An expensive loss: what profiteth a man who loses his money ...

In Betson Medical (Ireland) Ltd v Comptroller General of Patents [2010] EWHC 687 (Pat), an appeal to Mr Justice Kitchin (Patents Court, England and Wales) from the Comptroller in which judgment was given on 31 March 2010, the issue before the Court involved non-payment of renewal fees and its consequences.

In short, Betson filed his patent application in December 1996. Nearly three years later, in October 1999, he assigned his application to Betson Medical, the company he set up to exploit his invention. Although Betson and his company were well aware of the renewal date, neither could pay the renewal fee for the patent in December 2003 for lack of funds. Betson himself sought funding both from banks and pfrom rivate investors, but no money was made available to him to pay either the renewal fee and additional fee within the time limits and the patent lapsed.

In July 2005, Betson Medical filed an application for restoration under rule 41(1)(a) of the Patents Rules 1995. The Intellectual Property Office did not consider that even on a prima facie basis had the requirements for restoration been met. Betson Medical was given a hearing date for September 2009. At that hearing the application was considered under s 28(3) of the 1977 Act (as it then stood):

"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 the fee and any prescribed additional fee were paid within six months immediately following the end of that period, the comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee".

The respondent comptroller refused the application to restore since Betson Medical had not exercised reasonable care to see that the renewal fee was paid in time, or during the six month grace period. Betson Medical appealed and Kitchin J had then to consider whether Betson Medical, as proprietor of the patent, or Betson himself on its behalf, had taken reasonable care to see that the renewal fee and the prescribed additional fee in respect of the patent were paid by the expiry of the grace period.

Kitchin J appeared to face no difficulty in dismissing this appeal. On the evidence, the company had faced severe financial difficulties in the period up to and including June 2004 and Betson himself had made strenuous efforts to secure funding in order (i) to ensure the commercial exploitation of his invention and (ii) to pay renewal fees for all its patents. However, on the application of settled principles, Betson had not shown that he had taken reasonable care to see that the limited sum in respect of the patent in question was paid by June 2004.

PatLit feels that it is such a shame that, having not had the money when he had the patent, the claimant had to deploy his funds so fruitlessly once he did have it.