Windward Limited v The Comptroller-General of Patents [2026] EWHC 1992 (Ch)

[2026] EWHC 1992 (Ch)Case No CH-2016-000014
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY list (ChD)
Patents COURT
On appeal from
the decision of the comptroller-general of patents
dated 3 september 2025 (BL O/0812/25)
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 6 August 2026
Before
Recorder douglas campbell KCSitting as a Judge of the Patents Court
Between
WINDWARD LIMITEDAppellantThe comptroller-general of patentsRespondent
Christy Rogers (instructed by Hutchinson IP) for AppellantJonathan Moss KC (instructed by the Treasury Solicitor) for RespondentHearing Hearing date: 11 June 2026
Approved JUDGMENTRecorder Douglas Campbell KC:

Delays in communication services

[111](1) The comptroller shall extend any period of time specified in the Act or these Rules where he is satisfied that the failure to do something under the Act or these Rules was wholly or mainly attributable to a delay in, or failure of, a communication service. (2). Any extension under paragraph (1) shall be made— (a) after giving the parties such notice; and (b). subject to such conditions, as the comptroller may direct. (3). In this rule “communication service” means a service by which documents may be sent and delivered and includes post, electronic communications, and courier. Both sides referred to me to the decision of Mann J in Matsushita Electric Industrial Co. v Comptroller General of Patents[2008] EWHC 2071 (Pat), which is discussed in the decision under appeal at [16]-[18]. 29. It is important to note that Matsushita was a decision under s 28(3) of the Act, not a decision under rule 111. Section 28(3) deals with restoration of lapsed patent where fees have not been paid. In particular Mann J was considering how far an applicant had to go in order to “satisfy” the Comptroller under s 28(3) that the failure to comply with the relevant requirement to pay fees was unintentional. As he summarised it at [4]:
“4 … Putting the matter shortly the question which arises is this: Is it sufficient for an applicant to support the application by a bold assertion that the failure to pay fees was unintentional, or is it necessary for the applicant, if required to do so by the Comptroller, to produce some further supporting material?”
Mann J concluded that something more than a bold assertion or “bald statement” was required, not least because if that was all that was required it would likely be sufficient in nearly every case. See [23]: 23. Accordingly, adjusting slightly the question which arises in this case, the question is whether a bald statement of a lack of intention for these purposes is sufficient evidence to satisfy the Comptroller? If it is sufficient in this case, it is likely to be sufficient in nearly every case. Accordingly, this case raises a matter of some potential significance to the operation of the Patent Office and to a lot of proprietors who accidentally allow their patents to lapse. If Mr. Ryan is right, then in more or less every case the requirement to satisfy the Comptroller that the lapse was unintentional can be satisfied by an extremely short statement.” (emphasis added) However, the nature of that something more would depends on the nature of the inquiry and the nature and purpose of the decision which is to be made. See [24]: 24. As I have said, the act of being satisfied is a matter of judgment. Forming a judgment requires the weighing of evidence and other factors. The evidence required in any particular case where satisfaction is required depends on the nature of the inquiry and the nature and purpose of the decision which is to be made. For example, where a tribunal has to be satisfied as to the age of a person, it may sometimes be sufficient for that person to assert in a form or otherwise what his or her age is, or what their date of birth is; in others, more formal proof in the form of, for example, a birth certificate will be required. It all depends who is asking the question, why they are asking the question, and what is going to be done with the answer when it is given. There can be no universal rule as to what level of evidence has to be provided in order to satisfy a decision-making body about that of which that body has to be satisfied.”

Introduction

[1]This led to Mann J’s conclusion at [26]:
“26. … It is a perfectly tenable view — and, in my view, the correct view — that a mere assertion is, as a matter of principle, not sufficient to enable the Comptroller to determine that the requirements of the sub-section are fulfilled. A significant matter requires significant proof. I repeat, the Act does not require a statement that the failure to pay fees was unintentional. It requires the Comptroller to be satisfied of that fact. If Mr. Ryan were right it would reduce what ought to be an act of judgment on the part of the Comptroller into something little more than a clerical act with the real question of unintentionality being decided by the applicant. That is objectionable in principle. It would amount to letting the applicant decide whether on the facts the omission was unintentional and, in some cases, letting him decide whether as a matter of law certain acts in fact amounted to unintentionality for the purposes of the sub-section. It would also materially increase the risk of dishonest applications. One cannot easily prevent outright lying if an applicant is prepared to fabricate a whole case, but one can well imagine cases in which an applicant will be prepared to go so far as making an unjustified and perhaps someone casual assertion of lack of intention, but nevertheless stopping short of being prepared to fabricate some non-existent underlying factual case.”
In my judgment the same logic must follow in relation to the need for the Comptroller to be satisfied under rule 111 and for that matter s 20A(2)(c). A bare assertion cannot be enough, since if so the relevant rule would be satisfied in nearly every case, but the nature of the further evidence required will vary from case to case. I was also referred to Daihatsu, BL O/234/14. The decision under appeal notes that this was relied upon by the Appellant below, see [25]. Unlike Matsushita, Daihatsu was a decision on rule 111. The applicant in that case had failed to reply to an official letter, with the result that the application had been treated as having been refused. The applicant submitted that the relevant official letter (which in those days had been sent by post) had never been received, and relied on both rules 107 and 111. However it does not seem to me that Daihatsu establishes any point of law at all. Daihatsu is merely a case where, on the facts, the Hearing Officer was not satisfied that the requirements of either rule were met. As such it can only be an analogy on the facts. As the Hearing Officer in Daihatsu put it at [57]-[58] in relation to rule 111:
“57 In my judgement the main reason – I do not put it so high as to be the whole reason – for the failure was the lack of systematic rigour in the attorneys’ offices in Warwick, characterised by the failure to react to the diary dates they had entered on their systems and which would have saved the day despite the official correspondence going missing. This was exacerbated by finding nothing untoward with the application in a period spanning nearly three years since the attorneys last communicated with the office, when e.g. even cursory checks during the period October 2011 to June 2012 period would have revealed the true position of this application and enabled an application for reinstatement under section 20A to have been made in time. 58 At the hearing the attorney referred on many occasions to the fact that “in hindsight” he accepts things could have been done better… An argument of ‘we accept we could have done things better in our office’ several years after things have gone wrong is not a convincing argument that the whole or main failure in this case was attributable to the failure of the postal service.”
Thus the Hearing Officer in Daihatsu asked himself the question required by rule 111, namely was the relevant failure “wholly or mainly attributable to a delay in, or failure of, a communication service” and concluded on the facts that it was not. On the contrary, the main reason was the lack of systematic rigour in the attorneys’ offices in Warwick. The facts 33. The relevant facts are summarised in the decision under appeal at [2]-[7], which I will summarise further. The first examination report under s 18(3) was issued on 27 May 2022, to which a response was filed on 25 August 2022. There was then a second examination report under s 18(3), issued on 20 October 2022 and with a latest date for response of 20 December 2022. This deadline was missed by over 2 months. The Appellant only requested a discretionary extension of time on 27 March 2023, filed together with a substantive response to the second examination reports. 34. The reason given by the Appellant’s UK patent agents for seeking an extension of time was as follows, my emphasis:
“We have today received a ‘follow-up’ email from the Applicant’s professional representatives in Israel, which refers to e-mail correspondence dated 28 November 2022 and 20 March 2023, which we have not received… “It is clear that the failure to meet the specified deadline of 20 December 2022 was ‘unintentional’ since the Applicant, via its Israeli representatives, provided instructions in November 2022. The sole contributory factor in us failing to file that response by 20 December 2022 was the non-receipt of these instructions…”. 35. The examiner responded on 16 May 2023 pointed out that the discretionary request for extension of time could not be granted. It would only have been available if the Appellant had first requested a two-month as-of-right extension within two months of the original reply period, and the Appellant had not done that either: see ss 117B(4), 117(2)(b) and rule 109(2). That reasoning has not been criticised. 36. However, in the same letter the examiner went on to say that he did have discretion to accept a late filed response. He went on as follows: “Although I cannot grant your requested extension of time, I do have discretion to accept a late filed response. Examiners can exercise this discretion if i. The extension period has not been exceeded by more than a de minimis period, and/or ii. The examiner is satisfied that the failure to respond was unintentional at the time that the specified period expired. In their letter, your agent refers to emails the applicant sent to their professional representative in Israel on 28 November 2022 and 20 March 2023 as evidence that the applicant’s failure to respond to the examination report on time was unintentional. A mere assertion is not sufficient to show that the applicant’s failure to reply on time was unintentional or that the applicant always had a continuing underlying intention to continue with this application. Therefore, to substantiate your agent’s assertion, I will need to consider the contents of these emails. Please file a copy of these emails by the latest draft for reply given above [which was in fact 22 May 2023]. I will then be able to consider whether I can exercise discretion to accept your late filed response. “ 37. It is accepted that the examiner’s response was based on the practice set out at the Manual of Patent Practice, section 18.54. The Appellant points out that the wording of 18.54 is slightly different to that used by the examiner. For instance the Manual makes it clear that points (i) and (ii) are merely examples, and points out that while point (ii) is consistent with the statutory test for reinstatement under s 20A, “there is no statutory requirement that the failure to respond must have been unintentional in order for the late response to be accepted, and thus the discretion accorded by s.18(3) may be exercised in appropriate circumstances even if this criterion is not met”
. This is true but nothing turns on it. 38. No response was received by 22 May 2023. The examiner issued a second request for evidence on 31 October 2023, giving a latest date for response of 30 November 2023. No response was received to that either, and a letter of refusal was issued on 13 December 2023. Nothing happened about that either until 17 December 2024 when the Appellant emailed the IPO saying (a) that it had not received any of the IPO’s letters of 16 May 2023, 31 October 2023, or 13 December 2023, and (b) that the Appellant’s instructing clients in Israel had alerted the Appellant to the fact that the application had now been refused and terminated before grant. 39. The next letter from the Appellant to the IPO was on 25 January 2025. This stated inter alia as follows (my emphasis):
“We note that the Examiner’s letter of 16 May 2023 (which we did not receive or see until 17 December 2024) states the reason why a discretionary extension of time would be allowable if the “unintentional test” were met. However our letter of 27 May [sic – it should say March] 2023 clearly set out the circumstances, namely non-receipt by us of the Applicant’s instructions via its Israeli attorney. The Examiner asked for copies of the correspondence, which we enclose herewith, which is of no probative value other than to show what was already said on 27 March 2023, namely that the instructions were sent on 28 November 2022, and that reminders were sent on 20 March 2023 and 27 March 2023, only the latter of which was picked up by my assistant, Sue Bretherton, who has since retired… The point is that the Examiner has and had discretion to allow the extension of time request filed on 27 March 2023, and in our submission had no valid reason to impugn the veracity of the submissions made by the professional representative about the circumstances of that request…” 40. The correspondence which was enclosed was a single email chain which contained the following: a) An email dated 28 November 2022 from the Applicant’s Israeli attorney saying “Dear Tom, Please find attached or detailed instruction for responding to the office action. Kindly make sure this is timely filed...”
Kindly make sure this is timely filed...” b) A further email dated 20 March 2023 from the Applicant’s Israeli attorney saying “Dear Tom, A kind reminder we are waiting to receive your report and invoice for handling this matter. c) A further email dated 27 March 2023 and timed at 12.31pm from the Applicant’s Israeli attorney, which was sent to both “sue@hutchinsonip.com” and “mail @hutchinsonip.com” , saying “Dear Sue, Another reminder to the below. Please revert back to us as soon as possible”. d) A reply from “sue@hutchinsonip.com” to the Applicant’s Israeli attorney dated 27 March 2023 and timed at 12.43 saying “Received and passed to Tom Hutchinson for response” 41. A separate email chain shows that Mr Hutchinson then responded to the Applicant’s Israeli attorney on 27 March 2023 at 13:07. 42. Before me, the Appellant’s counsel conceded that the emails of 28 November 2022 and 20 March 2023 had both been received by the Appellant’s firm, Hutchinson IP. No such concession was made below. I suspect that this concession may have been a result of submissions made on this point by the Respondent in its skeleton argument: see paras 56-63, 65(a) thereof. 43. In any event this was a sensible concession to make since there is nothing to show such emails were not so received. Indeed had it not been so conceded, I would have found it proved on the balance of probabilities. The email chain shows that they were simply not actioned. The first email to be actioned was that of 27 March 2023, which was promptly addressed. Moreover it would have been quite a coincidence if the relevant emails from the Appellant’s Israeli attorney had failed to be received in the same way as the relevant emails from the IPO relating to the same application had also allegedly failed to be received. 44. I also note that while the email address of the recipient of the 28 November 2022 and 20 March 2023 emails does not appear in the above email chain, both of them say “Dear Tom” and the context makes it clear this is a reference to Tom Hutchinson of Hutchinson IP. No other possibility was suggested. It was only the final email, of 27 March 2023, which was originally sent to Sue Bretherton and which she almost immediately passed to Mr Hutchinson. 45. This means that the reference to “non-receipt by us” in the 25 January 2025 letter to the IPO was not factually accurate. The Appellant’s firm did receive the Appellant’s instructions, on 28 November 2022 and 20 March 2023. 46. In addition, the suggestion in the 25 January 2025 letter that the Examiner had “no reason to challenge the veracity” of the submissions originally made by the professional representative on 27 March 2023 is rich for two reasons. 1). First, as I have just pointed out, the submissions made by the same professional representative on 25 January 2025 were not factually accurate. 2). Secondly, and more importantly, it can be seen that the underlined statements made by the same professional representative in the 27 March 2023 letter were not factually accurate either. The email of 28 November 2022, in particular, had been received; and the reason why no response was filed by 20 December 2022 cannot have been non-receipt thereof. 49. There was then further correspondence between the Appellant and the IPO over the period from 25 January 2025 to 3 September 2025, the date of the hearing under appeal. In summary, Mr Hutchinson’s position remained that the relevant IPO emails of 16 May 2023, 31 October 2023, and 13 December 2023 had not been received; that the examiner should not have challenged the veracity of Mr Hutchinson’s statement to this effect; and that the examiner should have extended discretion in favour of the Appellant. 50. In support of Mr Hutchinson’s argument that the emails were not received, Mr Hutchinson relied (both in an email exchange with the IPO between 20-25 March 2025, and at the hearing below) on a screen shot from something called Microsoft Power Automate. Mr Hutchinson said at the time that this screen shot shows “there are a lot of e-mails from the IPO that are never delivered” but it is not clear to me that it shows any such thing, and it certainly does not show that the relevant emails were not received. I agree with the Hearing Officer on this point: see [21]. 51. The Hearing Officer also explains at [19] as follows:
“Prior to the hearing I made internal enquiries to confirm that the correct contact details were on file and that email correspondence relating to this application had been sent to the correct address for service. I was informed that while we received Mr Hutchinson’s ‘out of office’ notification, there were no ‘failure to deliver’ notifications received. As a result, I am satisfied that the IPO has, at the very least, sent correspondence to the correct address, and the IPO has no reason to consider an alternative means of contacting the application as has been suggested by Mr Hutchinson. I can find no reason here to invoke rule 107 to correct an office irregularity”. 52. Later in the decision, at [28], the Hearing Officer refers back to an “IT report”
. I was told that this was a report produced during the hearing which was shown to, but not given to, Mr Hutchinson in support of the Hearing Officer’s statement above. Mr Hutchinson subsequently complained of not being given a copy of this report. This forms a distinct Ground of Appeal, namely ground 7. 53. During the hearing, I asked the Appellant’s counsel whether she was saying that this statement by the Hearing Officer was false. She declined to give a straight answer, principally because of the IPO’s failure to provide Mr Hutchinson with a copy thereof. 54. In my judgement it is unfortunate that Mr Hutchinson was not given (and still has not been given) a copy of this report. First, it forms part of the material upon which the Hearing Officer’s decision is based. Secondly, I can see no good reason why, in the circumstances of this case, Mr Hutchinson was not given a copy which he could have considered in more detail. No good reason for the failure to do so was given by the IPO’s counsel in his submissions to me. However, whilst this failure was in my view an error of judgment, I do not accept that it went so far as to amount to an “irregularity” within the meaning of rule 107 since Mr Hutchinson was at least shown the report at the hearing, and Mr Hutchinson did not specifically criticise the Hearing Officer’s summary (at [28]) that “…I believed we were in general agreement that it proved the correspondence was sent by the IPO but it did not prove receipt by Hutchinson IP”. Thus I do not see that any material prejudice was caused. 55. More substantively, I reject any suggestion that the Hearing Officer’s statements about the report were false. The IPO is a public body staffed by responsible people with no reason to lie about email deliveries, and I can see no conceivable reason to doubt the Hearing Officer’s account of the matters set out above. It follows that I am satisfied that the relevant IPO emails were sent to the correct email address, and that ‘out of office’ notification” were received on occasion, but no ‘failure to deliver’ notifications were received. Analysis Unintentionality 56. An odd feature of this case is that while much of the discussion below refers to whether the failure to respond to the examiner’s letters was unintentional, this is of background relevance to the actual decision under appeal. The only aspect of the decision which matters is whether the time limit for putting the application in order can be extended under rules 107 or 111. Neither of these rules has anything to do with unintentionality. 57. The reason why so much of the discussion below refers to whether the failure to respond to the examiner’s letters was unintentional is because Mr Hutchinson firmly believes that the examiner should have accepted Mr Hutchinson’s assertion that this was the case. The Appellant suggests that Matsushita can be factually distinguished on the basis that in that case the agent “took a stand” and refused to provide evidence whereas Mr Hutchinson did provide evidence. In my judgment this is a distinction without a difference. Even if the facts are different, the principle in Matsushita is a general one which requires wherever the comptroller is required to be “satisfied”. In my judgment the examiner was fully entitled to ask for the emails of 28 November 2022 and 20 March 2023. I therefore agree with the Hearing Officer’s conclusion to this effect. 58. Consistently with the way in which the matter was argued below, I cannot see that the Hearing Officer specifically considered whether the emails established unintentionality. It does not appear that she was invited to do so by the Appellant at the time, and nor is there any respondent’s notice inviting me to do so now. All I will say, therefore, is that the contents of the emails reinforce my view that the principle of Matsushita applies to the present situation. Rule 111 59. The Hearing Officer considered this issue at paragraphs [20]-[28] of the decision under appeal. She considered the screen shot at [21] and Daihatsu at [25]-[26], both of which I have already dealt with above. 60. She also considered Mr Hutchinson’s monitoring processes at [23]-[24]. In short Mr Hutchinson used a system called Equinox, which is used by many patent firms. It seems that this did indicate the compliance deadline, but did not indicate that he should take any action since he believed he was waiting for the Patent Office to come back to him. Mr Hutchinson did not check IPSUM either - which, it appears to be common ground, would have indicated the relevant deadlines. This part of the Hearing Officer’s judgment provoked the Appellant and the Respondent to make competing submissions to me as to whether the IPO has any free-standing duty to chase applicants who have not responded to emails, and/or whether applicants have any free-standing duty to check IPSUM. I do not consider there is any such free-standing duty on either side. If there were, then as both counsel pointed out, it immediately raises a number of questions as to: the legal basis of such duty (no particular legal basis was mentioned by either side); when such duty arises; how many chasers need to be sent and when; how many checks need to be made and when, etc. Furthermore it is not clear to me how such a free-standing duty can be reconciled with the mass of statutory rules and provisions which Parliament has expressly enacted in this area. On the contrary it appears to me that the discussion of free-standing duties is a distraction from the fairly straightforward statutory question under rule 111. 61. The Hearing Officer’s conclusion on rule 111 is set out at paragraph [27] and is as follows: “I do not believe that the late filing of the requested evidence or the late filing of the request for reinstatement was wholly or mainly due to the failure of the communication service between the IPO and Hutchinson IP between March and December 2023. I believe a significant part was played by the Mr [sic] Hutchinson’s assumption that the IPO simply hadn’t gotten around to responding and the lack of due diligence in not following up on the notification of a deadline generated by his administrative system. Similar to that discussed in Daihatsu Motor Co Ltd, it is my opinion that a significant contributing fact, but not whole reason for the failure to reply on time, was the lack of systematic rigour in the attorneys’ office. 62. This paragraph was the subject of minute analysis. For instance it was suggested that the Hearing Officer did not consider the relevant legal question at all. This is wrong: she does exactly that in the first sentence. Alternatively it was suggested that the reasoning in the first sentence was not supported by the remainder of the paragraph. Viewed as a matter of linguistics, there is something in this point. For instance to say that X and Y are “significant” parts of the reason for the failure is not inconsistent with a finding that Z is the “main” reason for it. However it seems to me that this is merely the familiar complaint that a decision could have been expressed better, rather than a dispute as to its substance. 63. More substantively, it was submitted that the decision should have referred back to specific findings of fact, and performed a balancing exercise based thereon. However the facts to which the Appellant referred in this context turned out to be no more than the letters sent to the IPO on 17 December 2024, 20 March 2025, 24 April 2025, and 11 June 2025. These letters merely make the same points, over and over, which the Hearing Officer did consider: for instance, Mr Hutchinson’s insistence that there was no need for evidence to show unintentionality, his screenshot, etc. Moreover I do not accept that the statutory question requires a “balancing exercise” at all. It merely requires an answer. 64. That said, I can see nevertheless see some force in the argument that paragraph [27] might have been better expressed and with reference to specific factual findings. I shall therefore attempt to do so. 65. First, I am not satisfied that there was any delay in, or failure of, a communication service at all. The Hearing Officer found that there was no such failure at the IPO end: see [19]. The Hearing Officer also found that Mr Hutchinson’s screen shot did not prove any such failure either: see [21]. That meant that the only evidence of a failure was Mr Hutchinson’s allegation that there had been such a failure. However given the Appellant’s admission before me that the emails from its Israeli attorney were in fact received, and it thereby becoming apparent that Mr Hutchinson had repeatedly made factually inaccurate statements to the IPO about those emails, I am not prepared to accept Mr Hutchinson’s uncorroborated assertions about non-receipt of the relevant emails from the IPO. I note that the Appellant did not make any such admission below, hence why the Hearing Officer did not consider it. That is sufficient to dispose of the appeal. 66. At the hearing, Counsel for the Comptroller suggested that on a proper interpretation of rule 108(1), which deals with extension of time limits, the Appellant could not rely upon rule 111 anyway. This was on the basis that rule 32(1) is one of a number of periods that cannot be extended: see Part 1, Schedule 4 of the Act. However this interesting argument was not raised below, was not supported by any respondent’s notice, and I do not think it is fair to the Appellant to allow it to be taken now. This is particularly so when I ruled against the Appellant on its own application to file late evidence. Rule 107 67. I can be much briefer here. I find that there was no irregularity or prospective irregularityof procedure within the meaning of rule 107. It follows that, as the Hearing Officer said at paragraph [19], I can find no reason to invoke rule 107. Conclusion 68. The appeal is dismissed.