PA 117A – Effect of resuscitation of a withdrawn application

Question 1

What does S117A concern

Answer 1

Effect of resuscitation of a withdrawn application under S117

Question 2

When does S117A apply

Answer 2

S117A(1)
Where
a) a request was made to correct an error or mistake in withdrawing an application, and
b) the application was duly resuscitated,

Question 3

What happens to acts done whilst an application was withdrawn in S117A

Answer 3

S117A(2)
Anything done with the application during the period between withdrawal and resuscitation will be treated as valid

Question 4

What happens regarding actions in bad faith whilst an application was withdrawn in S117A

Answer 4

S117A(3)
If the Comptroller published notice of the request to correct the error (see S117(3) ) then any continuation or repetition of an act during the period between withdrawal and resuscitation (that previously infringed before withdrawal) will be treated as infringement

Question 5

What happens regarding actions in good faith whilst an application was withdrawn in S117A

Answer 5

S117A(4)
If the Comptroller published notice of the request to correct the error (see S117(3) ), but between the date of withdrawal and the date of the notice a person
a) began in good faith an otherwise infringing act, or
b) made in good faith serious and effective preparations to do so, then they have the right to continue (but cannot licence this right)

Question 6

What happens if otherwise infringing acts were in the course of business whilst an application was incorrectly withdrawn

Answer 6

S117A(5)
the person may…
a) authorise their partners in that business to carry out the act
b) assign or bequeath the right as part of the business

Question 7

What are the rights to a product of an otherwise infringing act of an incorrectly withdrawn application

Answer 7

S117A(6)
Any product made in good faith is free to use as if from the patentee
(7) the person may also be the Crown.

Question 8

What are S117A rights similar to

Answer 8

S20A and S28 good/ bad faith rights (reinstatement and restoration)

Question 9

What should you do if you realise your application has been erroneously withdrawn

Answer 9

Request resurrection ASAP to prevent accrual of third party rights