BL number
O/012/19
Concerning rights in
GB1811004.9
Hearing Officer
Mr B Buchanan
Decision date
9 January 2019
Person(s) or Company(s) involved
Akron Brass Company
Provisions discussed
Patents Act 1977 Sections: 1(1), 14(5), 15(9), 21(1), 76(2), 91(1), 91(2), 130(6), 130(7); Patents Rules 2007: 19, 29(3)(b), 29(4)(a), 29(4)(b), 30(4) European Patent Convention: Article 115
Keywords
Clarity, Divisional application, Section 20 period, Support, Third party observations
Related Decisions
None

Summary

This decision considers the issue of whether patent application GB1811004.9 can be accorded divisional status by virtue of being filed on time if the compliance period of the parent is extended under rule 30(4). To satisfy rule 30(4), an examination report on the parent issued following third party observations under section 21 must constitute a ‘first observations report’ according to rules 29(3)(b) and 29(4).

If it does, under rule 30(4), the remaining rule 30 period of the parent is extended to 3 months from the date on which the first observations report was sent and the present divisional application may then be treated as having been filed in time. If not, the compliance period on the parent will only have been extended as of right by two months and the divisional will have been filed four days late. In this event, an auxiliary request was made to accept the application as a late filed divisional.

The Hearing Officer heard arguments, inspired by the Court of Appeal’s judgment in Genentech Inc.’s Patent, that observations in respect of compliance with section 14(5) constitute observations on patentability permitted under section 21; that under section 130(7) of the Act, section 14(5) should, as nearly as practicable, have the same effect as the corresponding provision of the EPC; and that although not explicitly provided for in section 130(7), IPO practice in respect of sections 21 and 76(2) should be in harmony with the EPC and EPO guidelines consistent with section 91(1)(c) of the Act.

He carefully considered the arguments and the wording of the Act and Rules which refer to “patentability” and a “patentable invention” and found that observations on clarity, support and added matter relating to sections 14(5) and 76(2) did not meet the requirements of section 21 and rule 29(4)(a).

He then considered whether the examiner had reported as a consequence of the observations and analysed both the argument that the examiner’s report had “followed and mirrored” the observations in part, and the facts that the examiner’s report was not consistent with all of the observations and that the report was based on no new information. On balance he decided that rule 29(4)(b) was not met.

Finally, the Hearing Officer considered whether the circumstances were exceptional and that the applicant had been properly diligent such as to exercise the Comptroller’s discretion to allow the application to proceed as a late filed divisional. He decided that the circumstances were not exceptional prior to the divisional application being filed and the applicant had not been diligent despite filing the application quickly once the deadline for doing so had passed. He decided that the Comptroller will not exercise discretion to allow the late filing and so the application may not be accorded divisional status under section 15(9).

Full decision O/012/19 PDF document421Kb

https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl?BL_Number=O/012/19
Content Reproduced verbatim from the Website of the United Kingdom Intellectual Property Office (UKIPO) as permitted under their Terms of Use.

 
 
 
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