufficient. Accordingly Matsushita was not obliged to provide any further information. Following more correspondence, the hearing officer wrote to Matsushita and asked that it put in further evidence, as requested, or its applications would be refused. Matsushita failed to do so and the hearing officer refused their applications. Matsushita appealed.

The issue arose as to whether the Comptroller-General of Patents (the comptroller) should be 'satisfied' that the failure to pay the renewal fees had been unintentional, as required by s 28(3) of the Act, if merely presented with a mere assertion to that effect and nothing more.

Mann J dismissed the appeal. Describing the restoration of a patent as a serious, significant act with proprietary effect, not a casual administrative step, he affirmed that s.28(3) required that the Comptroller should be satisfied that the failure to pay the renewal fee had been unintentional. The mere assertion that the failure to pay renewal fees was unintentional would not suffice. If it could, the Comptroller's role would be reduced to a purely clerical one. This was objectionable in principle and would amount to letting an applicant make such a decision and to decide as a matter of law what was necessary to prove that the non-payment was unintentional.

The IPKat doesn't blame Matsushita for persisting with a lost cause, since the patents in question were probably worth a great deal more than the cost of the initial ruling and subsequent appeal -- but, even aside from the matter of principle involved, he didn't feel that the wording of s.28 offered much hope. Merpel asks, if the sanctity of the continued existence of a patent is such an important thing, don't you think that the two-bites-of-the-cherry system of allowing both late renewals and post-lapse restorations sends out the wrong message to patent owners?

Restoration here, here and here
Custom rubber stamps here and here -- and bouncing letters here

Full post as published by IPKat on July 24, 2008 (boomark / email).