NILS GUNNAR JONSSON
[1982] APO 31
•8 September 1982
In the Matter of Patents Act 1952
‑ and ‑
In the Matter of Patent No. 482,271
in the Name of Nils Gunnar Jonsson
‑ and ‑
In the Matter of an Application for
Restoration of the Patent under
Section 97.
Decision of Deputy Commissioner of Patents
Patent No. 482,271 was sealed on 29 July 1977 on a Convention application lodged in the name of Nils Gunnar Jonsson on 27 March 1974. On 1 August 1977, the Australian patent attorney acting on behalf of the patentee was advised by the Patent Office that the renewal fee of $20 payable in respect of the fourth year of the patent was due on 27 March 1978. That fee was not paid before that date nor was an extension of the time for payment obtained as permitted by sub‑sec. 68(3) of the Patents Act 1952. Accordingly, upon the expiry of the permitted period of extension on 27 September 1978, the patent ceased as of 27 March 1978 as prescribed by sub‑sec. 68(2) and the ceasing was notified in the Official Journal of 23 November 1978.
On 7 October 1981, the patent attorney lodged an application under sec. 97 for restoration of the patent accompanied by supporting declarations and the renewal fees payable at that date. The attorney was advised that the application for restoration did not comply with the requirements of sec. 97. The attorney has now exercised his entitlement to be heard in the matter on behalf of the patentee.
Restoration of a ceased patent is provided for in secs. 97 and 98. Sub‑sec. 97(1) specifies the circumstances which entitle the making of an application for restoration as:
"(1)Where a standard patent has ceased (whether before or after the commencement of the Patents Act 1969) ‑ by reason of failure to pay a prescribed fee within the prescribed time ‑
(a)the patentee;
(b)if the patentee has died ‑ the legal representative
of the deceased patentee; or
(c)a person who would, if the patent had not ceased,
have been entitled to the patent, may apply to the
Commissioner for the restoration of the patent."
Sub‑sec. 97(2) specifies the requirements of an application for restoration as:
"(2) The application shall contain a statement of the circumstances which led to the failure to pay the prescribed fee within the prescribed time and, if it appears from the statement that the failure was unintentional and that no undue delay has occurred in the making of the application, the Commissioner shall advertise the application in the Official Journal."
Sub‑sec. 97(3) provides that, where an application for restoration has been advertised, a person interested may give to the Commissioner notice of opposition to the restoration.
It follows from sec. 97 that the conditions precedent for the restoration of a ceased patent are that:
.ceasing was consequential upon the failure to pay a prescribed fee within the prescribed time;
.the failure was unintentional; and
.no undue delay has occurred in making the application for restoration.
Ceasing of a patent as a consequence of the failure to pay a prescribed fee in the prescribed time is provided for in sub‑secs. 68(2) and (3), the prescribed fee being a renewal fee. In the present case, the renewal fee in respect of which the failure to pay in the prescribed time caused the patent to cease was the renewal fee for the fourth year of the patent. The matter now to be determined is whether the Commissioner should advertise the application for restoration in the Official Journal as prescribed in sec. 97.
Under the terms of that section, an application for restoration is required to include a statement of the circumstances which led to the failure to pay in time the prescribed fee as a result of which the patent ceased. If it appears from that statement that the failure was unintentional and that no undue delay has occurred in making the application for restoration, the Commissioner shall advertise the application in the Official Journal.
The attorney raised the question at the hearing as to the sufficiency of the evidence which must be provided in order for the Commissioner to be required to advertise an application for restoration of a patent and contrasted the terms of sub‑sec. 97(2), which merely require the prescribed conditions to appear to be satisfied, with those governing the advertisement of an application for restoration of an application for a patent (e.g. sub‑sec. 47E(4)) which require that the Commissioner be satisfied that the prescribed requirements have been complied with.
In my view, the justification for the Commissioner's conclusion in each case is the same. Advertisement of an application for restoration of a patent or for restoration of an application for a patent is, in effect, a conditional acceptance of the application for restoration subject only to review in the light of further evidence which may be lodged on opposition. Accordingly, an application for restoration in either case must be accompanied by sufficient evidence to enable the Commissioner to satisfy himself that the requirements for restoration have been complied with. It may be noted in passing that the terms of sec. 97 are identical to those of the corresponding provisions (sec. 20) in the UK Patents Act prior to the 1949 Act and the approach above corresponds with the approach adopted in respect of those provisions (see Brown's Patent 53 RPC 394 and Shepherd's Patent 54 RPC 1). The Patents Act 1949 changed the earlier provisions in terms effectively validating that approach.
The evidence in the present case material to the failure to pay the renewal fee for the fourth year of the patent and the application for restoration of the patent, as provided in the declarations accompanying the application, establishes that the patentee was represented in Australia, for the purpose of proceedings with the Patent Office, by a firm of patent attorneys, RK Maddern & Associates and that he communicated with this firm through an intermediary, John Galgut, a patent and trade mark agent in South Africa. Copies of communications between the patentee and his South African agent confirm that it was the patentee's intention that the renewal fee payable for the fourth year of the patent should be paid within the prescribed time and that his South African agent was authorised to have that fee paid.
The evidence also establishes that the non‑payment of that fee was the result of a deliberate decision by the Australian attorney as a consequence of the failure to receive instructions from the South African agent before the patent ceased under sub‑secs. 68(2) and (3). The evidence does not establish the reason for that failure but two notices from the Australian attorney to the South African agent (dated 13 December 1977 and 21 March 1978), which were despatched well before the patent ceased, confirm that it was neither lack of awareness on the part of the South African agent of the requirement for paying the fee nor ignorance as to the consequences of non‑payment.
After the notification in the Official Journal of 23 November 1978 that the patent had ceased, the South African agent for the patentee did not communicate with the Australian attorney until 4 July 1979 when he requested confirmation of the correctness of his record that the patent lapsed in 1978 and advice whether the patent could be restored. A reply despatched on 12 July 1979 advised of the possibility of restoration, thus also confirming by implication that the patent had ceased. No further communication is recorded until 19 February 1981 when the South African agent repeated his request for advice on restoration and was again advised promptly of its possibility.
Telexes between the South African agent and the patentee and various agents in Sweden indicate that before March 1980 the patentee was not aware that his Australian patent had ceased. The fact that it had ceased was confirmed in a telex by the South African agent to a Swedish agent dated 14 January 1981. On 7 May 1981, the Australian attorney received a telex from a further Swedish agent for the patentee enquiring as to the possibility of restoration. An application for restoration was subsequently lodged by the Australian attorney on 7 October 1981.
In determining whether the condition that the application for restoration was made without undue delay, the relevant period of delay to be assessed is that commencing from the time when the application for restoration could first be made and extending until the time the application for restoration was made (see Board of Control of Michigan Technological University v. Deputy Commissioner of Patents 34 ALR 529).
Under the terms of sub‑sec. 97(1), the entitlement to apply for restoration arises immediately a patent has ceased. However, by virtue of sub‑sec. 68(3), the period in which an application for restoration of a ceased patent may be made does not commence until the expiry of the extension period allowable under that sub‑section since a patent cannot be deemed to have ceased under sub‑sec. 68(2) until the expiry of the extension period provided in sub‑sec. 68(3). In the present case, therefore, the date upon which an application for restoration could first be made was 28 September 1978. The delay in making the application for restoration is therefore effectively a period of 3 years.
As I understand the judgements of the Administrative Appeals Tribunal, Federal Court and High Court in the Board of Control of Michigan Technological University v. Deputy Commissioner of Patents (34 ALR 529 supra; others unreported), a delay constitutes undue delay if it was unreasonable in all the circumstances. Moreover, inaction over a period of time does not cease to be a delay merely because the person affected by the delay was not responsible for it. Prima facie, a person who by choice or necessity acts through an agent is burdened with the consequences of the agent's failure to perform the act with the performance of which he has been charged unless there is specific provision distinguishing between the failure of an agent on the one hand and the failure of the principal on the other.
In the present instance, the person responsible for acting on behalf of the patentee, Mr. Jonsson, in respect of his Australian patent was the South African agent, John Galgut. Mr. Galgut was advised by the Australian attorney in a timely manner prior to the ceasing of the patent of the actions necessary to maintain the patent and the consequences of failure to take that action. Yet he did nothing when all that was required was merely to advise the Australian attorney to pay the relevant fee.
Mr. Galgut's letter to the Australian attorney dated 27 June 1979 confirms that, before that date, he was aware of the consequences of his failure to act in accordance with instructions in respect of Mr. Jonsson's patent. Although he was advised of the possibility of restoration he still took no action to initiate an application for restoration. In fact over the whole period prior to the lodgement of the application for restoration, Mr. Galgut took no action in relation to Mr. Jonsson's patent. In my view, this failure caused a delay in the making of that application which was unnecessary and inexcusable.
Although the Patents Act and Regulations do not include an explicit direction to the Commissioner to publish a notification in the Official Journal that a patent has ceased under the provisions of sec. 68, the requirement to provide such notification is implicit in sub‑sec. 98(4) and regulation42(1), the notification being necessary to give effect to the provisions in that sub‑section and regulation. Accordingly, where a patent ceases as a result of a failure to pay a prescribed fee within the prescribed time, that fact is notified in the Official Journal following the expiry of the extension period prescribed in sub‑sec. 68(3). In the present case, a notification that Mr. Jonsson's patent had ceased as a result of the failure to pay the renewal fee for the fourth year was published in the Official Journal of 23 November 1978, i.e. 6 weeks after the expiry of the extension period of sub‑sec. 68(3).
The notice in the Official Journal therefore constituted notice to the world at large, including both the patentee as well as his South African agent that Mr. Jonsson's patent had ceased. The situation is similar to that considered by the Administrative Appeals Tribunal in the University of Michigan case where a patent application lapsed under reg. 7B and an application for restoration of the application was lodged 2 years after the date of advertisement of lapsing in the Official Journal. The Tribunal stated:"Advertisement in the Journal may not be notice to an applicant personally, but, nevertheless, it was notice to the world at large including the applicant. Its effect was to give public notification of the lapsing of the patent. If an application for restoration was to be made thereafter, it had to be made without undue delay. The failure on the part of the applicant personally to read the Official Journal and thus to become aware of the lapsing was not, in my view, reasonable excuse for the delay".
Accordingly, any failure on the part of the patentee personally to read the Journal and thus to become aware that his patent had ceased cannot be regarded as reasonable excuse for the delay in the present circumstances.
In my view, therefore, the delay of three years in making the application for restoration was unreasonable in all the circumstances and as such constitutes undue delay.
In view of that conclusion, a decision whether the further requirement for advertisement of an application for restoration, i.e. that the failure to pay the prescribed fee within the prescribed time was unintentional, is not strictly necessary. However, in view of the provision for review of a decision of the Commissioner under sec. 97, it appears appropriate that I should briefly explain my conclusion on this issue.
The effect of the conditions prescribed in sub‑sec. 97(2) is to relieve a patentee of the irremediable loss of his patent through the failure to pay a prescribed fee in a prescribed time if, firstly, no undue delay is involved in making an application for restoration and, secondly, if the failure to pay that fee in time was unintentional. By virtue of sub‑sec. 68(2), the responsibility to pay the fees necessary to avoid a patent ceasing lies with the patentee. Accordingly, in determining whether the latter requirement has been complied with the Commissioner is required to satisfy himself that any intention not to pay the fee which resulted in the ceasing of a patent was not attributable to the patentee.
In the present case, the Australian attorney justifiably considered himself authorised to act only as instructed by the South African agent for the patentee as regards the payment of the renewal fee for the fourth year of the patent. And although the attorney deliberately decided not to pay that fee thus causing the patent to cease, that decision was the result of lack of instruction from the South African agent. Accordingly, in the absence of an authorisation to act for the patentee in respect of this fee, any decision by the Australian attorney whether or not to pay the fee cannot be relevant to the intentions of the patentee.
But, however that may be the South African agent was instructed to have the fee paid and failed to do so although the reason for that failure is not disclosed in the evidence. However, in so doing he acted contrary to and outside the scope of his instructions from the patentee. In that circumstance, it appears to me that there is no valid ground for attributing to the patentee the motive or culpability of the South African agent in not acting as instructed. Accordingly, the failure to pay the renewal fee for the fourth year of the patent which resulted in the patent ceasing was contrary to the intentions of the patentee in respect of his patent. I consider that so far as the patentee was concerned that failure was unintentional.
Although the decision is directed to determining whether the application for restoration should be advertised, a conclusion that the application should not be advertised is also a conclusion that the patent should not be restored. Accordingly, I dismiss the application for restoration.
C.H. Friemann
Deputy Commissioner of Patents
NILS GUNNAR JONSSON'S PATENT
PATENT OFFICE
Mr. C.H. Friemann, Deputy Commissioner of Patents
13 July 1982 ‑ Adelaide
Ceased patent ‑ application for restoration
‑ compliance with Sec. 97.
Patent 482271 ceased on 27 March 1978 due to non payment of the fourth year renewal fee.
The ceasing was notified in the Official Journal of 23 November 1978. Two agents were acting on behalf of the patentee, including a patent and trade work agent in South Africa, who received instructions from the patentee and in turn was responsible for instructing an Australian Patent attorney.
The Australian attorney before the patent ceased, communicated with the South African agent to the effect that the renewal fee was due and that the patent would cease if the fee were not paid, however, no instructions from the agent to pay the fee were received and the patent was allowed to cease.
Although, from the communications dated 27 June 1979 to the attorney from the South African agent, the agent had records showing that the patent had ceased, the patentee was not aware that the patent had ceased until March 1980.
The evidence however, does not show why the South African agent did not instruct the Australian attorney.
An application for restoration was lodged on 7 October 1981 by the Australian attorney following an enquiry in May 1981 to them from a Swedish agent acting for the patentee.
The attorney was advised that the application did not comply with the requirements of Sec. 97 and would not be advertised in the Official Journal.
The attorney subsequently sought to be heard on behalf of the patentee.
Held: (i) An application for restoration of a ceased patent or a lapsed application must be accompanied by sufficient evidence to enable the Commissioner to satisfy himself that the requirements for restoration have been completed with.
BROWN'S PATENT 53RPC 394 and SHEPHERD'S PATENT 54 RPC 1 cited.
(ii) The delay of three years in making the application for restoration was unreasonable in all the circumstances and as such constituted undue delay for the purpose of sub‑sec. 97(2) the A.A.T., Federak Court and the High Court on Jundgement from the
BOARD OF CONTROL OF MICHIGAN
TECHNOLOGICAL UNIVERSITY V. DEPUTY COMMISSIONER OF PATENTS
applied (F.C. at 34 ALR529; A.A.T. and H.C. not reported.)
The responsibility to pay the fees necessary to avoid a patent ceasing lies with the patentee: accordingly the Commissioner is required to satisfy himself that any intention not to pay the fee which resulted in the ceasing of a patent was not attributable to the patentee.
As the South African agent was instructed to have the fee paid and failed to do so he acted contrary to and outside the scope of his instructions from the patentee, consequently there is no valid ground for attributing to the patentee the motive or culpobility of the South African agent in not acting as instructed.
Accordingly, the failure to pay the renewal fee which resulted in the patent ceasing was contrary to the intentions of the patentee in respect of his payment.
A conclusion that the application should not be advertised is also a conclusion that the patent should not be restored.
Mr. Friemann: Patent No. 482,271 was sealed on 29 July 1977 on a Convention application lodged in the name of Nils Gunnar Jonsson on 27 March 1974. On 1 August 1977, the Australian patent attorney acting on behalf of the patentee was advised by the Patent Office that the renewal fee of $20 payable in respect of the fourth year of the patent was due on 27 March 1978. That fee was not paid before that date nor was an extension of the time for payment obtained as permitted by sub‑sec. 68(3) of the Patents Act 1952. Accordingly, upon the expiry of the permitted period of extension on 27 September 1978, the patent ceased as of 27 March 1978 as prescribed by sub‑sec. 68(2) and the ceasing was notified in the Official Journal of 23 November 1978.
On 7 October 1981, the patent attorney lodged an application under sec. 97 for restoration of the patent accompanied by supporting declarations and the renewal fees payable at that date. The attorney was advised that the application for restoration did not comply with the requirements of sec. 97. The attorney has now exercised his entitlement to be heard in the matter on behalf of the patentee.
Restoration of a ceased patent is provided for in secs. 97 and 98. Sub‑sec. 97(1) specifies the circumstances which entitle the making of an application for restoration as:
"(1)Where a standard patent has ceased (whether before or after the commencement of the Patents Act 1969) ‑ by reason of failure to pay a prescribed fee within the prescribed time ‑
(a)the patentee;
(b)if the patentee has died ‑ the legal representative
of the deceased patentee; or
(c)a person who would, if the patent had not ceased,
have been entitled to the patent, may apply to the
Commissioner for the restoration of the patent."
Sub‑sec. 97(2) specifies the requirements of an application for restoration as:
"(2) The application shall contain a statement of the circumstances which led to the failure to pay the prescribed fee within the prescribed time and, if it appears from the statement that the failure was unintentional and that no undue delay has occurred in the making of the application, the Commissioner shall advertise the application in the Official Journal."
Sub‑sec. 97(3) provides that, where an application for restoration has been advertised, a person interested may give to the Commissioner notice of opposition to the restoration.
It follows from sec. 97 that the conditions precedent for the restoration of a ceased patent are that:
.ceasing was consequential upon the failure to pay a prescribed fee within the prescribed time;
.the failure was unintentional; and
.no undue delay has occurred in making the application for restoration.
Ceasing of a patent as a consequence of the failure to pay a prescribed fee in the prescribed time is provided for in sub‑secs. 68(2) and (3), the prescribed fee being a renewal fee. In the present case, the renewal fee in respect of which the failure to pay in the prescribed time caused the patent to cease was the renewal fee for the fourth year of the patent. The matter now to be determined is whether the Commissioner should advertise the application for restoration in the Official Journal as prescribed in sec. 97.
Under the terms of that section, an application for restoration is required to include a statement of the circumstances which led to the failure to pay in time the prescribed fee as a result of which the patent ceased. If it appears from that statement that the failure was unintentional and that no undue delay has occurred in making the application for restoration, the Commissioner shall advertise the application in the Official Journal.
The attorney raised the question at the hearing as to the sufficiency of the evidence which must be provided in order for the Commissioner to be required to advertise an application for restoration of a patent and contrasted the terms of sub‑sec. 97(2), which merely require the prescribed conditions to appear to be satisfied, with those governing the advertisement of an application for restoration of an application for a patent (e.g. sub‑sec. 47E(4)) which require that the Commissioner be satisfied that the prescribed requirements have been complied with.
In my view, the justification for the Commissioner's conclusion in each case is the same. Advertisement of an application for restoration of a patent or for restoration of an application for a patent is, in effect, a conditional acceptance of the application for restoration subject only to review in the light of further evidence which may be lodged on opposition. Accordingly, an application for restoration in either case must be accompanied by sufficient evidence to enable the Commissioner to satisfy himself that the requirements for restoration have been complied with. It may be noted in passing that the terms of sec. 97 are identical to those of the corresponding provisions (sec. 20) in the UK Patents Act prior to the 1949 Act and the approach above corresponds with the approach adopted in respect of those provisions (see Brown's Patent 53 RPC 394 and Shepherd's Patent 54 RPC 1). The Patents Act 1949 changed the earlier provisions in terms effectively validating that approach.
The evidence in the present case material to the failure to pay the renewal fee for the fourth year of the patent and the application for restoration of the patent, as provided in the declarations accompanying the application, establishes that the patentee was represented in Australia, for the purpose of proceedings with the Patent Office, by a firm of patent attorneys, RK Maddern & Associates and that he communicated with this firm through an intermediary, John Galgut, a patent and trade mark agent in South Africa. Copies of communications between the patentee and his South African agent confirm that it was the patentee's intention that the renewal fee payable for the fourth year of the patent should be paid within the prescribed time and that his South African agent was authorised to have that fee paid.
The evidence also establishes that the non‑payment of that fee was the result of a deliberate decision by the Australian attorney as a consequence of the failure to receive instructions from the South African agent before the patent ceased under sub‑secs. 68(2) and (3). The evidence does not establish the reason for that failure but two notices from the Australian attorney to the South African agent (dated 13 December 1977 and 21 March 1978), which were despatched well before the patent ceased, confirm that it was neither lack of awareness on the part of the South African agent of the requirement for paying the fee nor ignorance as to the consequences of non‑payment.
After the notification in the Official Journal of 23 November 1978 that the patent had ceased, the South African agent for the patentee did not communicate with the Australian attorney until 4 July 1979 when he requested confirmation of the correctness of his record that the patent lapsed in 1978 and advice whether the patent could be restored. A reply despatched on 12 July 1979 advised of the possibility of restoration, thus also confirming by implication that the patent had ceased. No further communication is recorded until 19 February 1981 when the South African agent repeated his request for advice on restoration and was again advised promptly of its possibility.
Telexes between the South African agent and the patentee and various agents in Sweden indicate that before March 1980 the patentee was not aware that his Australian patent had ceased. The fact that it had ceased was confirmed in a telex by the South African agent to a Swedish agent dated 14 January 1981. On 7 May 1981, the Australian attorney received a telex from a further Swedish agent for the patentee enquiring as to the possibility of restoration. An application for restoration was subsequently lodged by the Australian attorney on 7 October 1981.
In determining whether the condition that the application for restoration was made without undue delay, the relevant period of delay to be assessed is that commencing from the time when the application for restoration could first be made and extending until the time the application for restoration was made (see Board of Control of Michigan Technological University v. Deputy Commissioner of Patents 34 ALR 529).
Under the terms of sub‑sec. 97(1), the entitlement to apply for restoration arises immediately a patent has ceased. However, by virtue of sub‑sec. 68(3), the period in which an application for restoration of a ceased patent may be made does not commence until the expiry of the extension period allowable under that sub‑section since a patent cannot be deemed to have ceased under sub‑sec. 68(2) until the expiry of the extension period provided in sub‑sec. 68(3). In the present case, therefore, the date upon which an application for restoration could first be made was 28 September 1978. The delay in making the application for restoration is therefore effectively a period of 3 years.
As I understand the judgements of the Administrative Appeals Tribunal, Federal Court and High Court in the Board of Control of Michigan Technological University v. Deputy Commissioner of Patents (34 ALR 529 supra; others unreported), a delay constitutes undue delay if it was unreasonable in all the circumstances. Moreover, inaction over a period of time does not cease to be a delay merely because the person affected by the delay was not responsible for it. Prima facie, a person who by choice or necessity acts through an agent is burdened with the consequences of the agent's failure to perform the act with the performance of which he has been charged unless there is specific provision distinguishing between the failure of an agent on the one hand and the failure of the principal on the other.
In the present instance, the person responsible for acting on behalf of the patentee, Mr. Jonsson, in respect of his Australian patent was the South African agent, John Galgut. Mr. Galgut was advised by the Australian attorney in a timely manner prior to the ceasing of the patent of the actions necessary to maintain the patent and the consequences of failure to take that action. Yet he did nothing when all that was required was merely to advise the Australian attorney to pay the relevant fee.
Mr. Galgut's letter to the Australian attorney dated 27 June 1979 confirms that, before that date, he was aware of the consequences of his failure to act in accordance with instructions in respect of Mr. Jonsson's patent. Although he was advised of the possibility of restoration he still took no action to initiate an application for restoration. In fact over the whole period prior to the lodgement of the application for restoration, Mr. Galgut took no action in relation to Mr. Jonsson's patent. In my view, this failure caused a delay in the making of that application which was unnecessary and inexcusable.
Although the Patents Act and Regulations do not include an explicit direction to the Commissioner to publish a notification in the Official Journal that a patent has ceased under the provisions of sec. 68, the requirement to provide such notification is implicit in sub‑sec. 98(4) and regulation42(1), the notification being necessary to give effect to the provisions in that sub‑section and regulation. Accordingly, where a patent ceases as a result of a failure to pay a prescribed fee within the prescribed time, that fact is notified in the Official Journal following the expiry of the extension period prescribed in sub‑sec. 68(3). In the present case, a notification that Mr. Jonsson's patent had ceased as a result of the failure to pay the renewal fee for the fourth year was published in the Official Journal of 23 November 1978, i.e. 6 weeks after the expiry of the extension period of sub‑sec. 68(3).
The notice in the Official Journal therefore constituted notice to the world at large, including both the patentee as well as his South African agent that Mr. Jonsson's patent had ceased. The situation is similar to that considered by the Administrative Appeals Tribunal in the University of Michigan case where a patent application lapsed under reg. 7B and an application for restoration of the application was lodged 2 years after the date of advertisement of lapsing in the Official Journal. The Tribunal stated:
"Advertisement in the Journal may not be notice to an applicant personally, but, nevertheless, it was notice to the world at large including the applicant. Its effect was to give public notification of the lapsing of the patent. If an application for restoration was to be made thereafter, it had to be made without undue delay. The failure on the part of the applicant personally to read the Official Journal and thus to become aware of the lapsing was not, in my view, reasonable excuse for the delay".
Accordingly, any failure on the part of the patentee personally to read the Journal and thus to become aware that his patent had ceased cannot be regarded as reasonable excuse for the delay in the present circumstances.
In my view, therefore, the delay of three years in making the application for restoration was unreasonable in all the circumstances and as such constitutes undue delay.
In view of that conclusion, a decision whether the further requirement for advertisement of an application for restoration, i.e. that the failure to pay the prescribed fee within the prescribed time was unintentional, is not strictly necessary. However, in view of the provision for review of a decision of the Commissioner under sec. 97, it appears appropriate that I should briefly explain my conclusion on this issue.
The effect of the conditions prescribed in sub‑sec. 97(2) is to relieve a patentee of the irremediable loss of his patent through the failure to pay a prescribed fee in a prescribed time if, firstly, no undue delay is involved in making an application for restoration and, secondly, if the failure to pay that fee in time was unintentional. By virtue of sub‑sec. 68(2), the responsibility to pay the fees necessary to avoid a patent ceasing lies with the patentee. Accordingly, in determining whether the latter requirement has been complied with the Commissioner is required to satisfy himself that any intention not to pay the fee which resulted in the ceasing of a patent was not attributable to the patentee.
In the present case, the Australian attorney justifiably considered himself authorised to act only as instructed by the South African agent for the patentee as regards the payment of the renewal fee for the fourth year of the patent. And although the attorney deliberately decided not to pay that fee thus causing the patent to cease, that decision was the result of lack of instruction from the South African agent. Accordingly, in the absence of an authorisation to act for the patentee in respect of this fee, any decision by the Australian attorney whether or not to pay the fee cannot be relevant to the intentions of the patentee.
But, however that may be the South African agent was instructed to have the fee paid and failed to do so although the reason for that failure is not disclosed in the evidence. However, in so doing he acted contrary to and outside the scope of his instructions from the patentee. In that circumstance, it appears to me that there is no valid ground for attributing to the patentee the motive or culpability of the South African agent in not acting as instructed. Accordingly, the failure to pay the renewal fee for the fourth year of the patent which resulted in the patent ceasing was contrary to the intentions of the patentee in respect of his patent. I consider that so far as the patentee was concerned that failure was unintentional.
Although the decision is directed to determining whether the application for restoration should be advertised, a conclusion that the application should not be advertised is also a conclusion that the patent should not be restored. Accordingly, I dismiss the application for restoration.
DECISION
Application for restoration refused.
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