Chapter 20: Revocation on the Comptrollers initiative Section 73(2) (Will be moved to the Restorations and post grant section manual)
Sections (20.01 - 20.30) last updated: April 2020.
Restorations and post grant section manual https://www.gov.uk/guidance/restorations-and-post-grant-section-manual
All text below will be transfered to the Restorations and post grant section manual.
Introduction
20.01
This section relates to the revocation of patents on the Comptroller’s initiative under Section 73(2).
Action by A3
20.02
All S73(2) revocation actions are processed electronically on PDAX. A patent examiner will either send the patent file to Tribunal Section asking for revocation action to commence in respect of the patent or if the case is already on PDAX, he will send a message to the Team mailbox. The examiner will specify the European patent to be cited.
For cases not yet on PDAX, the A3 will:
- arrange for the patent file to be indexed and scanned as a PDAX case
The new case will be placed by Index and Scanning in the Team mailbox to be actioned by a member of the ex parte team.
20.03
The A3 will also need to:
- enter the application on the Exparte Post Grant SharePoint List, the filing date is the date of the minute sent by the examiner to initiate proceedings under Section 73(2)
20.04
A print relating to the European patent (UK) should be obtained from the Online EPO Register
You should check that:
a) the opposition period of 9 months has elapsed since the grant of the patent.
b) there is no opposition to the grant of the European patent (UK).
c) the European patent (UK) has designated GB status.
d) there are no requests made for central revocation of the European patent before the European Patent Office under EPC Article 105a. This allows the proprietor to request that their patent is revoked in all contracting States in which the patent is in force (MoPP 73.10)
e) the specification on PDAX is the latest version using Register Plus and there are no central limitation proceedings ongoing. If proceedings are ongoing, proceed as follows:-
EPC 2000 – Central Amendment Process
Following the introduction of the central limitation process, an EP (UK) patent may now be amended centrally at the EPO as well as in each individual contracting state. On receipt of a new S73(2), the Register Plus website should be checked to determine whether there is a request to centrally amend an EP (UK) patent. If so, you need to obtain a copy of the amendments filed at the EPO and forward these to the examiner. The examiner will consider whether the amendments, if allowed by the European Patent Office, remove the S73(2) conflict. If so, the examiner may stay the S73(2) action pending the outcome of the central amendment. If the amendment is not allowed or it does not remove the conflict, the S73(2) action may proceed.
A minute should be prepared and referred to the examiner as follows:
On checking the EPO register, it appears that an application has been filed to amend the patent centrally at the EPO. The amendments are available to view in the dossier. Please consider if allowed, whether these amendments remove the conflict. If so, please confirm that you wish to stay the S73(2) action pending the outcome of the centrally filed amendment. The register will be checked regularly to monitor the progress of the amendment. If the amendment does not remove the conflict, please confirm that you wish to proceed with the S73(2) action. The A3 will create a minute on PDAX, then send a “PSM - S73(2) Central amendment filed” message to the examiner.
If the European patent (UK) has lapsed since grant, revocation action should continue (see MOPP Section 73). If an opposition to the grant of the European patent (UK) has been filed at the European Patent Office (check via EPO Online), the case should be referred to the originating examiner with a minute.
The A3 will create a minute on PDAX, then send a “PSM – S73(2) EP in Opposition” message to the examiner. In most cases, a view will be taken on whether to stay the Section 73(2) action pending the outcome of the EPO opposition proceedings.
20.05
You should check that the GB patent is in force by using the COPS function DIS FUL. If the patent is not in force, refer the case to the originating examiner as there was a period of double patenting in place.
The A3 will create a minute on PDAX, then create and send a “PSM – Patent not in Force” message to the examiner.
20.06
If all formalities have been complied with, an Official Letter PL3 Annex 1 - Official Letter PL3 should be issued to the patentee allowing two months for a response. A file note should be prepared on PDAX as follows:
PL3 issued on (insert date of PL3). B/F to………………
The case should be diaried accordingly.
Update Diary EX2 within Outlook.
Letter created, locked and imported from PROSE.
20.07
An COPS free text entry should be made using the function REG ENT. The entry should read:
“Section 73(2) action initiated on (date of PL3), in view of EP(UK)……..”.
No objection to revocation
20.08
If a response is received to the PL3 that states that the patentee has no objection to the revocation of the patent, the letter should be scanned onto PDAX by Index and Scanning. A decision 3 Annex 5 - Decision 3 (Agree to revocation)) should then be prepared for the appropriate Head of Examination Group. The unsigned decision should be manually imported onto PDAX and annotated accordingly as ‘Draft Decision’.
The A3 will create a minute on PDAX, then send a “PSM – Dec 3 to authorise” message.
Once authorisation is received from the Head of Examination Group, an electronic signature can be applied to the decision. The decision should be dated and issued to the patentee with (See Annex 3 - Official Letter DNL1).
Letter created, locked and imported from PROSE. A file note is created on PDAX. Decisions are created using Word templates and applying the appropriate electronic signature. Electronic signatures can be located on SharePoint. For clearing records see 20.25 – 20.28
If a response is received to the PL3 that states that the patentee has applied to centrally revoke at the European Patent Office, no action under Section 73(2) is necessary. Once we have received confirmation that the EP patent has been centrally revoked, notify the originating examiner.
Once the examiner has agreed that there is no conflict under Section 73(2), issue letter Annex 15 - SE73 EPOREV Centrally revoked at EPO.
For clearing records see 20.25 – 20.28.
Disagreement that the patents are in conflict
20.09
The patentee may reply that he disagrees with the examiner’s view that the GB patent and the European patent (UK) are in conflict. In such circumstances, this correspondence is treated as ‘Observations filed’ and the proprietor will usually provide evidence to support this view. The letter and evidence should be scanned onto PDAX by Index and Scanning section. This is then referred to the originating examiner with a suitable minute. If the examiner allows the patentee’s submissions, decision 2 (see Annex 6 - Decision 2 (Observations allowed)) should be prepared for the Head of Examination Group. The unsigned decision should be manually imported onto PDAX and annotated accordingly.
The A3 will create a minute on PDAX, then send a “PSM – Dec 2 to authorise” message. Once authorisation is received from the Head of Examination Group, an electronic signature can be applied to the decision. The decision should be dated and issued to the patentee with official letter DNL2 (see Annex 4 - Official Letter DNL2). A file note should be prepared on PDAX as follows:
Revocation action under S73(2) not proceeded with on (date of clear records).
Letter created, locked and imported from PROSE.
Decisions are created using Word templates and applying the appropriate electronic signature. Electronic signatures can be located on SharePoint.
Clear records
An COPS entry should be made to show that revocation has not taken place. Using REG ENT on COPS, a free text entry should be made as follows:
Section 73(2) action initiated on (date of PL3) in view of EP (UK) ………..not proceeded with on (date of decision)” The Exparte Post Grant SharePoint List should be updated by entering against the file reference number, not proceeded with on (date of decision) and the date of clear records.
A Journal entry should be prepared as follows:
Section 73(2) action initiated on (date of PL3), in view of EP(UK)…….., not proceeded with on (date of clear records)
Advert is created in Word and then imported on PDAX using manual import (doc code is ADVERT). This is then uploaded to the weekly PDJ Live on SharePoint.
If the observations are not allowed, the examiner will provide instructions as to how you should proceed in an examination report. This report is then included in an exam letter. The proprietor should also be provided with the opportunity to file amendments to overcome S73(2) conflict. (see Annex 13 - S73EX Exam letter).
Where an agreement cannot be reached between the Comptroller and proprietor, the Deputy Director may decide to issue a fully reasoned Decision. In this instance, the Decision and Abstract will be forwarded to the Hearings Court.
For precedent cases, please see BL 01/109/15 and BL 0/91/93 (Annex 16 - Precedent S73(2) Cases).
Patent to lapse or to be surrendered
20.10
The patentee may state that he is either:
- allowing the patent to lapse due to non-payment of renewal fees, or
- that he proposes to surrender the patent
It would appear that neither of these options is prima facie allowable because both patents would have been granted for a period of time. The MOPP Section 73.09 indicates that once revocation action has started, it should normally continue even though the patent may have lapsed or an offer to surrender has been made. The case should be referred to the originating examiner with a suitable minute. The examiner will usually ask for a letter to be issued to the patentee pointing out these facts and offering a hearing.
The A3 will create a minute on PDAX then send a “PSM - S73(2) request to lapse/surrender” message to the examiner.
Amendments allowed instead of revocation
20.11
The patentee may submit proposals to amend the patent in order to remove any conflict
20.12
When proposals for amendment of a GB patent are received in response to revocation action under Section 73(2), the amendments (doc code AMENLIT) should be referred to the originating examiner. The examiner will reply after he has considered whether the proposed amendments are acceptable or not. If they are not acceptable, the examiner will issue further instructions as to what action should be taken in an examination report. This report is then included in an exam letter. The proprietor should be provided with a further opportunity to file amendments to overcome S73(2) conflict. (see Annex 13 - S73EX Exam letter).
The A3 will create a minute on PDAX, then send a “PSM – S73(2) Amendments filed” message to the examiner.
20.13
If the proposals for amendment are prima facie allowable but are extensive, the examiner may request that amendments are made throughout the whole specification in order to achieve consistency within the specification in order to conform.
The A3 is then instructed by the examiner to issue letter to proprietor for further amendments. (see Annex 11 - S73FS2 Fresh specification conformity).
If the proposals for amendment are acceptable by the Examiner, but require a freshly typed specification in order for publishing to produce a C spec, letter S73FS1 is issued requesting a reply within 2 months (see Annex 12 - S73FS1 Request for fresh specification).
If the proposals for amendment are acceptable by the Examiner, refer case to the appropriate Head of Examination Group to confirm that the amendments are allowable. Once confirmation is received from the Head of Examination Group that the proposed amendments are allowable, use the assemble and enhance function to apply the amendments to the B specification. The description, claims and drawings annotated “P” and “working copy” are copied from PREGRANT into the LITIGATION section of the dossier. The amendments are then applied using the enhance and assemble functions. In order to identify the amended sections of the specification, they are annotated “C” and “For publishing purposes” along with the sections not amended.
The references to “P” and “working copy” of the copied documents are deleted. This enables publishing section to extract all the documents required to produce a “C” spec.
Where the GB patent is amended Decision 1B (Annex 7 - Decision 1B (Amendments allowed)) should be prepared for the appropriate Head of Examination Group. The unsigned decision should be manually imported onto PDAX and annotated accordingly.
If both the GB and the EP patents require amendment in order to remove any conflict, the GB patent is amended under S73(2) and the European patent is amended under S27. The amendment under S73(2) is stayed pending the expiry of the S27 opposition period. The amended GB and EP specifications should be published simultaneously. [RAPS Team will undertake procedures for an amendment to the EP (UK) under S27 and liaise with Tribunal section - see RAPS Manual for 27 procedures.] Tribunal section staff will also diary the expiry of the opposition period as the duration of the stay and liaise with RAPS team accordingly.
On expiry of the opposition period, Decision 1C (Annex 8 - Decision 1C (Amendment to GB & EP)) should be prepared for the appropriate Head of Examination Group. The unsigned decision should be manually imported onto PDAX and annotated accordingly.
Certificates and decisions are created using Word templates via Prose and then applying the appropriate electronic signature. Certificates and electronic signatures can be located on SharePoint.
Create a minute on PDAX, then send a “PSM – S73(2) Decision 1B or 1C and CERT to authorise” message.
Once authorisation is received from the Head of Examination Group, an electronic signature can be applied to the decision and certificate. The certificate is imported using manual import (doc code is CERTIFICATE).
20.14
The decision and certificate should be dated and the decision issued to the patentee with Official Letter DNL2 (Annex 4 - Official Letter DNL2). A file note should be prepared on PDAX as follows:
Decision issued on (date of decision). Patent amended. Clear records
Letter created, locked and imported from PROSE.
20.15
Clear records
The Exparte Post Grant SharePoint List should be updated by entering against the file reference number Patent amended on (date of the decision) and the date of clear records.
20.16
An COPS entry should then be made. From the revocations menu select item 7 - amendments allowed - type in the file number and then select item 4 – under Section 73 - this will prompt you to insert the date of the decision. When prompted use A3 (upper case letters) as authority for the entry.
20.17
A Journal entry should be prepared as follows:
Specification amended under Section 73(2), on (date of decision)
Advert is created in Word and imported using manual import on PDAX (doc code is ADVERT) and is uploaded to the weekly PDJ Live on SharePoint.
20.18
Following this, the case can be referred to Publishing Section for the amended specification to be published.
The A3 will create a minute on PDAX and then send a “PSM – S73(2) Produce C Spec and see CERT” message to the Publishing Team mailbox.(see Annex 10 - Publishing referral template)
No reponse to official letter pl3: official letter pl5
20.19
If, after the four month period allowed for response to Official Letter PL3 (including retrospective two months), no reply has been received, Official Letter PL5 (see Annex 2 - Official Letter PL5) offering a hearing should be issued, specifying a 21 day period for reply. A copy of Official letter PL3 should be enclosed with the PL5.
Letter created, locked and imported from PROSE.
20.20
A file note is created on PDAX, this should read:
No reply received to PL3 issued on (date of PL3),…PL5 issued on (date of PL5) B/F to ………….(Always to a Wednesday). Update Diary EX2 within Outlook.
Request for a hearing in response to PL5
20.21
If in response to the PL5 letter a hearing is requested, this will need to be arranged by the Hearings Team. Following the hearing, a formal office decision will be issued by the hearing officer and sent to the proprietor by the Hearings Team.
If the patent is revoked see 20.23 – 20.27.
To refer to the hearing team, create a minute on PDAX then send a “PSM – set up hearing” message to the hearings mailbox.
The Hearings Clerk will diary the expiry of the appeal period and will notify the A3 case worker accordingly.
The A3 will then clear records following the expiry of the appeal period.
No Response to Official Letter PL5
20.22
If no response has been received to the PL5 letter after the 21 day period has lapsed, Decision 6 (see Annex 9 - Decision 6 (No reply to PL3 or PL5)) should be prepared for the appropriate Head of Examination Group with the following minute:
No reply has been received to either PL3 or PL5. Decision 6 has been prepared. Please can you authorise the application of your electronic signature.
The unsigned decision is imported onto PDAX and annotated accordingly as ‘Draft Decision’. Decisions are created via Prose, using Word templates and applying the appropriate electronic signature. Create a minute on PDAX, then send a “PSM – S73(2) Dec 6 to authorise” message. Once authorisation is received from the Head of Examination Group, an electronic signature can be applied to the decision.
20.23
Decision 6 (Annex 9 - Decision 6 (No reply to PL3 or PL5)) should be dated, and issued to the patentee with Official letter DNL1 (see Annex 3 - Official Letter DNL1).
Letter created, locked and imported from PROSE.
20.24
A file note should be prepared on PDAX as follows:
Decision issued on ………………( date of decision). Patent revoked. Clear records.
Clearing Records
20.25
To update COPS select item 16 from the revocations menu -Register Revocation. If, when registering the revocation of the patent, it is found that the patent has lapsed, it should be referred to the B3 who will change the status of the patent so that it can be revoked.
The A3 will create a minute on PDAX, then send a “PSM – Patent ceased” message to B3.
20.26
A Journal entry should be prepared under the following heading: SECTION 73 Revocation on the Comptroller’s Initiative Patent revoked under Section 73(2) Patent Number PROPRIETOR’S NAME Title Patent Revoked on (date of decision)
Advert is created in Word and imported to the dossier using manual import (doc code - ADVERT). The advert should also be uploaded to the weekly PDJ Live on SharePoint.
20.27
The Exparte Post Grant SharePoint List should be updated using the file reference number. A file note is then created on PDAX with the outcome of the S73(2) proceedings, the date of decision and the date of clear records.
Extension of time
20.28
S117(B) of the Patents Act 1977 provides for an additional automatic extension of two months for periods specified by the Office. This may be applied retrospectively. Most of the requests for extensions of time relate to proposed amendments. These extensions of time may be allowed with the examiners discretion.
20.29
Where an automatic extension of time has been applied and then a further extension of time is received the request is referred to the originating examiner, who will consider it on its respective merits. It should be remembered that Section 73 cases are ex parte. Therefore no other parties are involved or need to be consulted. The A3 will create a minute on PDAX and send a “PSM – S73(2) Further extension of time request” message to the examiner.
20.30
Once an extension of time has been granted, this should be confirmed in writing using letter S73 EOT via Prose, offering the proprietor a new deadline for a response. (see Annex 14 - S73EOT Extension of time) Letter created, locked and imported from PROSE. A file note is created on PDAX.