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Reinstatement of UK patent applications

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

The UK-IPO has this week issued a practice notice relating to reinstatement of patent applications, following Mr Justice Pumfrey's judgment in Anning's application [2007] EWHC 2770 (Pat). This attempts to clarify what happens if there has been a failure to meet a time limit, for example as given in an examination report. The substance of the notice goes as follows:

Where an application has been treated as refused at the end of the compliance period due to failure to respond to a substantive examination report, the application may be reinstated provided that the requirements of section 20A and rule 32 are met. Where reinstatement is allowed, the applicant shall be allowed a period of not less than two months to respond to the substantive examination report, since it is the failure to respond to the examination report which led to the application being treated as refused. However, this will not have the effect of extending the compliance period. Therefore, where an application is reinstated after the compliance period has ended, and the opportunity under rule 108 for extending that period has expired, amendment of the reinstated application will not be possible. The applicant will instead have the opportunity of providing arguments, within the two month period, to show that the application was in order at the end of the compliance period.

It follows that in any circumstances where an application is refused, or treated as having been refused or withdrawn, due to failure by the applicant to comply with a requirement of the Act or rules, reinstatement of the application will not have the effect of extending the compliance period.

This notice highlights the importance of putting the application in order before the end of the compliance period. The compliance period may be extended in two-month tranches under rule 108(2) or 108(3), by filing Form 52, the appropriate fee and evidence supporting the request for an extension, if rule 108(3) applies. Any request for such an extension must be filed within two months of expiry of the period.

The IPKat is unsure why it has taken the UK-IPO nearly two years to getting round to doing this. Does it tell us anything we didn't already know?

Full post as published by IPKat on August 21, 2009 (boomark / email).