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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> GlycoBioSciences Inc. (Patent) [2010] UKIntelP o13210 (30 April 2010) URL: http://www.bailii.org/uk/cases/UKIntelP/2010/o13210.html Cite as: [2010] UKIntelP o13210 |
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For the whole decision click here: o13210
Summary
The renewal fees in respect of the twelfth year of this patent fell due on 25th September 2007. The renewal fee was not paid by that date or during the grace period allowed under s. 25(4). The application for restoration was filed outside the period for applying for restoration specified in s. 28(1) and prescribed as thirteen months under r. 40(1), which is normally not extendable (r.108.)
Due to problems between the original proprietors of the patent (LAM) and their American attorney, the eleventh year renewal fee was not paid in the usual way i.e. via the US attorney instructing the UK attorney. Indeed, because of these problems, the US attorney had instructed the UK attorney to take no further action on this patent. The UK attorney duly marked their records against the patent as “abandoned”. Later, unknown to either the US or the UK attorneys, Mr Kales of LAM paid the eleventh year renewal fee via a faxed official fee sheet and the correct remittance using his personal credit card. The IPO issued a receipt and certificate of payment to Mr Kales after first completing a Form 12/77 on his behalf and making an email enquiry as to where to send them.
The twelfth year reminder from the IPO that the renewal fee had not been paid on time was duly sent to the UK attorney, but they took no action on it believing the case to have been abandoned in the previous year. The matter subsequently came to light when the new proprietors GlycoBioSciences Inc (the applicant for restoration) acquired the patent portfolio of LAM Pharmaceutical Corp.
The applicant accepts that the application for restoration was filed outside the period allowed, which is not normally extendable. However, it argues that this can be remedied under r.107 because of errors in procedure on the part of the Comptroller. Inter alia they argued that the IPO had no legal authority to accept the renewal fee from Mr Kales without a Form 12/77 or to complete the Form 12/77 on his behalf and that doing so deprived Mr Kales the option of changing the address to which the next (the twelfth) year’s reminder should be sent. Consequently the twelfth year reminder was sent to the UK attorney, who believing from their records that the patent had been abandoned the previous year, took no action to pay the year twelve renewal fee.
The HO found that the IPO did have the authority to accept information required by the Form 12/77 in another format (under r. 4) but that the IPO had indeed erred by not gaining all the information required by the Form 12/77, specifically that in Box 6 relating to the next year’s renewal reminder. As such he accepted the application for restoration under s.28(1). However, he remitted the case back to the IPO to seek further evidence to address the requirements of section 28(3).
