Chapter 11: Case management
Section (11.01 - 11.64 ) last updated: August 2018.
Patents Index and Scanning will upload paper filed applications to create an electronic dossier. The paper documents are then indexed and sent to be stored at Nine Mile Point.
The Formalities Manager (or designated substitute) will allocate the application to an examining group and heading. These are recorded on COPS and in the PDAX Action Log.
Applications requiring special consideration or accelerated treatment will have special labels attached to the dossier cover. See 11.56-11.64.
An applicant can request confidential treatment of any document with the exception of a Patent Form, providing there is a good reason (r.53) MoPP 118.10 - 15. For information about supressing inventor details see 3.26. Confidential documents, and the request, must not be set as OPI (Open to public inspection). The documents must be annotated as NOPIE (Not open to public inspection ever) on the dossier unless the request is rejected by the Office see 12.24- 35 for full procedure. The public status in the TOC must remain “No”. A request by a third party to view an unpublished case or a particular document should normally be refused. If a third party claims they are entitled to view the case or document under s118(4) or (5) the request should be referred to Litigation Section to establish entitlement [s.118]
No application or its contents may be shown to the public without authority
Occasionally, an applicant may send in a Form 1 without any description and without including a reference on the application form to any earlier GB or foreign patent application. All such dossiers are reviewed by Formalities in consultation with PA Examiners to decide whether the application should be treated as a ‘no case’.
If the application is a ‘no case’, Formalities should issue a ‘no case’ letter (see Chapter 15.11), any fees paid should be refunded, a suitable minute should be drafted and imported into the dossier and a message sent to the Business Systems manager, who will arrange for the COPS record to be deleted and secured. The ‘application’ is then deemed never to have been filed.
Before the F9A is filed
No action is taken on any cases prosecuted by an agent before the Form 9A is filed unless/until the application fee has been paid. A preliminary examination should then be carried out (see chapter 7) .
If the Form 9A (Request for Search) and appropriate fee is not filed within fourteen months of the earliest date (filing date or declared priority), the application is taken to be withdrawn. These applications should be checked to identify any outstanding diary requests, unanswered correspondence, COPS register errors or anything causing termination to be postponed. The applications may then be terminated on COPS (using REC PRO). These cases will appear on the F9 Termination Lists see 11.30.
After the F9A is filed
An application cannot be searched if the claims are missing, Formalities must therefore remind the applicant of the omission via a Preliminary Examination Report, giving a period to file them. If the claims (and abstract) are not filed within the r.22(1) period [extendable under r.108(2)] any unspent fees will be refunded and the application terminated and a WR4 letter would be issued.
Each day, new application dossiers are sent to the Formalities units’ PDAX mailboxes, from Index and Scanning who have received them from Security Section. Before a new application can be processed or moved on to the search stage, it has to be allocated to a Formalities and Examining group. This is normally done by the Formalities Manager.
This is done by allocating the case to a particular subject matter heading and then to the examining group responsible for that heading. To achieve this, the Formalities Manager gleans identifying phrases or words from the description and claims and searches the CPC key using electronic search tools such as Esp@cenet.
From this the heading can be identified and the group can be found via the allocating sheet. As each examining group has a Formalities group linked to it, this will enable the suitable group to be found for the case.
Cases on which an application fee has been paid and a Form 9A has been filed are ‘fine allocated’ to both a heading and group. Cases without a F9 are only ‘rough allocated’ according to end digit. Should a member of staff need to identify the unit to deal with such a Pre-F9 case, he/she can consult the Admin staffing lists which show which unit deals with the relevant end digit.
COPS function REC ALL is used to record the Group and Heading as appropriate. The same function is used to update the details following transfer of a case to a different group or heading.
After preliminary examination
Applicants are given an opportunity to meet any objections raised in the preliminary examination and if necessary, a diary is set, and a note recorded on the PDAX action log.
|Formal requirement||Period to comply (From earliest date)||See Chapter||If not complied with|
|Formal Drawings and retyped pages||15 months||4 and 5||FL48 letter|
|Unsigned forms, applicant(s) full name(s) and address for service||Two months from report||2 and 3||FL48 letter|
|Form 7||16 months [r.10(3)]||3||WR4 letter|
|Plus formal drawings, retyped pages or unsigned form(s)||15 months||4 and 5||WR4 letter|
|And/or claims and abstract||12 months or 2 months from filing date if later. [r.22(1)]||4||WR4 letter|
|Priority document foreign -16 months [r.8(2) and(5)]||6||Refer case to Formalities Manager to cancel priority date|
Where a diary has matured and drawings, signed forms or retyped pages are missing, a FL48 should be issued and a suitable diary set see 5.28-32. However, if there are other outstanding formal requirements, the WR4 letter should be used, and the case forwarded to the Formalities Manager for Termination.
Applications ready for A publication
Applications are ‘picked’ for publication each Thursday if:
- they are at least sixteen months and three weeks old (from the earliest declared date),
- the processing status is “READY FOR A-PUB”
- at least four weeks have passed since the s.17 search report was issued, and
- all Formalities requirements are complied with
Formalities Examiners prepare the pages required for the published document; the drawings, specification pages, abstract and bibliographical details are checked for publication. Each application dossier must have a copy of the external search report (ESR) for each search performed and COPS should be checked to ensure that all the mandatory roles have been recorded. Exceptions to this are PCT cases see chapter 13 or cases where searches cannot be carried out (see 8.02).
Divisional applications, s.89 PCT applications and applications requiring accelerated publication will jump the queue and will be picked before older applications waiting to be published (for further information regarding publication of Divisionals see chapter 14).
Each Thursday, the Formalities Examiners assess a list of applications picked for Publication.
Any cases on the Pick list which are unsuitable to proceed to publication that day, should have its COPS processing status set back to “No longer ready for A Pub” after consultation with a Formalities Manager. The Formalities Examiner should advise the Publishing Section by e-mail that the application will not be on that week’s list. They should also remove the case from our In House Publishing list.
Once the reason for not publishing the case has been overcome the processing status can then be set to “Again Ready for A Pub”.
After publication – Form 10 filed
After publication, (if not already filed) a Form 10 (Request for Substantive Examination) must be filed within six months of the publication date. Applications with a Form 10 (and fee) are sent for substantive examination.
After the substantive examination [s.18], any applications that are not in order for grant will await the applicant’s response to the Patent Examiner’s report. Each report will have a set period for the applicant to respond; failure to do so may result in the application being refused See 11.49-11.52.
Combined Search and Examination cases returning from publication will either be ‘In order’ See 11.26 or awaiting the applicant’s response to the Patent Examiner’s s.18 report. The Formalities Examiner checks the application dossier and takes the appropriate action marking the relevant documents ‘Open to Public Inspection’. If a translation of the foreign language priority document has been requested and is still outstanding at this stage, the Formalities Examiner should refer the case to the Patent Examiner for consideration. See 6.53 -58.
After publication – awaiting Form 10
Cases without a Form 10 require no action apart from a post-pub check. If the Form 10 is filed within the six months after publication [r.28(2) extendable under r.108(2)] it can be actioned. See Chapter 9 If the Form 10 is not received or the correct fees have not been paid (excess description pages), the application will have been taken to be withdrawn.
Ready for grant
When an application is in order for grant the Patent Examiner will set a diary to await any third Party Observations or a s.15(9) Divisional application. The Formalities Examiner should check the TOC for such instructions See 11.53-55.
If none of the above applies the Patent Examiner advises the Examiner Assistants who will instruct the ESO to issue either an EL3/EL34 letter, or an EL3F/EL34F letter (if there are any excess fees outstanding). If a Form 34 (grant fee request) is filed the formalities examiner should check the fee corresponds with that requested on the EL3F/EL34F and the procedure below followed:
- if fees are paid but do not correspond with those stated in EL3F/EL34F, Form 34 should be annotated as either ‘UNDERPAID’ or ‘AMENDMENTS PAID’ (if the applicant has paid in advance for any voluntary amendments which increase the amount of pages or claims)
- if the fee is underpaid the formalities examiner should issue the new underpayment letter requesting the outstanding balance
- if the fee is overpaid and does not appear to be a payment in lieu for any potential amendments, then a refund letter should be issued
- if no response is filed to the reminder letter, the application will be terminated by formalities once the compliance period expires
- if a Form 52 and excess fees are paid in response to the reminder letter, formalities should process and send the relevant PDAX message to the EA to carry out the necessary checks and send a message to formalities if the application is ready for grant
- if a Form 52 is paid but the excess fee remains outstanding, formalities will need to wait until 2 months after the extended date and for the application to appear on the WR2 list before terminating the application. Any further Form 52’s are discretionary and will be dealt with by formalities and the patent examiner.
The Formalities Examiner checks those pages required for the granted document, and checks for the following :
for any outstanding Caveat requests [CAVWARN] a message should immediately be sent to the caveat clerk to assess whether the COPS processing status should be set to “NO LONGER READY FOR GRANT” using REC PRO. If no action is necessary the case should continue to grant
where there are “Special” labels such as ‘Third-Party Terms’ shown on the dossier cover, an urgent message must be sent to the PLO requesting a special certificate be prepared. COPS is unchanged.
- if there is an outstanding Form 20 or Form 21 a message should be immediately sent to Register Admin Section with the following minute: “APPLICATION IN ORDER FOR B PUBLICATION - Form 20 ACTION OUTSTANDING” The processing status should be set to “NOT READY FOR GRANT”. After a reply from Register Admin the COPS processing status should be set back to “READY FOR GRANT”
- any unactioned minutes and unanswered correspondence must be dealt with
- pages and sheets of drawings must satisfy r.14 and Schedule 2. Pages and sheets must be numbered consecutively in the dossier
- Formalities must check the COPS register against the Form 1. In particular, the grant title, the applicant(s) and address for service details that will appear on the grant certificate. (The grant title must agree with the first page of the specification)
Formalities Managers must run weekly and monthly exception reports to identify applications where outstanding requirements have not been met to ensure no diary, message or other action has been missed.
Before terminating a case, Formalities must ensure the applicant has received sufficient time to respond to any warnings or had the opportunity to request a hearing. All telephone conversations with the applicant/agent must have a telephone report or minute to advise the Formalities Manager of the applicant’s intention to continue.
|Day||Cases without action||Action required|
|Monday||Form 9A 15 months old||Run F9 monitoring report (COPS) Check for outstanding action. If none, terminate Issue FL48 and diary (see 11.37- 38)|
|Tuesday||Form 10 More than 6 months after A Pub||Run F10R Time Limit report (POLS). Terminate (see 11.48)|
|Wednesday||Reply to S18 report 4 years 3 months old.
Reply to S18 report More than 4 years 6 months old
|Obtain s20. report from informatics Print and issue S20 letter (PROSE) WR1 (see 11.49-52).
As above. Issue WR2 if appropriate and terminate.
Other exception/monitoring reports
The following reports should also be run weekly or monthly to assist in monitoring the progress of applications and to identify errors or omissions. They are available from the COPS Special Stationery Menu.
|Thursday||Ready for Allotment||Identifies cases with a status|
|Friday||Ready for Allotment Ready for Formalities
|Identifies cases with a status ‘Ready for Allotment’ for more than 1 month
Identifies cases with a status ‘Ready For Formalities’ for more than 1 month
Identifies cases which are more than 18 months old but not Ready for A publication.
|Monthly (normally 1st of the month)||Selective forms monitoring||Identifies unactioned forms AF1, 9A, 10, 3, 14, 52.|
Other ad hoc monitoring reports are obtained from IT which identify cases where a Form 9A has been filed more than one month ago but no PAFS record has been created and cases which have remained at status 20 (A Published) for more than two months. These identify cases which should normally have been sent for search or examination.
Warning of refusal or withdrawal
An applicant must be forewarned if the Office intends to refuse or withdraw their application. These applications are either diarised or await a Time Limit Report.
At a maximum of nineteen months (from earliest date) the diary will mature for cases without a Form 7 or an abstract or with any outstanding formal objection. Claims may also be outstanding but this is uncommon. The WR4 letter is then issued on PROSE. This is to inform the applicant that the application has been taken to be withdrawn. (Annex 11A - WR4 Letter) The application is then terminated using REC PRO.
Important – The WR4 letter should only be used when a Form 7, claims, abstract or other statutory requirements have not been filed. Where the only outstanding requirement is a formal requirement a FL48 letter should be issued see 11.37 – 11.38. On applications without a Form 7, before the letter is issued, Formalities must check the COPS viewer in PDAX to ensure the form has not been filed and lost or delayed within the Office.
If the Form 7 is received after the end of the sixteen months period (r.10(3)) it must be accompanied by a request for extension of time (r.108(2)). Drawings, replacement pages, and signed forms etc. should be accompanied by a request for an extension of time under rule 109. Claims and abstract and Form 9A received after the prescribed period (r.22(1)) should be accompanied by a request for an extension of time (r.108(2)) See Chapter 10.
If any outstanding items are filed more than 2 months after the time period for filing them has elapsed the applicant should be advised of the reinstatement procedure (see chapter 10). If any irregularities are noticed these should be referred to the Formalities Manager.
A diary will mature at 17 months for cases without formal drawings, retyped pages, unsigned forms and other outstanding formal (non-statutory) requirements. After confirming that the original preliminary examination report was correctly issued see Chapters 4 and 5, Formalities should issue a reminder letter FL48 using PROSE. After the issue of each letter the application is diarised to a date 1 month from the end of the refusal date and an action logged to show this.
If the diary matures without a response being made, the Formalities Examiner prepares a Decision refusing the application. See Chapter 4.38-39.
Section 15A(7) of the Patents Act 1977 permits the Comptroller to refuse an application if any formal requirement has not been met. Those requirements designated as ‘formal’ in rule 25 are:
- a completed and signed Form 1 (r.12(1));
- an application in English or Welsh (r.14(1));
- the presentational requirements as described in rules 14(2) and (3) (Schedule 2, parts 1, 2 and 3)
At the preliminary examination stage, any formal requirements that have not been met will be notified to the applicant/agent using FL1A (see PFM, Chapter 7). Once the relevant time periods have expired, the Formalities Examiner will send a letter FL48 (if statutory requirements are outstanding – see chapter 11.33-11.36 to the applicant/agent requesting, within two weeks of the date of the letter either:
a) the outstanding requirement(s) with a full explanation of why they were not filed on time; or,
b) to make observations; or,
c) to request the opportunity to present the case to an official at the Office.
The case should then be suitably diarised.
If the applicant or agent fails to respond to the official letter or letters, a decision will be issued (see Annex 11D - Decision).
The decision informs the applicant that the application will be refused by the Comptroller pointing out that it attracts a period of appeal to the Patents Court of 28 days from the date of the decision.
The decision should detail the relevant facts including the dates of all official correspondence relating to the failure to meet the formal requirements.
Once the decision has been prepared, it should be left open in Prose un-dated and not uploaded to PDAX, it should then be forwarded to the Assistant Head of Administration, via the Formalities Manager, for approval. If someone is substituting, they can sign the decision but should include the following words after their signature: “substituting as Assistant Head of Administration”.
When the decision has been approved by the Formalities Manager/Assistant Head of Admin, the Formalities Examiner should date the decision and import to PDAX. The covering letter (DLCL - See Annex 11E - Decision cover letter) should be prepared and issued.
The covering letter and two copies of the decision are issued to the applicant/agent. The case should then be diarised for 6 weeks.
When the diary has matured, the Formalities Examiner should check the DIS FUL register entry on COPS to see if a below the line entry has been made to indicate that an appeal has been lodged. If an appeal has not been lodged a “No appeal lodged” message should be created for the Formalities Manager for termination. Should an appeal have been lodged the application should be referred to Litigation Section by the Formalities Manager. They will assume responsibility for the application during the determination of the appeal.
Form 10 list
Each Tuesday, Formalities produce a POLS picklist report of cases without a Form 10 (and fee). This lists the cases that are to be terminated because a Form 10 has not been filed within the r.28(2) period. The cases are then terminated on COPS using REC PRO.
WR1 and WR2 letters
Each Wednesday, Informatics produce two reports for the cases where the applicant has not responded to the Patent Examiner’s last s.18 report. The first report identifies cases where reminders need to be issued and the second shows cases which may need to be terminated.
The Section 20 Time Limit Report lists the cases where the applicant has not responded to the Patent Examiner’s report and where the compliance period will expire in the next 4 to 5 weeks. Formalities must review every application on the list:
Either where the application is currently in Formalities, with the Patent Examiner for amendment or the Examiner has extended the reply period, raised a diary or issued a further report (for example a telephone report) a letter will not be issued.
Or if the applicant has not replied to the report and the Patent Examiner has not extended the reply period, raised a diary or issued a further report - one of the reminder letters below must be issued. These are generated using the PROSE system.
Should be issued if the application is more than four years, three months old (calculated from earliest date) and there is more than 2 weeks left of the s.20 period, but not within two months of the latest examination report deadline. ( Annex 11B - WR1 Letter) Issue letter without diary. If a WR1 cannot be issued then a WR2 should be used after the compliance period has ended.
Is issued if the application is over 3 months past the section 20 period and a WR1 has not been issued. The termination date is the day after the expiry of the compliance period.
The Formalities Manager must exercise judgment as, generally, a WR1 letter should not be issued if the application has less than two weeks remaining of the compliance period for putting the application in order. Instead the agent should be contacted and warned of the imminent refusal of the application.
The Section 20 Limit Report lists the cases where a WR1 warning has been issued and the applicant has still not responded. This list also identifies WR2 letters that need to be issued ( Annex 11C - WR2 Letter). These cases are terminated on COPS using REC PRO.
Cases diarised for future action
Cases are diarised to await an applicant’s reply to an official request or to defer action until a later date. The application number is recorded on the electronic diary system. The Action Log is updated in the dossier to show the diary has been recorded. On the maturity date, a message “Diary” is sent to the Formalities Examiner by a designated officer. The diary entry may then be marked as completed.
For the Patent Examiner’s action
The Patent Examiner may diary a case to return to them, for example if a case is in order for grant, two months for the applicant to file a divisional application. The Formalities Officer sends a message via the ESO to the Patent Examiner after the maturity date.
If a message is sent to the Patent Examiner for any reason before the maturity date, the diary should not be cancelled.
Urgent, priority and accelerated cases
Applications often require priority or immediate action to ensure deadlines are met or to be granted within the 4 1/2 year compliance period. [r.30, s.20]. To identify these applications requiring prompt attention, Formalities add a label to the dossier cover.
When an application has less than four months of the compliance period remaining the ”Compliance Date Imminent” label should be added to the dossier cover. This alerts anyone handling the application to its urgency. Any messages created for these cases should have “Urgent” prefixed to the message.
Applications claiming earlier filing dates
These applications must be reviewed at the earliest possible opportunity to ensure the Office has the maximum amount of time to identify any outstanding actions. For example, applications without a Form 9A, claiming a priority date and nearing the end of the r.22(1) period See Chapter 6.
S.15(9) Divisional applications may be filed with insufficient time to prosecute the application normally (for more information on processing Divisional applications, please see Chapter 14).
Applicants may request that the Office process their application quicker than normal. For example, search in less than six months, publish before eighteen months, examine and grant at the earliest opportunity. Adequate reason(s) must be given for accelerating search, CS&E, examination and grant but not publication. see also 7.38 - 46, 8.29 - 8.33
Formalities must examine all correspondence for acceleration requests and bring them to the Patent Examiner’s attention promptly for action or comments, as a response to the applicant, indicating whether an acceleration request has been accepted or rejected must be supplied as soon as possible and preferably no later than ten working days after the request was received by the Office. Accelerated cases should have an appropriate annotation and a label added to the dossier cover.
The accelerated label should remain in place after the action is performed.
Accelerated publication is covered in Chapter 8 but it is important to note that the five-week publication cycle itself cannot be shortened.
In certain circumstances, Formalities must add labels to the dossier cover to identify that the application requires special consideration.
- a CSE label for Combined Search and Examination cases
- a ‘Green Channel’ label for cases requesting accelerated treatment due to an environmental benefit
- a ‘PCT Fast Track’ label for cases requesting accelerated examination in the UK national phase if their PCT application has received a positive International Preliminary Report on Patentability (IPRP)
- a ‘PPH’ label if a request for accelerated treatment under the Patent Prosecution Highway has been made
- a ‘Third Party Observations’ label for Third Party Observations and an explanatory minute to the Examiner Assistant