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Friday, 2 March 2007

Abaco Machines Ltd's application

The IPKat has noticed a recent decision from the Patents Court that emphasises the crucial importance of keeping to deadlines when dealing with patent applications, and what can happen if deadlines are missed.

The case (available on BAILII) resulted from failure to file a PCT application within the normal 12 month Paris Convention period. A priority application was filed by Abaco in Vietnam (a member of the Paris Convention since 1949 and the PCT since 1993) on 7 January 2004. The 12 month deadline therefore fell on 7 January 2005. Unfortunately, due to various clerical errors by Abaco's Australian attorney, the PCT application was not filed on time, and was therefore irretrievably lost. To try to salvage something, an application was filed directly at the UK Patent Office on 7 March 2005, just within the extra two month period allowed by section 5(2A-2C) and Rule 6A for making a late declaration of priority. For this to be allowed, however, the comptroller had to be satisfied that the failure to file the application on time was unintentional.

In a hearing at the Patent Office (BL O/309/06, 30 October 2006), the hearing officer decided that the 'unintentional' test did not apply, since the applicant did not intend to file a UK application within the 12 month period, but always intended to file a PCT application. The UK application with late declaration request was therefore filed intentionally after the 12 month period. The request was therefore refused.

Abaco appealed the decision to the Patents Court, where it came before Mr Justice Lewison. The meaning of the changes that were made to the Patents Act to allow late declarations were discussed, these being a result of the Patent Law Treaty. Lewison J, however, did not agree with the arguments put forward that the PLT's intention was to allow this type of late declaration, because the PLT only applied to PCT applications once they entered the national or regional phase. It did not therefore include PCT applications while in the international phase. Section 5 of the Act was consistent with this.

One key point from the judgment was the following:

"[T]he PCT is a package. Part of the package is, for the moment, a rigid timetable. [H]aving chosen to use the PCT route, Abaco must take the PCT system as they find it" (para 25).
Lewison J agreed with the finding of the hearing officer, and considered that it could not be said that Abaco had unintentionally failed to file an application for the grant of a UK patent. The appeal was therefore dismissed.

While the IPKat feels sorry for the Australian attorney, because they really did intend to file something, he also feels that they really should have had a better system in place that didn't allow little slips to result in such catastrophic errors. For want of a nail...

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