Background
Windward’s UK patent application, GB2108001.5, was subject to a compliance date of 5 June 2023. Its agents missed an earlier deadline to respond to a second examination report and sought an extension on 27 March 2023. The examiner asked Windward to provide the underlying emails said to show that the failure had been unintentional, but no response was supplied by either of two later deadlines. The application was refused.
Windward later contended that it had not received the Intellectual Property Office’s emails of 16 May, 31 October and 13 December 2023, and sought an extension under rules 107 and 111 of the Patents Rules 2007. The Comptroller’s hearing officer rejected that request. Windward appealed, principally arguing that the missed deadline was wholly or mainly attributable to a failure of electronic communications.
The Court’s Holding
Recorder Douglas Campbell KC dismissed the appeal. Rule 111 required the Comptroller to be satisfied that the failure was wholly or mainly attributable to a delay in, or failure of, a communication service. The Court was not satisfied that any such failure had occurred: the IPO had sent its correspondence to the correct address, received no delivery-failure notices, and Windward’s evidence did not establish non-receipt.
The Court also held that a bare assertion is insufficient where the Comptroller must be “satisfied” of a relevant fact. On appeal, Windward conceded that its agents had received but not actioned the November 2022 and March 2023 instructions from the Israeli attorneys. That concession undermined repeated assertions that those instructions had not been received. The Court found no procedural irregularity capable of correction under rule 107, and no material prejudice from the hearing officer having shown, but not provided, an IPO IT report.
Key Takeaways
- Rule 111 relief requires proof that a communication-service failure wholly or mainly caused the missed act.
- Assertions of non-receipt, without reliable supporting evidence, will not satisfy the Comptroller or the Court.
- An applicant’s or agent’s failure to act on received communications may defeat a request to extend a patent-procedure deadline.
Why It Matters
The decision confirms the evidential burden on applicants seeking relief from missed patent deadlines. A communication-failure explanation must be substantiated and must be the principal cause of the default, not merely one possible factor.
It also distinguishes the separate issue of whether a failure was unintentional from the statutory tests in rules 107 and 111. Patent attorneys should maintain reliable systems for actioning instructions and following procedural deadlines.