Section 20: Failure of application

Sections (20.01 - 20.10) last updated April 2024.

20.01

Rule 30 is relevant to this section. This rule sets out the compliance period, ie the period for putting an application in order.

Section 20(1)

If it is not determined that an application for a patent complies before the end of the prescribed period with all the requirements of this Act and the rules, the application shall be treated as having been refused by the comptroller at the end of that period, and section 97 below shall apply accordingly.

20.02

r.30, r.2(2), r.108(3) r.108(4) is also relevant.

The period prescribed for the purposes of this subsection (and for s.18(4)) is the compliance period. The compliance period is (i) four years and six months calculated from the declared priority date or, where there is none, from the filing date of the application; or (ii) twelve months calculated from the date that the first substantive examination report is sent to the applicant, whichever expires the later. Where the first substantive examination report is not sent to the applicant before the expiry of the period set out at (i) above, that period is extended to such date as that report is sent to the applicant and the period set out at (ii) then applies. The above periods, set out in r.30, ensure that applicants always have time in which to complete prosecution of their applications, and ensure that the application does not lapse if the first s.18 report does not issue until after 4½ years.

However, r.30(3)(a) specifies that where the application claims an earlier date of filing under s.8(3), 12(6) or 37(4), the period is either (i) the period prescribed by r.30(2) in relation to the earlier application, or is (ii) eighteen months from the actual date of filing, whichever period expires the later.

From 1st May 2023 the way divisional applications are accorded their compliance date will change (see also 15.20.1):

(i) For divisional applications filed prior to 1st May 2023, any extension made under rule 108 to the compliance period prescribed on the earlier application (the so-called ‘‘parent’’ application) will also apply to any divisional applications filed on or after the date that the period was extended. The compliance period for any such divisional applications will therefore be the period as extended. However, if the compliance period prescribed on the earlier application is later extended, that extension will not apply to any divisional applications which have already been filed; a separate request will be required to extend the compliance period for any such divisional applications.

(ii) For divisional applications filed on or after 1st May 2023, any extensions to the compliance period of the earlier application under r.108(2)/r.108(3) will no longer be inherited upon filing. From 1st May 2023 all divisional applications will be accorded a compliance date that is the same as the un-extended compliance date of their parent application in accordance with r.30(3)(b).

The period for putting any application in order may be extended in two month tranches in accordance with r.108(2) or (3) and (4) to (7), see 123.34-41. The period may also be extended by the provisions of s.20(2) (see 20.08 - 20.10). For the periods in the case of divisional applications, in the case of new applications filed under s.8(3), 12(6) or 37(4), or in the case of European patents (UK) converted under s.81 also see 15.20.1, 8.25.1, 12.16.1, 37.17.1 and 81.19 respectively.

In Xu’s Application (BL O/610/22) the hearing officer (HO) considered what factors should be taken into account when deciding whether or not to exercise the Comptroller’s discretion to allow a 4th extension to the compliance period under r.108(3), for the purposes of allowing an applicant the opportunity to overcome the objections set out in a s.18(3) report (see also 18.59). The HO decided that the key issue was to balance the reason why the discretionary extension was being requested against the need to provide certainty for third parties. Furthermore, the number of extensions already allowed and how close an application was to being acceptable, were relevant factors to consider to avoid the ‘‘spectre of endless extensions.’’

In Munchkin Inc’s Application (BL O/623/17) the hearing officer considered, among other things, whether to exercise the Comptroller’s discretion to allow an extension to the compliance period for the purpose of filing amendments on both a parent and divisional application. The hearing officer concluded that the workload faced by the Applicant’s legal staff working on an application was not grounds for a discretionary extension to the compliance period under r.108(3). A short time scale for responding to objections set out in a s.18(3) examination report was also not considered to be exceptional.

The hearing officer emphasised in BL O/623/17 that for pre-grant amendments to be considered it is necessary for them to be filed before the end of the compliance period. Where an extension to the latest date for reply is requested under s.117B (see 18.53-18.60) such that the extended latest date for reply would exceed the compliance period, the applicant must first request an extension to the compliance period and have that request accepted under r.108 so that the latest date for response would fall within the extended compliance period. That is to say, the compliance date under s.20 takes precedence over any request to extend the specified latest date for reply. Where amendments are filed after the end of the compliance period and an extension to the compliance period is disallowed, those amendments cannot be considered, as concluded in Optinose’s application (BL O/144/12).

The hearing officer in Metabiotech’s application (BL O/359/23) concluded that neither geographical distance between the applicant and agent, nor complexity of subject matter in isolation constituted sufficient grounds for a discretionary extension of the compliance period under r.108(3). However, an exam report was issued one day before the end of the compliance period which introduced a new citation and objections. Discretion was therefore exercised to extend the compliance period to give the applicant an opportunity to respond to the updated objections.

While r.108 requires that any request for an extension to the compliance period is accompanied by a Form 52, under certain circumstances the explicit use of the form is not essential. The hearing officer in 4D Pharma’s application (BL O/202/21) concluded that where a request for a discretionary extension was filed via email and the associated fee had been waived due to Covid-19 provisions, a written request for a discretionary extension was sufficient to allow an extension, provided that it included all the necessary information, i.e., a request for a discretionary extension to the compliance period and an appropriate reason for doing so, on the basis of r.4(2) and r.4(5). However, as the hearing officer concluded in Optinose’ application (BL O/144/12), the applicant must provide a clear indication that they are requesting an extension to the compliance period, and provide evidence to support a request for a discretionary extension, even if a form 52 is used.

In Walmart Apollo’s Applications BL O/0704/23, the hearing officer decided that a larger than average number of examination reports and the agreement of allowable claims close to the compliance date did not amount to exceptional circumstances when considering whether to allow an extension of the compliance period under r.108(3) for the purpose of filing a divisional application. The hearing officer therefore refused to exercise discretion to allow the extensions of time.

It should be noted that while decisions relating to discretionary extensions of specified periods under r.109, such as the latest date for reply to a s.18(3) examination report, are legally distinct from those under r.108, the reasons for those decisions (detailed in 18.56) may nonetheless be relevant, as highlighted in BL O/610/22.

[ ELC4 should be added to the covering letter when the first report under s.18 is issued later than three years and six months from the priority or filing date. For the procedure if ELC4 was omitted from a first examination letter issued later than three years and six months from the earliest date, see 18.47, 3rd indented paragraph. ]

[ ELC5 should be added to the covering letter of the first s.18 report on a divisional application when the first report on the parent application was issued later than three years and six months from the priority or filing date. It should also be used in the covering letter for a subsequent s.18(3) report on such a divisional application if it was not used at the time of the first report.]

20.02.1

r.30(4), r.29(3)(b) and r.29(4) is also relevant.

R.30(4) provides for an automatic extension of the prescribed period when, as a consequence of observations under s.21 are filed near to the end of the period and give rise to a report under s.18(3) is issued. Where the date of the letter embodying that report is within three months of the end of the existing compliance period, the compliance period becomes three months from the date of the letter. This applies only to the first s.18(3) report based on those particular observations, if there is more than one such report. Rule 30(4) refers to this report as a “first observations report”, and this term is defined in r.29(3)(b) and r.29(4). In Akron Brass Company’s application BL O/012/19 the hearing officer found that only observations relating to s.1(1) (for example novelty or inventive step) can satisfy rule 29(4)(a). Therefore, observations in respect of other issues (such as added matter and clarity) cannot be used as a basis for an extension under r.30(4). Where observations relate to both s.1(1) and other issues, only the parts relating to s.1(1) may be relied on as the basis for an extension under r.30(4). That is, the report under s.18(3) must be issued as a consequence of the parts of the observations relating to s.1(1). The hearing officer held that the examination report in question was not issued as a consequence of the observations, since there was no reason to doubt that a competent examiner would have independently arrived at the objections raised in the examination report. The hearing officer therefore found that an extension was not possible under r.30(4).

[ ELC6 should be used in the examination (covering) letter to inform the applicant of the extension of the period following s.21 observations. ]

20.02.2

In Anning’s Patent Application [2007] EWHC 2770 (Pat), it was held that the compliance period is a period during which the requirements of the Act and Rules must be complied with. It does not impose any additional requirement on the applicant. Therefore it follows that the compliance date does not roll over to the next working day if it falls on a non-working day, since it is not of itself a deadline for doing anything under the Act. See 120.07.

20.03

Outstanding applications are periodically checked to detect those on which a reply to a report issued under s.18(3) is overdue where the compliance period has nearly expired. A letter is sent to the applicant forewarning of the intention to refuse each such application under s.20(1) and giving the applicant an opportunity to submit any observations which might affect refusal. When the compliance period has expired, the application is forwarded to the relevant formalities group for refusal to be authorised. If it is found at that time that the forewarning letter has not been sent, another letter forewarning of the intention to refuse is sent before refusal is confirmed, allowing one week for the applicant to submit any observations. When refusal has occurred, it is advertised in the Journal.

[ The COPS records are combed weekly and applications that are 4¼ years from the declared priority date or filing date and have a certain processing status are identified on the “Section 20 Pick List”. The selection is verified by the formalities groups who should confirm eg whether a Section 18(3) report has been issued to which no reply has been received or indeed whether the report issued in the first place. If it is ascertained that a reply to a Section 18(3) report is overdue a standard letter (WR1) with a copy on file should be issued, forewarning the applicant of the intended refusal. If a reply is not overdue at the time of vetting, the appropriate COPS action should be taken, but if the reply subsequently becomes overdue the letter (WR1) should then be sent.

[ After 4⅔ years have elapsed from the declared priority date or filing date, those applications are selected by COPS on the “Section 20 Time Limit Report” and the relevant Formalities Manager takes appropriate action for treatment as refused under s.20. All such applications should have had the standard letter issued and a copy placed on file. If it is detected that the letter (WR1) has not been issued, the Formalities Manager should issue the alternative forewarning letter (WR2) before sending the file to the relevant Formalities Manager. The Formalities Manager should then therefore not only verify that the application should be treated as refused but also check that one of the letters has been issued (see below if it has not) and that no response which would prevent treatment as refused has been subsequently received.

[ The Formalities Manager should add the appropriate label to the PDAX dossier cover and add a minute to the dossier. Where the application is a paper case the Formalities manager should sign the square on the flap of the shell after verifying that the application is being correctly terminated. (If for example it is found that the application had been incorrectly stored after amendments had been filed, the case should be referred to the Divisional Director; it may be possible to exercise discretion under r.107 to extend the prescribed period.) The Formalities Manager should then annotate the file accordingly, carry out the appropriate COPS action (so that the termination is advertised in the Journal) and forward the file to Nine Mile Point.

[ If it is discovered that a letter (WR1 or WR2) has not been issued the Formalities Manager should, after verifying that the application should be treated as refused, arrange for the alternative letter (WR2) to issue. After allowing time for any response, the Formalities Manager should arrange for action as in the last sentence of the preceding paragraph. ]

20.04

Treatment of the application as having been refused at the end of the prescribed period is mandatory if it fails to comply with any requirement of the Act and Rules within that period. It follows therefore that if a hearing is necessary to resolve a disagreement this should if possible be held and a decision be given and communicated to the applicant before the end of the prescribed period. (The reasons for the decision may be given later if necessary.) It is then possible for the applicant to amend within the period (including any extension by virtue of s.20(2) - see 20.08 - 20.10) in order to meet the terms of an adverse decision. If however the hearing is held after the end of the period it may only be for the purpose of deciding whether or not the application was in order at the end of the period. If it is decided that it was not, then it is not possible to amend to rectify any faults unless the period is extended under r.108(2) or (3). Under these circumstances, the comptroller may consider that, for the benefit of the applicant, a period of less than the minimum fourteen days’ notice of a hearing usually given is appropriate, if this would otherwise lead to the hearing being held after the end of the prescribed period. The wishes of the applicant should however be taken into account.

20.05

It is also in an applicant’s own interest, when filing amendments near the end of the prescribed period, to mark the covering letter URGENT, prominently and boldly and preferably in red.

20.06

If a response filed within the prescribed period fails to put an application in order, but it is not possible to elicit a further response or to arrange a hearing before the end of two months after the expiry of the normal compliance period (ie the period prescribed by r.30 as extended by r.108(2)), the applicant should be told that the application will be treated as having been refused unless within fourteen days they submit observations and/or request a hearing to demonstrate that the application was in fact in order (or request an extension of the compliance period under r.108(3) to (7), see 123.34-41).

[ EL5 may be used. ]

20.07

Provided that an application was in order at the end of the compliance period there is no statutory bar to its being amended after the end of that period; the opportunity to amend an application is only terminated by the issue of the letter informing the applicant that a patent has been granted. (See 19.22).

Section 20(2)

If at the end of that period an appeal to the court is pending in respect of the application or the time within which such an appeal could be brought has not expired, that period ­ (a) where such an appeal is pending, or is brought within the said time or before the expiration of any extension of that time granted (in the case of a first extension) on an application made within that time or (in the case of a subsequent extension) on an application made before the expiration of the last previous extension, shall be extended until such date as the court may determine; (b) where no such appeal is pending or is so brought, shall continue until the end of the same time or, if any extension of that time is so granted, until the expiration of the extension or last extension so granted.

20.08

CPR 63.17, CPR 52.6(1), CPR 52.6(2) is also relevant.

The time allowed for bringing an appeal is governed by Part 52 of the Civil Procedure Rules and the Practice Directions supporting CPR 52. The comptroller will normally use the discretionary power provided by CPR 52.4(2)(a) to direct that notice of appeal must be filed at the court within 28 days after the date of a decision. However, a different period can be set where appropriate. Where the appeal notice has not yet been filed, an application to extend the period for appeal can be made to the comptroller, per Aujla v Sanghera [2004] EWCA Civ 121. However, once the notice of appeal has been filed, any request for extension must be made to the appeal court. The parties cannot themselves extend the appeal period by agreement.

20.09

When a decision is given before the end of the compliance period (see 20.02) and at the end of that period the time (including any extension granted by the Court or the comptroller) allowed for bringing an appeal is still running, the period for putting the application in order is automatically extended, for all purposes, until the end of that time. Therefore, if an adverse decision on a substantive matter is given less than 28 days from the end of the compliance period, and the comptroller has directed that any appeal must be filed within 28 days after that decision, the applicant has 28 days (plus any extension granted by the Court or the comptroller) from the date of the decision in which to submit amendments with a view to meeting the terms of the decision. If no appeal is brought within this time, this opportunity to amend ends automatically at the end of this time. If there is an appeal the Court may prescribe a period within which amendments may be made.

20.10

Any extension of the prescribed period which is given under r.108 applies only to the period as prescribed by r.30, and is not in addition to any extension arising by virtue of s.20(2). Thus, for example, a substantive decision given 14 days before the end of the prescribed four years six months has the effect of extending the period by 14 days; a request on Form 52 extends the original period by two months, i.e. the extensions run concurrently.