The exercise of discretion to extend UKIPO deadlines
11 January 2018
Adherence to deadlines and the intellectual property office’s exercise of discretion to extend those deadlines is a core issue for every patent attorney. In BL O/660/17 Cummins-Allison Corp, 21 December 2017, the UK Intellectual Property Office has considered its ability to exercise that discretion.
In the UK, an application for a divisional patent must be filed three months or more before the compliance date of the parent application. In the case at hand, on the compliance date for the parent application, the applicant filed a new patent application GB1714891.7 and requested that it have status as a divisional application of the parent.
To address the three month requirement, the applicant filed a request for an as-of-right two month extension and a further discretionary extension of the compliance period on the parent application.
It therefore fell to the Hearing Officer to consider whether to exercise the discretion. Paragraph 15.21 of the Manual of Patent Practice provides guidance as to when discretion may be exercised favourably. It says that:
discretion will normally be exercised only if the applicant shows that the circumstances are exceptional and that he has been properly diligent (Penwalt Corporation's Application (BL O/72/82); International Barrier Corporations's Application; Kokusai Denshin Denwa's Application (BL O/9/83); Luk Lamellan und Kupplungsbau GmbH's Application  RPC 104.
Counsel for the applicant submitted that there were exceptional circumstances: the instructing US attorneys had changed, the UK attorneys had changed, there had been a move from paper to electronic files leading to the loss of the paper note regarding a potential divisional application, and, on the basis of the correspondence as it appeared on the file, the UK attorney had cleared the electronic reminder regarding divisionals from the diary.
The Hearing Officer considered these issues and concluded that the circumstances were exceptional, and that the applicant and those acting for them acted with proper diligence. Therefore, the Hearing Officer granted a discretionary extension of the compliance period.
Case details at a glance
Decision level: UK Intellectual Property Office (UKIPO)
Citation: BL O/660/17
Date: 21 December 2017
Link to full decision (PDF): http://dycip.com/ukipo-deadlines