This is one of the few cases that reached the Court for reinstatement of a patent application which was refused due to non-compliance of a deadline. While the Court ultimately ruled in favour of the applicant, it serves as reminder that the deadlines prescribed by law are strict and failing to adhere to them may have dire consequences.
Sage Therapeutics filed a patent application in January 2018. In March 2022, the Registrar issued an adverse report with substantive requirements to be addressed by June 2022. No response was filed by the deadline. Some eight months later, the patent agent discovered the report and requested an extension and reinstatement of the patent application, citing human error. The agent had followed up with the patent office in July 2022 but received no response. It is pertinent to note that the Patents Act 1983 ("PA") and its regulations were substantially amended in 2022.
In June 2023, the Registrar issued a notice of refusal due to the lack of response to the adverse report. The Plaintiff requested an oral hearing, which took place, and in December 2023, the Registrar upheld the refusal. The Plaintiff then filed an action in the High Court to reinstate the patent application and allow the extension, arguing that the unamended Regulation 53 of the Patent Regulations 1986 ("PR") (which pertains to a request for an extension of time under a general provision), which had no time limit, should apply.
The Registrar maintained that the amended Regulation 53 of the PR, which imposes a six-month deadline for extensions, was applicable. As the extension request was filed beyond this deadline, the Registrar claimed it no longer had the authority to grant it.
The Judicial Commissioner rejected both parties' arguments, interpreting section 30(4) of the PA (a specific provision that addresses extension of time to respond to an adverse report), which was not amended in 2022. This section allows for a one-time extension without a specified deadline or limit on the duration. Given the lack of prejudice to the Registrar, the High Court ruled in favour of the Plaintiff, allowing the reinstatement and extension of the patent application.
