Matsushita Electric Industrial Co v Comptroller General of Patents [2008] EWHC 2071 (Pat)

[2008] EWHC 2071 (Pat)Case No CH 2008 APP 0147
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate Date: Wednesday, 16 th July, 2008
Before
MR. JUSTICE MANN
Between
MATSUSHITA ELECTRIC INDUSTRIAL CO.ClaimantCOMPTROLLER GENERAL OF PATENTSDefendant
IN THE MATTER OF AN APPEAL
Digital Transcription by Marten Walsh Cherer Ltd.,6 th Floor, 12 - 14 New Fetter Lane, London EC4A 1AG.Telephone No: 020 7936 6000. Fax No: 020 7427 0093
MR. S. RYAN (of CPA Global) for Claimant.MR. M. TAPPIN (instructed by Treasury Solicitor) for Defendant.
JudgmentMR. JUSTICE MANN :
[1]The matter before me today is an appeal from three identical decisions of a hearing office in UKIPO to refuse a restoration of patents which had come to an end because fees were not paid.[2]The three applications were in identical form. The arguments advanced in the hearing before the hearing officer were the same arguments in the case of all three, advanced by the same person, Mr. Ryan, a solicitor, who also appears before me today. In those circumstances, as the parties have done, I can take one of the appeals as being typical. I shall take the appeal of Matsushita Electric Industrial Co. in respect of its patent numbers, including patent no. GB 2288939.[3]The hearing officer that determined the matter was Mr. Rose'meyer. The decision is dated 1st February, 2008.[4]The appeal before me raises this question: The restoration of lapsed patents is dealt with by s.20 of the Patents Act 1977. I shall set out the relevant wording in due course in this judgment. For present purposes it is sufficient to say this. Under sub-section (3) the patent can be restored if the Comptroller is satisfied that the failure of the proprietor of the patent was unintentional. It is on the effect of that section that the appeal before me turns. In particular, it is on the nature of the evidence to be adduced in support of an application that this appeal turns. 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?[5]I can take the relevant dates from the decision of the hearing officer. I quote from para. 2 of his decision, "The renewal fees in respect of the twelfth year of all these patents fell due on 19th December, 2005. The renewal fees were not paid by that date or during the period allowed under s.25(4) upon payment of the prescribed additional fees. The applications for restoration were filed on 9th October, 2006 within the nineteen months prescribed under Rule 41(1)(a) of the Patents Rules 1995 for applying for restoration". The time for making any further applications has now expired.[6]The application dated 9th October referred to in the paragraph I have just quoted was made in a standard form - Form 16/77. The form itself sets out simple details of the proprietor and its agent. It is signed by Mr. Ryan. It was accompanied by a witness statement of the same date from Mr. Ryan, who explained that he held the position of a Patents Restoration Manager in his firm, and that he had full access to all files and records of the firm, relating to client renewal matters. Matsushita was one of his firm's clients. In para. 3 of his witness statement, Mr. Ryan says that the patents "all expired as of 19th December, 2005 for the unintentional failure to pay the relevant annuities". In para. 4 he says simply this, "It was always the proprietor, Matsushita Electric Industrial Co. Ltd.'s intention to keep these patents in force and the lapse was unintentional". In addition there is a letter which he exhibits from his client, addressed to him, dated 27th September, 2006 which reads simply as follows:
"The above-mentioned patents lapsed for failure to pay the twelfth annuities. It was not our intention to let these patents lapse and we request restoration"
. That is the material on the basis of which Mr. Ryan applied to the Patent Office on behalf of his client under s.28.[7]In accordance with its practice, the Patent Office engaged in correspondence seeking some clarification of the position. On 11th November, 2006 one of its officers wrote, thanking Mr. Ryan for his application and stating: "(1) For the Patent Office to consider your application you must file evidence to satisfy us that the failure to pay the renewal fee within the appropriate time was unintentional; (2) The contents of the evidence should cover(a) what system you employ for paying the annual renewal fees;(b) what prevented you from paying it this year (what error occurred in your payment system);(c) was it always your intention to pay the renewal fee; (3) The evidence should be in the form of a witness statement(s); (4) A period of two months is allowed for a response to this letter, that is, by 10th January, 2007".[8]Mr. Ryan responded extremely promptly on 15th November. He asserted that it was clear - and in particular from his client's letter - that "the lapse was unintentional". He commented that the first two questions asked by the officer were not relevant. He then sought to engage in a debate as to the meaning of the word 'unintentional' and asserted that it was not the function of the Patent Office to go behind the normal dictionary meaning of the word. In that respect he was, I think, aiming at a target which had not been put up. The debate was not about the meaning of the word 'unintentional', but about the evidence necessary to establish the unintentionality relied upon in this case. However, he ended by saying this, "It is therefore not for your office to enquire whether there has been a change of mind or otherwise by the proprietor, or what the Comptroller is seized with is whether the failure to pay the necessary fee was unintentional. Once the proprietor has so stated, so that is the end of the matter [sic]". In that letter Mr. Ryan was clearly stating the basis on which he has operated throughout, both in the Patent Office and before me - that a mere assertion of unintentionality is sufficient evidence.[9]The Comptroller challenged that by a letter dated 2nd February, 2007. It was said, "In the Office's view, the Comptroller cannot be satisfied solely by a declaration that a failure was unintentional. That would amount to saying that the remedies are available subject only to meeting the administrative requirement of providing a declaration. If that is what the legislators intended, they would surely have said it in a simpler and more definite way. The requirement for the Comptroller to be satisfied and for supporting evidence to be provided indicates strongly that "unintentional" should be assessed on the facts of the case. The Office believes that a failure to comply is not unintentional where it results from a course of action chosen deliberately by the applicant. In order to assess whether that is the case, it is necessary for the applicant to explain the circumstances surrounding the failure. That is why our letter of 10th November requested evidence concerning the system used for paying renewal fees and what caused the most recent fee not to be paid . . . You are therefore allowed two months from the date of this letter to respond to the official letter dated 10th November, 2006 in the light of the above, i.e. by 2nd March, 2007".[10]Mr. Ryan did not wait until then. He responded on 8th February, 2007. He indulged in a further detailed debate on the authorities, and in particular an authority known as Heatex. He also took issue with the statement that "the Comptroller cannot be satisfied solely by declaration that a failure was unintentional". He went on, "This cannot ever be correct and does not amount to merely meeting an administrative requirement. The administrative requirement is that a declaration is required. The contents are not an administrative requirement, but are evidence. In the present case the evidence is clear and unequivocal. It was not the applicant's intention to allow these patents to lapse. The legislators could not have put their requirement more simply. As you will note from the above-mentioned cases you must look at the ordinary meaning of "unintentional". Your view that it is necessary for the applicant to explain circumstances (sic) surrounding the failure as well as your request requiring evidence concerning the system used for paying renewal fees and what caused the recent fee not to be paid amounts to an attempt to cross-examine. In this regard I refer you to para. 6.17 of your hearings manual dealing with ex parte applications ..." Again, therefore, Mr. Ryan was clearly taking the point that he was not obliged to produce any further evidence.[11]On 23rd February the Patent Office responded and said as follows: "(2) We have given careful consideration to the points you raise. However, we conclude that your comments do not change our preliminary view that a case for restoration has not been made out. The reasons for that preliminary view are set out in our letter of 5th February, 2007. (3) If you now wish to file evidence concerning the error(s) which resulted in the non-payment of the renewal fees, you should do so within one month of the date of this letter, i.e. by 23rd March, 2007. (4) In the absence of further evidence, the application for restoration will be finally refused unless within one month of the date of this letter a formal request is made to this office to appoint a senior officer to hear the arguments in person".[12]Such a request was obviously made because the hearing officer ultimately heard the application. On 21st March, 2007, responding to the request for such a hearing, an officer of the Patents Office said this:
"In the Office's view the Comptroller cannot be satisfied solely by a declaration that a failure was unintentional. That would amount to saying that the remedies are available subject only to meeting the administrative requirement of providing a declaration"
. The letter went on to repeat what had been said before, and then added, "The Office believes that a failure to comply is not unintentional where it results from a course of action chosen deliberately by the applicant. In order to assess whether that is the case it is necessary for the applicant to explain the circumstances surrounding the failure". Thus the battle lines were clearly drawn around the issue as to what was necessary to satisfy what will appear in due course to be the requirements of the section.[13]As a result of the hearing before him, the hearing officer delivered three virtually identical judgments. As I have indicated, I shall take the one dealing with Matsushita. There was an introductory section and a section dealing with the evidence. Then, by way of background, the hearing officer went into the origins of s.28(3), as amended, for it is in an amended form that it came before him and it is put before me.[14]The law is set out in a section starting at para. 11. At paras. 15 and 16 he set out the points arising between the parties at the hearing before him. The material point was that which I have identified - that is to say, whether a bald assertion of unintentionality is sufficient. At para. 17ff deals with an argument about Heatex with which I do not need to deal. At para. 22 he turns to the central case and says this at para. 22:
“The applicant's central case as stated in correspondence, in skeleton arguments prior to the hearing and at the hearing itself by Mr. Ryan is in essence simple. He argues that what is required by Section 28(3) of the Act is that the Comptroller be satisfied that failure to pay the renewal fee was unintentional. Once a proprietor has stated that the failure to pay the renewal fee was unintentional, then a fortiori the comptroller should be satisfied. Mr. Ryan argues that the required statements have been made in evidence as required by rule 41(1)(b), therefore the proprietor has done everything required of it to have its patents restored.”
At para. 28 the hearing officer deals with "the ordinary dictionary meaning of words". He says this:
"28. The wording of Section 28 makes it incumbent upon the proprietor to satisfy the comptroller that the failure to pay the renewal fee on time was unintentional. Mr. Ryan argues that this could not be clearer and to support this contention he argues that all he needs to do therefore to satisfy the Comptroller is make the necessary declaration in the form of evidence prescribed by the rule which administers Section 28, which is rule 41(1)(b). 29. As convenient though that sounds, in my view it cannot be the full story. To my mind, the 'key words' (as Mr. Ryan puts it) in the legislation i.e. the words 'satisfied' and 'unintentional', are in isolation easy enough to interpret. They have common dictionary meanings and can be easily understood. As Mr. Ryan argues, it is not correct for the office when interpreting a statute to go beyond the ordinary dictionary meaning of a word unless the context otherwise dictates. At the hearing we went through the common dictionary definitions of these words, but in my view those shed very little illumination on the heart of the issue, so I do not intend to regurgitate these here. Suffice to say that there was no great distance between Mr. Ryan and myself on the common meaning of these two words"
. At para. 30 he deals with what he regards as the crux of the matter, "But the crux of s.28(3) it seems to me is not these two words in isolation, but what is expected in order to fulfil the requirements of the section in total. What does it mean when in totality? 31. S.28(3) tacitly charges the proprietor with satisfying the Comptroller that the failure to pay the fee on time was unintentional, but it also requires something of the Comptroller. It is obviously the converse of course of what is expected as a proprietor. It requires that the Comptroller should satisfy himself of the unintentional failure to pay the renewal fee on time before he can restore the patent in question. Only if he is satisfied shall he restore the patent". At para. 36 he observes that the patent rules are as silent as the statute itself is as to what is the level of the evidential requirement. At para. 37 he embarks on "establishing a benchmark for evidential burden to satisfy the Comptroller" and sets out Mr. Ryan's arguments. He rejected an argument by Mr. Ryan that the Patent Office was attempting to apply an old "reasonable care" provision surreptitiously and considered whether or not the change in the legislation had necessarily given rise to a lower hurdle. He said this:
“41. On careful consideration it is my view that there is not necessarily a lower hurdle or evidential burden in all cases under the new provisions of Section 28(3). What the law now requires is evidence of a negative - 'that the failure of the proprietor of the patent ... was unintentional' - and evidence of a negative state of mind at that. It seems to me that in certain cases this may be a difficult thing on which to provide convincing evidence. I believe the thinking behind the Office's approach is to assist the proprietor in that evidential burden and seek evidence on the facts and circumstances surrounding the failure to pay the fee on time. It is obviously the Office's view that this type of evidence will help the comptroller in deciding whether he is satisfied as to the unintentional failure or not. 42. It may well be that in practice more cases will satisfy the 'unintentional' test than the old 'reasonable care' provisions, but each case can only be decided on its own facts and merits and that can only be decided on the basis of the evidence filed.”
Having set that out, at para. 43 the hearing officer came to this conclusion, "However it is my view that the evidence provided in these cases is not sufficient to satisfy the Comptroller that the 'unintentional' test has been met". At para. 44 and following he dealt with certain parallel provisions under the Registered Designs Act which, in my view, do not assist the debate, and certainly do not seem, in that case at any rate, to assist Mr. Ryan's argument. At paras. 51ff the hearing officer deals with "Reasoning - The Determination - the Comptroller's decision making function in s.28(3)". The hearing officer observed this:
"52. Mr. Ryan's central case to my mind overlooks one fundamental point. It in effect takes away the Comptroller's decision making function in this part of the legislation. Clearly he must have one. He is tacitly asked in Section 28(3) to satisfy himself of the unintentional nature of the failure to pay the renewal fee before he is charged to restore the patent. 53. One is either satisfied or one is not. It is a matter of judgment. There may well be degrees of satisfaction - one may only just be satisfied - but there is a line to be crossed to reach that state of even minimal satisfaction. The other side of that line would mean one might be almost satisfied, but not quite. Where that line is crossed is a matter of judgment. 54. This seems to be supported in rule 41(2) in which it is stated: (2) If, upon consideration of the evidence, the comptroller is not satisfied that a case for an order under section 28 has been made out ... the comptroller shall refuse the application [Emphasis added] 55. When read in conjunction with Section 28(3), the option for the comptroller is clear. He can either be satisfied, or not. If he is satisfied, the law dictates that he must restore. If he is not, the rule says he must not. (2) If, upon consideration of the evidence, the comptroller is not satisfied that a case for an order under section 28 has been made out ... the comptroller shall refuse the application [Emphasis added] At para. 61 he summarised the functions as follows: “61. It seems to me that actually in essence Mr. Ryan and I agree that there is a line to cross in order to be satisfied - "
You are either satisfied or you are not" he said. If that is so, then it follows that there must be a judgment to be arrived at as to whether one is satisfied or not. As the law requires the comptroller to be satisfied, then at some point that judgment has to be exercised and exercised by the comptroller, not in his stead.” At para. 62 he came to some clear conclusions. "It seems to me that Mr. Ryan's contention that a simple assertion of the requirement in the law - a bald statement may be replicating that requirement in prescribed evidential format - cannot ever be enough on its own to cross the line to satisfy the Comptroller. 63. And the reason such a statement does not cross that threshold is that to allow it to do so would, in effect, take away the decision-making role which I have found the law places on the Comptroller. It substitutes the proprietor's subjective assertion of compliance with the law for what I believe should be a statement of facts or surrounding circumstances which would enable the Comptroller himself to arrive at a reasoned, objective determination as to whether he is satisfied, or not, as to the unintentional nature of the lapse to pay the renewal fee on time". He went on at para. 68:
“68. I accept that the comptroller cannot demand what the content of evidence should be. That is for the proprietor to decide upon. But it is entirely the role of the comptroller to decide on the basis of the content of whatever evidence the proprietor chooses to file, whether he is satisfied by its persuasiveness or not. 69. The office attempted during the examination of these applications to seek further information (in the form of evidence) in order to establish further facts to enable the comptroller to arrive at a decision, but Mr. Ryan chose not to provide this further evidence. Mr. Ryan characterised the Office's endeavours as amounting to an attempt to cross-examine the proprietor, which of course since these proceedings are not adversarial, is not permissible. I think here too Mr. Ryan is placing a somewhat harsh interpretation of the Office's practice (see my comments at para. 39), but I accept that it is entirely his prerogative as to what and how much evidence he and his clients choose to supply to satisfy the comptroller. 70. However, I find there is equally no obligation on the comptroller to be necessarily satisfied by that evidence.”
The conclusions of the hearing officer were expressed at para. 71. “71. It can be seen that Mr. Ryan has made out a forcibly-argued case on behalf of the proprietor in these applications for restoration and I have given them my full consideration. In my view the determination of whether the comptroller is satisfied that the failure to pay the renewal fee on time or within the grace period was unintentional must be based on the facts of each case. The facts are determined from the evidence which supports the application for restoration. That evidence should be sufficient to enable the comptroller to come to that determination himself. 72. It follows from my assessment of the law in the face of the submissions made by the proprietor's representative in these cases and for the reasons stated in this decision, I am not satisfied that based on the evidence placed before me, the failure of the proprietor of these patents to renew them on time or during six month grace period was unintentional.” In those circumstances the hearing officer refused the restoration application.[15]It should be noted in that history that Mr. Ryan pinned his colours very firmly to the mast of his not having to put in any more evidence than he had put in. He had, in my view, had a opportunity to put in further evidence - not merely the evidence which the Comptroller indicated that he was expecting to see in the opening shot in the correspondence, but, in my view, and on a fair construction of the correspondence, some different form of evidence if he thought that that would suffice to establish his client's lack of intention to allow the patent to lapse.[16]The cases of the parties in the hearing before me were those which can be deduced from that which has gone before. Mr. Ryan renews his case on the effect of the statute. He says that "unintentional" in s.28 means what it says. He says his client has provided evidence of that and that the evidence is adequate. He says it is not for the Comptroller to cross-examine his client or to demand answers to questions. It is not for the Comptroller to doubt the bona fides his client's assertion. Nor is it for the Comptroller to raise questions germane to the old law, which is what in fact the Comptroller did in the opening shot in the correspondence. The Comptroller should have accepted the assertions made by him on behalf of his client and by his client in its letter. Commerciality required it and this was recognised in United States law and practice, and indeed in United Kingdom design right practice.[17]Mr. Tappin, who appears for the Comptroller, supported the hearing officer's decision, essentially for the reasons given by the hearing officer. It was right, he said, that something more than mere assertion by required in order for the Comptroller to be satisfied as to that which the statute required him to be satisfied of.[18]I turn therefore to a consideration of the issues which arise on this appeal. I start with the wording of s.28 which I have not hitherto set out. S.28 occurs in the context of that part of the Act (using 'part' in a non-technical sense) which is dealing with patents where renewal fees have not been paid. S.25 gives a period of grace of six months to pay missing fees, plus a fine, and, as it were, have the patent put back. S.28 operates in the ensuing period - a period which is now thirteen months after the expiry of the six months of s.25. At the time I am told the period was nineteen months from the original lapse. Before me, nobody was able to explain how that made much of a material difference; but I need not go into that.[19]I will for the time being read s.28 in its amended form as it applied, and applies, to this case, the amendments having taken place as a result, as I understand it, of the Patents Treaty the Regulatory Form Patents Order 2004, SI 2004/2357. Section 28 reads as follows:
"28(1) Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the Comptroller within the prescribed period"
. I do not need to read sub-sections (1)(A) or (2)(A). "(3) If the Comptroller is satisfied that the failure of the proprietor of the patent (a) to pay the renewal fee within a prescribed period, or (b) to pay that fee and any prescribed additional fee within the period ending with the six months after the month on which the prescribed period ended was unintentional, the Comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee". From that it will be seen how the issue in this case arises. It turns on what the Comptroller should see, or may need to see, in order to be "satisfied that the failure of the proprietor of the patent ... was unintentional". The key word here is "satisfied".[20]I observe by way of further background - and because it is necessary in order to understand some of the arguments put forward by Mr. Ryan in correspondence - that the requirement of that version of sub-section (3) is different from that which obtained before then. Formerly, sub-section (3) had read as follows: "(3) If the Comptroller is satisfied that:(a) the proprietor of the patent took reasonable care to see that any renewal fee was paid within the prescribed period, or that that fee and any prescribed additional fee were paid within the six months immediately following the end of that period; and(b) those fees were not so paid because of circumstances beyond his control, the Comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee".[21]The factual matters of which the Comptroller had to be satisfied under that test were different from those which apply now. In the context of an inquiry necessary to satisfy the Comptroller for the purposes of that old section, one can see why the questions raised by the Patent Office in its letter of 10th November 2006 might be relevant. Mr. Ryan says that those questions were only relevant to that and not at all relevant to the inquiry which arises under the new form of sub-section (3). Mr. Ryan may have a point so far as the relevance to the old section goes, but it does not follow necessarily that those questions are entirely irrelevant under the new section, although there may be other material going beyond the issues raised in those questions which would be germane to an inquiry under the new sub-section (3). Be that as it may, Mr Ryan, on the correspondence, as I have already observed, had a chance to produce some other evidence in any event.[22]However, the real question before the hearing officer and before me is: How far does an applicant have to go in order to "satisfy" the Comptroller? The first point to be noted is that the Act is couched in terms of satisfying the Comptroller. It is not couched in terms of providing mere statements. In other words, the Act requires a judgment to be formed by the Comptroller so that he can be satisfied of the relevant matters. A judgment usually has to be made on the basis of evidence. That I regard as trite.[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.[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.[25]Unintentionality is the important question and point here. Unless it is established there is to be no restoration of the patent. Restoration is a significant step. The lapse is serious enough. The lapse has occurred through non-payment of fees. Third parties are interested and potentially affected by the decision. Restoration is not a casual administrative step with no purpose other than regularising a minor irregularity which has arisen. It is a significant act with proprietary effects which is not freely done and confers a benefit or privilege not freely given. The Act requires, in essence, that an intention to maintain the patent be established. All this demonstrates that the restoration of the patent is not trivial and administrative - it is all quite serious.[26]That, in my view, justifies the view that a mere assertion that the lapse or the failure to pay was unintentional is not sufficient. Assertions are easy. Of course, if they are made dishonestly there are potential sanctions, but that does not really bear on the level of material which is, or may be, required in order to fulfil the burden of the statute. 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.[27]It seems to me, therefore, at this stage of the argument, as a matter of construction and principle, and subject to other material arising to cause that view to be changed, that the hearing officer was correct.[28]Other factors were urged on me. Mr. Ryan urged the following. First, he urged me to have regard to the practicalities. He said it was, in business terms, impractical or uncommercial to require anything more than the assertion on which he based his application. He said that to require a proper evidential case to be mounted would be "difficult, time-consuming, and expensive". I do not think he is right about that. I do not see that there is anything impractical or uncommercial in requiring an applicant to provide some meat on the bones of a mere allegation of lack of intention. To provide that evidence can hardly be difficult. In most cases I cannot believe it would be particularly time-consuming. Whether or not it is expensive will depend on the first of two factors, but, again, I doubt if it will necessarily be particularly expensive. One can imagine that in most cases the failure to pay the fees, if it was truly unintentional, will be due to an administrative oversight. One does not have to go into a great elaborate explanation of administrative arrangements in order to establish that, it seems to me. So far as there is any difficulty, time consumption or expense, then it does not seem to me to be unfair for the proprietor to have to be subject to. The fault is, after all, that of the proprietor or the proprietor's representatives. The purpose of the section is not to enable a restoration to take place as easily and as cheaply as possible. It is to make sure that a restoration takes place if the facts justify it.[29]Next, and allied to this, Mr. Ryan urged on me the fact that the purpose of the sub-section was intended to reduce red tape. It was a move away from the old regime which had required a rather more elaborate explanation - at least as it was operated by the Patent Office - and one would not have got away from all that if in fact it were the case that the Patent Office was entitled to expect something more than mere assertion. Again, that does not seem to me to be right. The test is different. It seems to me to be likely that the evidence which is necessary to satisfy the test is less onerous in terms of its content, and less onerous in terms of the steps which are likely to be necessary in order to put it together. To that extent, then if red tape is an appropriate label to apply to the previous regime, there is less of it now. But in any event a desire to get away from red tape does not justify reducing significant matters such as those raised by sub-section (3) to little more than a mere formality. If Mr. Ryan were right, then they would indeed be little more than a mere formality.[30]Next, Mr. Ryan suggests that if the Comptroller were right, then there would effectively be a restoration of the old law with all its cumbersomeness because the Comptroller is effectively demanding evidence at the same level and of the same kind as was provided before. That seems to me to be wrong as a matter of law and of fact. The test is now different. I have set out both sub-sections in this judgment and the differences can be seen. As I have said, it seems to me that the new test will be easier to fulfil. It may well be that the questions first raised by the Patent Office in this case were more geared to the old legislation than to the new, but that does not mean that different questions do not fall to be addressed under the new statute. It seems to me that in this case if Mr. Ryan was right in perceiving that the Patent Office had asked the wrong questions, then the appropriate response was not to take a stand - and, indeed, the very firm stand that he took - on the availability to him of the bald assertion as being adequate evidence, but to put in the evidence which would doubtless have been available at a lower level in order to attempt to satisfy the Comptroller.[31]Next, Mr Ryan says it is wrong for the Patent Office to reject a bald assertion as being sufficient evidence because to do so would be to be disbelieving the proprietor or his representative unless there were good reasons for disbelieving that evidence. That seems to me to mis-state the effect of requiring more than a mere assertion. The burden under the sub-section is put on the applicant. It is up to the applicant to decide what to do to fulfil that burden. In rejecting a mere assertion, the Patent Office is not disbelieving the applicant and is not "going behind" the bald statement, to adopt another phrased by Mr. Ryan, in some improper way. It is saying that the burden is not fulfilled and the facts are not sufficiently proved. It is not going beyond that. In raising questions, the Patent Office is not cross-examining the applicant - it is actually assisting the applicant in the discharge of the burden. It would probably be open to the Patent Office to adopt a procedure in which the applicant had to make its application, and that application would be considered without further intervention from any officers of the Patent Office. The Patent Office has, sensibly, decided not to adopt that regime. It is prepared to indulge in dialogue with the applicant. That is actually provided for in certain practice notes propounded by the Patent Office. That is, as I have just said, in order to assist the applicant and not to cross-examine the applicant. It is in order to enable the applicant to make his or her strongest possible case - an opportunity which, it seems to me, Mr. Ryan eschewed in this matter. That gives rise to a perfectly workable system, especially as worked by UKIPO with its interactive procedure. That interactive procedure does not, of course, determine the true construction of the statute, but it shows how it can be worked fairly.[32]In addition to those matters Mr. Ryan sought to draw parallels from other areas of practice. First, he invoked what seems, or seemed at one stage at any rate, to be the practice in relation to registered designs. Registered designs have similar restoration provision to patents. It is contained in s.8(4) of the Registered Designs Act. I do not need to set out that section here. Mr. Ryan pointed out that under one version of the practice of the Patent Office in relation to registered designs you could apparently get away with a mere statement that the lapse was unintentional. He showed me various forms and practice statements which seemed to indicate that. He seems to be right about at least some of this. In one form of the guidance in relation to the Registered Designs Act the following is said:
"4. Facilitating the restoration of lapsed design registrations. 4.1. The new system will show greater flexibility where a registration lapse is due to an administrative error. If the applicant for restoration is able to state on the application form that the failure to pay the renewal fee on time was unintentional then he is unlikely to be asked to show any evidence to support his case. Also, the DF30 form has been abolished and so applications for restoration may be made by filing only a DF29 form with the fee for that form (as well as the renewal fee of course). This differs from the current system in that an application for restoration should only be granted where the proprietor can show through evidence that his failure to renew the registration occurred despite him having taken reasonable steps to extend the protection"
. That note seems to suggest that a bald statement of lack of intention would be sufficient in the context of registered designs. However, Form DF29 suggests otherwise. I would observe that anyone who is able "to state on the application form that the failure to pay the renewal fee on time was unintentional" has not read the form properly because if one looks at Form DF29 there are a series of boxes, none of which require you to put in your excuses for not having paid the fees. What the form does say at the foot of the page is:
"You must attach a statement and additional evidence, if any, fully explaining why you did not renew the design in time"
. That seems to me to be directly contrary to the practice note to which I have referred. There is a degree of equivocation there.[33]However, all this is actually, in my view, beside the point. The statutes say what they say. Patent Office guidance in one case does not necessarily bind it in another case, and particularly where the guidance seems to be equivocal. If it is the case - and I do not know, though Mr. Ryan tells me that it is - that the Patent Office accepts mere assertions in the case of registered designs, then it may be - and I do not rule formally on this - that it is wrong to do so. But, in any event, it does not mean that the Patent Office is not entitled to apply the statute in a manner which I consider to be proper in relation to patents. Accordingly, I do not think the registered design practice - which is, after all, merely practice - assists Mr. Ryan.[34]Next, Mr. Ryan turns to US law and practice. He drew to my attention what seems to be one of the provisions of the United States Patent Rules, in particular what I take to be Rule 1.378(c) which deals with the situation where a patent has lapsed because of non-payment of fees. "(c) Any petition to accept an unintentionally delayed payment of a maintenance fee filed under para. (a) of this section ... must include ... (3) a statement that the delay in payment of the maintenance fee was unintentional". There, says Mr. Ryan, is a regime in which a mere statement is acceptable to an office which is the equivalent of the UKIPO. As Mr. Tappin has pointed out, there is a small degree of equivocation introduced by the later provision of what seemed to be some practice notes which suggest that further evidence may be required. But, I need not go into that. All that emerges from what Mr. Ryan has shown me is that the United States has chosen to adopt a separate regime. If what he has shown me is indeed part of their patents regime, then the United States patent regime, in terms, does what the s.28(3) does not do - it entitles an applicant to get a restoration by means of producing what I am calling a bald assertion. The United Kingdom legislation is plainly in different terms and requires something different. That therefore does not help Mr. Ryan either.[35]Neither does Mr. Ryan gain any support from the Patents Treaty to which he has drawn my attention. The Treaty entitled the United Kingdom to adopt one of two possible regimes. It adopted the regime of going for unintentionality. There is nothing in the Patents Treaty which suggests that proof of unintentionality was to be achieved in any particular way.[36]The result of all this is that in my view the hearing officer was quite right to reach the decision which he reached, essentially for the reasons that he gave and for the reasons given above.[37]In those circumstances I dismiss the appeal in the Matsushita case. It follows that my having done that, I dismiss the appeals in the other cases where the reasoning is entirely equivalent.[38]One last question remains for me - that is, whether I should do anything more than dismiss the appeal, and in particular whether I should remit the matter to the Patent Office for a re-hearing. As I understand it, Mr. Ryan, having now lost on this appeal, would wish to have another attempt to have the patents restored and would therefore seek to revive his hearing before a hearing officer, or otherwise revive his application to UKIPO. He and his clients are out of time for making a fresh application.[39]At one stage I was minded to be sympathetic this application and to assist if I could. Mr. Ryan and his clients have taken a stand of principle and have raised a question of potentially some significance to other applicants. It might have been thought to have been fair to allow them a chance, having lost on this particular point, to go back and produce the evidence which they did not produce before. However, I have decided I will not remit the matter to the hearing officer. That is essentially for two reasons. First, I doubt very much if I have jurisdiction to do so. The hearing officer has refused the application for restoration. Subject to an appeal, that stands. I have decided to dismiss the appeal because in my view the hearing officer was quite right. The application therefore stands dismissed and I do not see at the moment how I can revive it and somehow send something back to the hearing officer. Mr. Tappin very fairly drew my attention to the possibility of invoking CPR 52.10, but I think on a correct construction of that provision, that does not assist. Accordingly, do not think I have jurisdiction.[40]Having reflected on it, even if I had jurisdiction to do that, I would not exercise it in this case despite my initial inclinations to sympathy. Mr. Ryan and his clients clearly took a stand on a point of principle. They could have acted otherwise. They could have put in evidence to satisfy the Comptroller. They chose not to do so, but to continue to stand on the point of principle. They might have been able to devise some scheme for putting in some other form of conditional evidence. They might have been able to devise a scheme in which the matter could be resolved if they lost here. I do not know whether the Comptroller would have been sympathetic to that. They might even have been able to forge some form of application to admit further evidence which would have somehow acted as a peg on which I could have hung some holding-back of the final decision to dismiss the appeal and sent the matter back.[41]However, they decided to do none of those. They have all at times steadfastly maintained the case that the evidence they put in the first time round was sufficient and that the Comptroller was not entitled to seek any more, or, to put it slightly more correctly, was obliged in the light of that evidence to find that unintentionality was established. There are risks in adopting such a strategy. I assume those risks were run with their eyes open. That which they have sought to achieve they have not managed to achieve. They have not taken any steps to leave any further doors open to them. In those circumstances, as a matter of discretion, I would not choose to open a further door for them, or to help them through it, even if I had jurisdiction to do so.[42]In the circumstances I dismiss the appeal and make no further orders save for any other orders which might be consequential upon my decision.

Cited in 1 later judgment