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Patent Holder Pays High Price of not Paying Fees on Time

In a case which bitterly illustrates that the law can be harsh if statutory time limits are not met, a patent holder has forfeited the valuable protection that would otherwise have been afforded to a medicinal product due to a failure to pay a £4,000 fee to the Patents Office within the time prescribed by the Patents Act 1977.

The patent holder had sought and successfully obtained a supplementary protection certificate (SPC) for its product which should have extended its protection from competitors for up to five years after expiry of the basic patent. However, due to its failure to pay the required fee on time, a hearing officer appointed by the Comptroller General of Patents ruled that the SPC should not come into effect.

It was submitted by the patent holder that the officer had fallen into error in that the fee regime introduced by the Act had subsequently been repealed as a consequence of regulatory changes and that the Patents Office had no lawful power to levy such charges. It was also argued that the failure to pay the fee on time was in part due to administrative confusion for which the patent holder was not responsible.

Those submissions failed to persuade the High Court and, in dismissing the patent holder’s challenge to that decision, the Court of Appeal ruled that, despite putting forward ‘arguments of varying degrees of complexity’, the fact remained that the appropriate fee had not been duly paid before the SPC was due to take effect and the patent holder could not escape the serious consequences of that failure.