Betson Medical (Ireland) Ltd v Comptroller General of Patents

Factual and Procedural Background

The Appellant, Company A, appealed against a decision by Judge Williams, Hearing Officer for the Comptroller, dated 12 November 2009, which refused Company A's application to restore European Patent UK No. 0957878 ("the Patent") following non-payment of a renewal fee. The renewal fee for the eighth year of the Patent was due on 6 December 2003 but was not paid within the prescribed period or the six-month grace period under section 25(4) of the Patents Act 1977, causing the Patent to lapse.

Company A filed an application for restoration on 6 July 2005, within the 19 months allowed under rule 41(1)(a) of the Patents Rules 1995. The Intellectual Property Office (IPO) initially took a preliminary view that restoration requirements were not met. Company A requested a hearing scheduled for 18 September 2009 but later consented to a decision based on the papers on file. The Hearing Officer issued a written decision refusing restoration.

The Patent application was originally filed on 6 December 1996 by an individual referred to as Plaintiff. On 20 October 1999, the application was assigned to Company A. Plaintiff had authorised a firm of attorneys to handle reminders for renewal fees but later replaced them as the address for service. Plaintiff was aware of the renewal fee deadline but was unable to pay due to financial difficulties. Plaintiff met with another attorney firm in January 2004 to discuss patent portfolio management, but no clear instructions were given for payment of renewal fees.

Throughout the relevant period, Plaintiff sought funding from banks and private investors to pay renewal fees and commercialise the invention. Negotiations with a private investor resulted in funds becoming available only after the renewal deadline. Plaintiff's evidence indicated prioritisation of personal living expenses over payment of the renewal fee. Company A had no funds or overdraft facility at the time.

Legal Issues Presented

1. Whether Company A, as proprietor, or Plaintiff on its behalf, took reasonable care to ensure payment of the renewal fee and prescribed additional fee for the Patent within the prescribed period or six-month grace period under section 28(3) of the Patents Act 1977.
2. Whether impecuniosity (lack of funds) excuses failure to pay renewal fees absent evidence of reasonable care to secure payment.

Arguments of the Parties

Appellant's Arguments

• The Hearing Officer applied too strict a test for reasonable care.
• Company A and Plaintiff made strenuous efforts to secure funding to pay renewal fees and commercialise the invention.
• Plaintiff intended to pay the renewal fee but was prevented by severe financial shortage.
• Funds available were used for essential living expenses, and it was unreasonable to expect diversion of these funds to pay the renewal fee.
• The Hearing Officer erred in concluding that Plaintiff failed to take reasonable care to ensure payment.

Table of Precedents Cited

Court's Reasoning and Analysis

The court focused on whether Company A or Plaintiff on its behalf took reasonable care to ensure payment of the renewal fee and additional fee by the final deadline of 6 June 2004. The court emphasized that the question was narrowly concerned with the specific renewal fee for the Patent, not the entire patent portfolio or commercialisation efforts.

The court reviewed Plaintiff's evidence that he was aware of the deadlines and actively sought funds from banks and private investors, but funds were not available in time. The court noted Plaintiff's prioritisation of personal living expenses over payment of the renewal fee, despite the relatively small amount due compared to the sums sought from investors.

The court found deficiencies in the evidence, including failure to demonstrate that Plaintiff sought the limited sum necessary to renew the Patent from investors or personal contacts by the deadline. Bank statements contradicted some assertions about the company’s financial position. Plaintiff did not provide supporting documentation for expenses or demonstrate efforts to divert available funds to pay the renewal fee.

Applying the legal principles from cited precedents, the court concluded that mere inability to pay was insufficient without evidence of reasonable care to secure payment. The evidence did not establish that reasonable care was taken to pay the renewal fee by the deadline. The Hearing Officer's decision was correct to refuse restoration.

Holding and Implications

The court DISMISSED the appeal by Company A against the refusal to restore the Patent.

The direct effect of this decision is that the Patent remains lapsed due to non-payment of the renewal fee. No restoration order was granted. The court did not establish new legal precedent but reaffirmed the established requirement that patentees must take reasonable care to ensure payment of renewal fees, including demonstrating reasonable efforts to secure funds when impecunious.