Restoration of UK Patents: The Requirement for Evidence

The Patents Court has recently considered the requirements for obtaining restoration of a lapsed patent in the July 2008 case of Matsushita Electric Industrial Co v. Comptroller General of Patents.
When a UK patent lapses through failure to pay a renewal fee, the proprietor may apply for restoration. To succeed, the Comptroller must be satisfied that the failure to pay the fee on time was “unintentional”. This test was introduced in 2005. Previously, it had been necessary to satisfy the Comptroller that the proprietor had taken “reasonable care” to see that the fee was paid in time and evidence establishing the circumstances was required. The Matsushita case concerned whether evidence of the circumstances is still required in order to meet the “unintentional” test.

Background
In this case, three patents had lapsed and applications for restoration were filed stating that it had never been the proprietor’s intention to allow the patents to lapse. A statement to the same effect from the proprietor was provided, but no other supporting evidence was filed. The UKIPO requested information on the circumstances in order to establish if the lapse was indeed unintentional. The proprietor argued that this was unnecessary. A Hearing Officer’s decision was issued indicating that a mere declaration that the failure to pay the renewal fee was unintentional was not sufficient. The Comptroller’s decision-making powers imposed by the legislation depended upon whether the Comptroller was or was not satisfied that a case for restoration had been made out. Evidence was therefore needed to enable the Comptroller to decide whether he was not satisfied.

Matsushita appealed to the Patents Court arguing that the questions raised by the UKIPO were only relevant to the requirements under the old “reasonable care” provision and not the new “unintentional” provision. The appellant further argued that it would be difficult, time consuming and expensive to provide full evidence of the circumstances, that the aim of the new provision to make restoration simpler would not be achieved if evidence was required, that requiring evidence would in effect mean a return to the old provisions, and that rejecting a bold assertion from the proprietor would amount to disbelieving the proprietor or his representative without good reason to do so.

Decision
The Patents Court dismissed the appeal. The Court held that restoration was not a casual administrative step. It had potentially far-reaching consequences and that alone justified the Comptroller’s view that a mere assertion that the failure to pay the renewal fee was unintentional was not sufficient.Indeed, the legislation did not require a statement that the failure to pay the fee was unintentional. Rather, it required the Comptroller to be satisfied that it was indeed unintentional. It was held not unreasonable to expect the proprietor or his representative to go to some effort to convince the Comptroller what had occurred. The new provision was less onerous in terms of content and steps necessary than the old provision but this did not mean that the test was reduced to a mere formality. The new test was indeed different to the old test and was easier to fulfil. For the UKIPO to reject a mere assertion by the proprietor that the failure to renew was unintentional, was not tantamount to disbelieving the proprietor but was an indication that the burden placed upon the proprietor by the legislation had not been fulfilled.

Conclusion
The case confirms that to succeed with an application for restoration of a lapsed patent it is necessary to provide evidence establishing the circumstances and showing that failure to renew the patent was indeed unintentional. The hurdle faced by a proprietor is not so great as under the old provisions, since a mere oversight can now be excused. Nevertheless, it is still necessary to show that the proprietor intended to pay the renewal fees by explaining the circumstances surrounding the matter. Restoration is still not available in the case where a proprietor has decided to allow a patent to lapse and then changed his mind.

Boult Wade Tennant

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