Background

The applicants filed 2 US priority applications on 20 February 2004 (US1) and 14 April 2004 (US2) respectively. On 22 February 2005, they filed what was intended to be a PCT application (PCT1), claiming priority from US1 and US2. The priority claim based on US1 would have been valid because the USPTO was closed on 20 and 21 February 2005. However, they inadvertently used the wrong cover sheet, with the result that PCT1 was effectively filed as a US utility application rather than a PCT application. In an attempt to retrieve the situation in the UK, a UK application was filed on 6 April 2005, claiming priority from US1 and US2, together with a request for permission to make a late claim to priority. The UKPO refused the request on the grounds that there was no intention to file the application in suit until after the 12-month priority period. The issue proceeded to a Hearing.

S5(2B) and S5(2C) of the UKPA provide that the comptroller may allow permission to make a late claim to priority provided he is satisfied that the applicant’s failure to file the application in suit within the 12-month priority period was unintentional.

The applicant’s main argument was that the test for determining whether the failure to file the application in suit was unintentional is whether a mistake had been made, and that the statute does not specify or imply any limitations on the nature of this mistake. Accordingly, the failure to file the PCT application in this case could constitute the mistake, and thus the requirements of S5(2C) were met.

The Hearing Officer accepted that the failure to file the PCT application within the 12-month priority period was unintentional, and that it would normally be the case that it is a mistake that has led to the unintentional failure to file an application within this period. However, he did not accept that the statute does not imply any limitations on the nature of this mistake. He held that it is clear from the wording that "the application in suit" is the application under consideration at that time, and that it is the failure to file this application (and not a different application for the same subject matter) within the 12 month priority period that must be unintentional to satisfy the provisions of S5(2C).

In the present case, there was an unintentional failure to file PCT1 within the 12-month priority period, but there was no unintentional failure to file the application in suit within this period. Therefore the requirements of S5(2C) were not met, and the request for permission to make a late priority claim was refused.

The Hearing Officer observed that the test in Heatex’s Application (is there a continual underlying intention to proceed with the application?), which is used when exercising discretion under R110(4) can not be applied to S5(2C) unless there are "threads common in both areas". This was not considered to be the case here. However, it was suggested that common threads might arise in cases where the intentions of the applicant are not clear and a detailed analysis of the evidence is required.

By virtue of S89, a PCT application is equivalent to a UK national application for the purpose of S5. Would the applicants have been successful if, instead of filing a late UK application, they had filed a late PCT application and then filed a form 3/77 relating to this PCT application at the UK Patent Office? If necessary, there would presumably have been time to enter the UK national phase before the 2 month deadline for requesting the late declaration.