Chapter 12: Miscellaneous
Sections (12.01 to 12.100) last updated: September 2018.
This chapter covers formalities activities that may occur at any stage of the processing of an application and may not have been covered in detail elsewhere in this manual.
Although the ordinary dictionary definitions of these words overlap, they are used in the Act and Rules in quite distinct and specific senses.
Where the information was incorrect at the time of filing a correction should be requested. If the information was correct but has since changed an amendment should be requested. Section 117 deals with corrections. Section 19 of the Act deals with amendment. A written request should normally be filed in both cases.
If an agent/applicant informs the office that an error was made at the time of filing, it may be possible to correct the application retrospectively to the date of filing by making a written request. Supporting evidence is not normally required unless there is reason to doubt the accuracy or validity of the information supplied.
If the correction request relates to a name then the request must be made on a Form 20. Any other part of the Form 1 (for example, priority details) Form 9A, Form 7, or the priority document may be corrected by making a written request. All Form 20s will be routed to Register Admin section in the first instance who will forward any s.117 corrections to Formalities to deal with using the message Form 20 correction.
A minute should be produced in PDAX explaining the background of the correction sought and, if there is any doubt as to the validity of the request, a recommendation as to its allowability. The case should then be forwarded to the Formalities Manager.
If the request relates to an error introduced by the electronic delivery of the application then it can be considered under rule 105(4). However, this does not apply if the error was already present prior to the transmission of the application.
If the correction sought is for the description or drawings (including adding a page or drawing missing from an application as filed see 5.33 - 35 and 5.35 and 5.52 then the Formalities Examiner should write a minute to the patent examiner dealing with the application. If the request is to correct the erroneous withdrawal of an application see 12.94.
After the request has been considered, the file is returned to the Formalities Examiner with instructions for further action, for example, to add a footnote, or to inform the agent if the correction is allowable. The Formalities Manager will have made the correction on COPS and corrected the Form 1 by using the enhancer function. If the correction involves changing a priority (earliest) date then the application’s time limits will also need to be changed on COPS. If a request to correct a name has been made other than on Form 20 then a form should be made up in the Office and the applicant/agent advised in the reply letter that future requests must be made using Form 20.
If a Formalities Examiner detects a clerical error in any part of the correction process they should refer this to the Formalities Manager for consideration.
A request to amend a Form 1 should also be made in writing and should be accompanied by a copy of the form clearly identifying the proposed amendment. A reason will be required for any amendment please also see MOPP 19.05. If only a name (including an agent’s change of name) requires alteration, this must be done on Form 20 which should be dealt with by Register Admin Section. This does not include amendment of the address for service which can be requested by writing to the Office giving the application number and the correct details (r.49(3)).
Provided that a Form 7 has not yet been filed, an applicant may be added, deleted or substituted upon a written request. However, when Form 7 has already been filed, then the change must be notified under s.30 and actioned by Register Admin Section. This is due to a possible change in the derivation of right. (See MOPP 19.09).
A minute should be added to the dossier explaining the background of the amendment sought together with a recommendation as to its allow ability. The case should then be forwarded to the Assistant Head of Administration via the Formalities Manager.
After the request has been considered, the file is normally returned to the Formalities Examiner with instruction for any necessary action, for example, to add a footnote or to inform the Agent whether the amendment is allowable.
The Assistant Head of Administration will have made the amendment on COPS and enhanced the Form 1.
There is no provision for properly paid fees to be refunded. However it is Office practice to grant ex-gratia refunds in certain circumstances as set out below:
a) A refund of Form 9A can take place when an application is withdrawn, refused or the form is withdrawn prior to the issue of the search report;
b) A refund of the Form 10 can take place when the application is withdrawn, refused or the applicant/agent requests a refund of the form prior to the issue of the examination report.
c) A refund of the application fee can take place when the application is withdrawn, refused or the applicant/agent requests a refund prior to the issue of the preliminary examination report.
In the case of a) and b), where the dossier has previously been sent to the examining group, it should be referred back to the examiner to update their records before the refund is issued.
A request for a refund of Form 9A which bases the request on the fact that the case claims priority from an earlier GB case which has been searched, should be refused. In the case of a divisional application, the procedure is as set out in 14.28 in line with r.106(2)(b).
When a case is referred to the Formalities Examiner for a refund, it should be established whether the refund is to be made to a deposit account, to a credit or debit card or by cheque.
This information may be determined from the form that is to be refunded. The finance ‘stamp’ should contain the required information. If the cashiers’ code on the top of the form begins with ‘D’ it means the customer has a deposit account with the office and this number can be used to issue the refund letter.
Non-account holders are usually identified by a code that does not begin with ‘D’. The form will also indicate the method of payment used, for example, cheque (chq) or credit/debit card (Visa/Mastercard). Payments made by credit/debit card must be refunded to the same card account.
Once the account status has been established, the Formalities Examiner should create the appropriate letter via PROSE and import it into the dossier on PDAX. A message is then created to include the Ledger Heading for the type of form being refunded. - “REFUND LHXXXXX” (A list of Ledger Headings is available) and sent to the Formalities Manager.
The Formalities Manager will check the refund and delete the form from COPS and annotate the form on PDAX “£XXX REFUNDED” followed by their initials and the date to show that it has been refunded. The COPS status should also be amended accordingly.
The Formalities Manager should then create a message for the Refunds team mailbox specifying which type of refund it is, for example DEPOSIT ACCOUNT REFUND or CHEQUE REFUND. Finance will then print the letter and issue the refund.
Rule 53 - Confidential treatment of documents
Rule 53 permits the sender to request that the Comptroller treat any document (other than a Patent Form or any document filed in connection with a request for an opinion) as confidential. However, such a request must be filed within fourteen days of the date of filing the document and be supported by reasons (extendable under r.108(1)).
If the request is not supported by reasons, the sender should be telephoned and asked to submit reasons in writing within fourteen days from the date of filing the request (extendable under r.108(1)). A telephone report should be issued and the case suitably diarised.
The document(s) containing the request, reasons and/or confidential information should be given the Doc Code “Confidential” and the Public Status should remain as “No” pending consideration of the request. The document should be annotated “Not Open to Public Inspection” (NOPIE). Any document submitted with the r.53(1) request which does not itself contain the request, confidential information and/or supporting reasons, should retain its original Doc Code and be given the normal Public Status appropriate to that document (for example, “Yes” if the application has been published).
In addition, if a covering letter refers both to the confidential request and to other non confidential matters, Formalities should create a redacted version of the letter that has the confidentiality request and any associated details removed. The redacted document should retain the normal Doc Code and be given the normal Public Status for that document (for example, ‘Yes’ if the application is published). This redacted version may be created at the time of receipt or at the time of confirmation of confidential treatment of the other matter (see 12.30).
In a few cases, the r.53(1) request may appear in a letter which also contains some or all of the confidential information/supporting reasons to which the r.53(1) request relates. In those cases, the procedure at 12.26 should be followed. If the Formalities Examiner is in any doubt, the matter must be referred to the Formalities Manager for guidance.
When all of the required documentation has been received and placed on the appropriate part of the dossier, the case should be referred to either the Head of Administration or Deputy Director, depending on the circumstances of the case, for consideration of the request. The message should read “PSM R53”.
If the request for confidential treatment is allowed, the Head of Administration or Deputy Director will direct the Formalities Examiner to carry out the following:
a) Inform the sender in writing accordingly;
b) Amend the annotation to “R53 Confidential NOPIE” for each of the documents which have been accorded confidential treatment.
c) Ensure the status is “No” in the “public” column on the table of contents in the dossier
The copy of the Official letter which informs the sender that the r.53(1) request has been allowed should be set as “Yes” in the public column if the application has been published unless specifically directed otherwise.
If the request for confidential treatment is not allowed, the Head of Administration or Deputy Director will direct the Formalities Examiner to carry out the following:
a) Inform the sender in writing accordingly;
b) Change the Doc Code from “Confidential” back to the original Doc Code and remove the “Not Open to Public Inspection” annotation
c) Set the Public Status to the relevant status for the original document (for example, “Yes” if the application is published).
It is possible for a document to be accorded confidential treatment for a limited period only. In such a case, the Formalities Examiner will be instructed to action the case as above and also to diary the case for return to the Head of Administration/Deputy Director for the position to be reviewed.
Upon maturity of that period, if it is decided not to continue confidential treatment of a document, it will be necessary to inform the sender accordingly in writing. Instructions will be given for the Formalities Examiner to issue a letter, cancel the r.53 direction on the relevant document(s) and update the status (if necessary), the document code and annotation.
A direction under r.53 may be reviewed if a request for the information is received under the Freedom of Information (FOI) Act. If the need for confidentiality is deemed to be no longer valid eg because of the passing of time or change of circumstances, the direction may be revoked under r.53(6). Such requests should be directed to the Head of Administration or the FOI Officer.
Action cannot be taken under r.53 in respect of any Patents Form with the exception of Form 7 when the inventor has requested his name and address details be kept confidential see 3.23 – 3.35. Any requests of this nature must be referred to the Head of Administration.
Rule 107 - Correction of irregularities
Other than by r.108, 109 see Chapter 10 and 111 (see 12.47) the only means by which time limits can be extended is under r.107. This allows the Comptroller to exercise discretion to correct irregularities and extend time periods when the reason for the failure to comply with any limitation as to time or periods specified was caused, wholly or in part, by an error, default or omission on the part of the Office.
Determination as to whether r.107 can be brought into play to extend time limits is complicated and the outcome of such consideration cannot be preconceived. Each case will be judged on its own merit. Accordingly, the Formalities Examiner/Manager must discuss any such instances with the Head of Administration.
On receipt of a request under r.107 or where it is clear that there has been an error or omission on the part of the office, the Formalities Examiner should minute the dossier and send a message to the Head of Administration via the Formalities Manager explaining the facts surrounding the request and indicating whether they agree with it or recommending that rule 107 be exercised.
If the request is allowed, the Head of Administration will minute the dossier back to the Formalities Examiner/Manager requesting a letter be issued to the agent/applicant, and giving an appropriate form of wording to use.
Where a withdrawn application is reinstated under rule 107, 3rd party terms should be considered see 10.67 except in cases where the applicant has done everything which was required of him and the irregularity is wholly the fault of the office (for example, Form 10 filed in time but not actioned and application withdrawn in error). This stems from the judgement of Pumfrey J allowing an appeal by Eveready Battery Company Inc. in the Patents Court on 18 May 2000.
Rule 110 and 111 Postal interruptions and delays
Under normal circumstances the filing date of a document is the date it is received by the Office in the normal course of business. Where any document (other than a new patent application not claiming priority) sent by post is received at the Office on a non-working day, it is treated as having been received on the next working day. Therefore, any time limit (including any extension under rule 108) expiring on such a non-working day will be automatically extended to the next available working day.
Rule 110 states that the Comptroller is empowered to certify that there is a general interruption to the UK postal service or that there is an event or circumstance causing an interruption to the normal operation of the Office (eg. a certificate was issued following the London bombings on 7 July 2005, other examples may include strikes or adverse weather conditions). This provides for an automatic adjustment of any time limits affected.
When there is such a disruption, the Comptroller may issue a certificate (see Annex 12A - Copy of notice issued). The effects of the certificate can be retrospective, prospective, or both as the situation may require. The issue of such a certificate means that any period prescribed by the Act or Rules for filing anything ending on a day on which there is a certified postal or other interruption, the period in which that action may be done or filed is extended to the first day after the end of the period of interruption.
In accordance with r.110(3), where a priority date is claimed and the period of 12 months following the date of the priority application ends on a day when there is a certified postal or other interruption, the claim for priority will be valid provided the declaration is made on, or before the first filing day after the expiration of the interruption.
Where it is necessary to apply the provisions of r.110(1) or (3), the case should be referred to the Head of Administration via the Formalities Manager. Disputes concerning filing dates which do not clearly fall under either rule 107 or rule 110 should be referred to the Head of Receiving Section in Finance.
If an applicant or agent reports that correspondence sent to them by the Office has failed to arrive or that correspondence intended for someone else has been delivered to them in error then a ‘lost correspondence’ report should be made to the Head of Administration who maintains a record of such instances for data security purposes.
Rule 111 allows the Comptroller to extend a time period (or set a new time period) where failure to do something under the Act or Rules was wholly or mainly attributable to a delay in, or failure of, a communication service. This could relate to either out going or incoming correspondence and includes post, electronic communications and courier.
If post sent by the Office is reported as not received the Formalities Examiner should issue a copy together with the ‘Lost Post’ letter inviting the agent/applicant to request an extension under rule 111 if appropriate. Any requests for an extension of time under rule 111 received in response to the letter should be handled in accordance with PDN 05/17 and referred to the Head of Administration for consideration.
Returning documents to the applicant
There are various reasons for returning documents to the agent/applicant:
a) Documents that have clearly been filed in error;
b) Under the circumstances described in paragraphs 4.59- 4.63 PFM
It should be noted that documents cannot be returned once A-Publication has taken place except when clearly filed in error.
Documents returned to an agent/applicant should have any official date stamps cancelled and initialled. In some cases, documents may be refiled later in the life of the application or, in the case of priority documents, translations or drawings, on another application. It is therefore important that the date of refiling is clear and can be distinguished from the earlier cancelled date.
Cases are diarised to await the filing of a document or action by Formalities staff or the Patent Examiner. Examples of this are: awaiting the filing of claims when Form 9A has been previously filed and, awaiting the possible filing of a divisional application or further amendments before grant.
An electronic diary system is available via the Outlook® email system. Any member of staff wishing to record a diary request should enter the file number against the relevant date for its retrieval on the PD Diary. Patent Examiners should simply enter the examining group after the number; Formalities staff should enter the Formalities group after the number. For example GB0806807.6 - EX01 or GB1006807.6 F5
The diary date set should be recorded as an ‘Action’ on PDAX. The Formalities Examiner should cross check outstanding Diary actions to ensure they have been correctly entered on Outlook.
Diary officers will check for maturing diaries on a daily basis for dates at least 3 days in advance.
When a case is being referred to a patent examiner and there is an active diary on the case, the diary entry should not be cancelled.
If an applicant dies the application may proceed in the name of the personal representative. If the Office becomes aware of the death of an applicant before a patent is granted but the application has not been assigned to another party by the time it is in order for grant and a personal representative has been appointed, the patent should be granted in the name of the personal representative.
The Formalities Examiner should forward the dossier to Register Admin Section who will advise of the requirements to record/register the new applicant and request the probate or letters of administration, to confirm the personal representative.
However, if a personal representative has not been appointed by the time the application is in order for grant, the patent should be granted in the name of the deceased applicant. (see also 2.34-2.36)
Requests for the substitution of the applicant(s) under s.30 of the Act are dealt with by Register Admin Section and are made on Form 21. When such a request has been made, but certain requirements are outstanding, Register Admin Section will note the dossier:
Section 30 (1977 Act) Application filed ……………………
A message will be sent to Formalities for further action if appropriate.
If the application has not been published, every effort should be made to complete the assignment action before the application is sent for A-Publication. If this is not possible, Register Admin Section should be notified for the action to be completed as soon as the case has been published and consideration be given to any erratum action that may be necessary.
Where substitution of the applicant is allowed under s.30, COPS will be updated only
a) If the assignment is effected before A-Publication the relevant footnote should be entered onto COPS (Box 13) - “This print reflects an assignment of the application under the provisions of section 30 of the Patents Act 1977.
b) When the assignment is effected after A-Publication Register Admin Section will take the necessary action with regard to the Patent Register. However, a check of the COPS details and the Form 1 should be made.
An inter-partes case is one in which the Comptroller has been asked to adjudicate between the conflicting submissions of two or more people who each claim an interest in a patent or patent application. Such cases are dealt with by Litigation Section whether or not the application has reached the grant stage, and all letters relating to the dispute are stored in the Inter- Partes folder within the Litigation tab on PDAX.
Letters on inter-partes matters are likely to refer to one or more of the following sections of the Act:
- Section 8 - Relating to disputes before grant concerning entitlement to patents
- Section 10 - Relating to disputes between joint applicants about the handling of their applications
- Section 12 - Disputes concerning questions of entitlement to foreign and convention patents
- Section 13 - Disputes concerning an individual’s right to be mentioned as inventor or co-inventor
Formalities Examiners should not attempt to deal with any correspondence relating to inter-partes matters. If you are in any doubt the document should be referred to the Head of Litigation Section.
Where a letter is received which does not mention any of the sections of the Act listed above, but the content suggests an inter-partes matter, the letter should be referred to Litigation section immediately.
Section 21(Third party) observations
Section 21 of the Act states that after an application has been published, but before a patent is granted, any third party may make observations in writing as to whether an application is patentable. A dedicated email address exists for this purpose - email@example.com – this is monitored by the Examiner Assistants.
This means that if a third party can provide evidence that an application is not novel or lacks inventive step then the Office will consider this information during the substantive examination of the application whilst determining whether to grant a patent. Such observations may be filed before A-Publication and will be acknowledged immediately and sent to the applicant but will not be dealt with formally until the application has been published. These are processed by Examiner Assistants see PDN 4/15 so all Third Party Observations should be routed through to them in the first instance.
When a letter or email is received from a third party stating that it contains observations in accordance with s.21 (or in the case of a private individual it appears so), the Examiner Assistant should ensure the documents have the Doc Code TPOBS and select the Third Party Observations label on the front cover of the dossier. The letter should be checked for personal data and redacted if necessary before being made OPI. TThe standard message S21 OBS should be sent to the patent examiner only if an exam report has been issued (see PDN 4/15).
If the observations contain any offensive or libellous material the Examiner Assistant (EA) should redact it. The EA will add the OLFI annotation to make the documents available on IPSUM. If the first s.18 report is not yet due the EA will write to both the applicant and the third party advising the applicant of the ‘observations’ and acknowledging receipt to the third party. Care should be taken to issue the redacted copy to the applicant and not the original.
It should be noted that the filing of observations under s.21 does not make that person a party to the proceedings and therefore no information beyond that allowed by s.118 should be given to that party.
In legal proceedings the office may invite or require an applicant to provide evidence to support their request for reinstatement, extension of time or late filing of a document etc.
Evidence is information given by an individual to establish a fact or point. It should be based on what the person giving the evidence has seen or heard or what action they may have taken. It may be in the form of a statutory declaration, affidavit, witness statement or in some other form such as a letter giving reasons for the error/late filing. It is for the applicant to provide whatever evidence he believes will best support his case.
If a hearing is appointed then once the case has been referred to the Hearing Officer, Rule 87 will apply and any further evidence submitted should normally be in the form of Witness Statement unless the Hearing Officer directs otherwise.
An affidavit or statutory declaration is a written statement made upon oath and signed in the presence of a notary public (solicitor, JP). The affidavit or declaration should be on good quality white A4 paper and the original should be filed at the Office. If the declaration or affidavit is filed in a language other than English, it should be accompanied by a translation.
A witness statement is a written statement signed and dated (in accordance with the Civil Procedures Rules (notably rule 32.8 and the associated Practice Directions)) by a person and which contains the evidence that person would be allowed to give orally. It must include a ‘statement of truth’ by the witness that he believes the facts in it to be true. A useful A5 size guide entitled “Evidence” can be obtained from Litigation Section or from the Office website.
Supplementary protection certificates (SPCs)
A Supplementary Protection Certificate extends the protection conferred by the basic patent beyond the normal 20 year term for a maximum period of five years. It is only available for medicinal or plant protection products which have suffered delays before being authorised for marketing in the EC. All SPC enquiries should be directed to the SPC Officer in Formalities or his/her deputy. If neither is available then the enquiry should be routed to one of the SPC examiners in Examining Group EX06 or ultimately the Group Deputy Director.
The withdrawal of applications is the responsibility of the Formalities Manager. All documents with a document code of “WDRL” received in the Formalities Group team mailbox must be checked by the Formalities Manager to ensure that all letters requesting withdrawal are immediately and correctly identified.
Once a withdrawal letter is identified the Formalities Manager must ensure that where possible the withdrawal is carried out the same day. The COPS action to terminate the case should be carried out by the Formalities Manager or deputy. The effective date of withdrawal is the date the withdrawal request is received in the Office. If that date falls on a weekend or Bank Holiday then the next working day’s date will be the effective date as the Office is not open for that class of business on non-working days.
If it is not possible to action the withdrawal on the same day the Formalities Manager should ensure that the COPS status of the application is such that it cannot enter the publication cycle. This is to ensure that we do not inadvertently publish a withdrawn application.
A withdrawal request for a case already in the publication cycle should be passed to the Publication Liaison Officer immediately. The PLO will deal with the withdrawal in accordance with the procedures set out in 8.65 – 66.
An application for a patent may be withdrawn at any time before a patent is granted. Any request for withdrawal must be clear, unqualified and made by an authorised person. A request made directly by an applicant who is represented by an attorney should not be accepted without confirmation from the attorney.
In the case of unrepresented joint applicants, all the applicants must authorise the withdrawal. Any withdrawal request received in the Office that does not meet these requirements should not be acted upon.
However, if a withdrawal request does meet the requirements, then its effect is immediate upon receipt in the Office (except as in 12.81). When an unequivocal request for withdrawal has been actioned the applicant/agent will be informed using the PROSE Confirmation of Withdrawal letter (see Annex 12B - Confirmation of withdrawal letter). This letter should not be issued until after the COPS action to terminate the case has been done.
The request should use the words “withdrawal” or “withdrawn” and express a clear and positive intent to terminate the application. A statement such as ‘the applicant is no longer interested in prosecuting the application’ or is ‘abandoning’ it, is not sufficient. For example, an applicant may state that he does not intend to file Form 10; such an indication is not binding on him, and he may change his mind and file the request within the prescribed period. Similarly, an applicant may indicate that he does not intend to reply to a report issued under s.18(3). In such cases, the file should be stored until the relevant periods have expired and the application is then treated as having been withdrawn or refused.
If the applicant or agent has indicated that he does not intend to proceed, but has not unequivocally and in writing withdrawn the application, and some course of action by the Office, such as search, A-Publication, substantive examination or grant, is pending, he should be asked to indicate in writing his clear intentions. If no clear withdrawal is forthcoming the application will proceed.
If the applicant or agent indicates over the telephone that he wishes to withdraw an application, he should be told to express his intention in writing. If no letter is received the request will not be acted on.
If a letter of withdrawal and a retraction of the request are filed on the same day the withdrawal will be deemed to be unclear and will not be acted upon.
If at any time the applicant or agent wishes to file a conditional withdrawal, he should be requested to file an unqualified statement of withdrawal. Failing this the application is regarded as still being in force.
If the request for withdrawal is conditional upon the application not being published and it is too late to prevent publication, the Formalities Examiner should contact the applicant or agent and request clear instructions.
Whenever an application is withdrawn, the Formalities Examiner should prepare and issue the withdrawal letter using Prose and import into the dossier. The action log will need to be noted concerning the withdrawal. They should then create a message to the Formalities Manager for termination. The Formalities Manager will terminate the application on COPS using REC PRO. The effective date of the withdrawal should be entered and not the date the COPS action is done.
Where an application has already been terminated through failure to meet all formal requirements, you may still receive a request to withdraw the application ‘leaving no rights outstanding’. Where this is the case, a confirmation withdrawal letter should be issued containing the statement:
you should note that your application has already been terminated with the effective date of [DATE] because the requirements for [XXXXXX] were not met.
Withdrawal of applications by email
An application may be withdrawn by sending an email message to the office. The procedure outlined above will still apply for withdrawal requests received by email.
Directions under section 124A of the Act were made by the Comptroller and these directions give us the legal authority to receive this type of email correspondence. The directions can be found in Annex 12C - E-mail withdrawal directions.
All email withdrawal requests should be sent to:
Any email messages sent to other Office email addresses should be forwarded to the ‘withdraw’ email box. Personal email addresses should not be used.
A designated PLO will be responsible for reading the messages, importing a copy of the email into the dossier, actioning them or creating a message to the relevant unit for action. Before carrying out any of these actions the PLO should satisfy themselves that the person who sent the email is party to the application and is therefore eligible to withdraw the application.
The sender of the email should identify themselves in the body of the email. If the sender of the email cannot be identified the PLO should contact the sender for confirmation of authority. Any further queries should be forwarded to the Formalities Manager for further action.
Once a valid email request has been received at the above address an email acknowledgement should be issued. The content of the email acknowledgement will depend upon how and when the email message will be actioned.
If an email withdrawal request is received and the application is not in the ‘A’ or ‘B’ publication cycles the following return message can be sent:
Thank you for your email (reproduced below) which was received in this Office on ………………….. You will shortly receive a written response on paper from this Office, sent to the address for service for the application, confirming the action we have taken in response to your request.
This email response should include a copy of the original email. Import a copy of the reply into the dossier and create a message to the relevant team mailbox.
If the email message withdraws an application which is in the ‘A’ or ‘B’ publication cycles the PLO responsible for reading the messages should carry out the procedure outlined in paragraphs 8.76 - 8.83. Once this procedure has been carried out the following return email message should be sent:
Thank you for your email (reproduced below) which was received in this Office on ………………….. The application has been withdrawn/not been withdrawn and the application will/will not be published. You will shortly receive a written response on paper from this Office, sent to the address for service for the application, confirming the action we have taken in response to your request
If the application has not been withdrawn the email should give a reason why this is the case, for example, that the request to withdraw was received after the PPC date.
All applications that are withdrawn by email should have a confirmatory letter sent to the address for service of the application as per 12.84 above. A copy should be imported into the dossier.
If an application is withdrawn in error, s.14(10) allows the error to be corrected under s.117 and the application to be ‘resuscitated’. A written request to correct should be made and should be accompanied by supporting documentation or explanation to show why/how the error occurred.
Any requests to correct an erroneous withdrawal should be minuted to the (Assistant) Head of Administration. If the withdrawal occurred before publication the (Assistant) Head of Administration should reverse the termination on COPS using CHA CAS. An erratum notice should be sent to Publishing section for inclusion in the next available Patents Journal (See Annex 12D - Erratum notices ) and the applicant/agent informed that the correction has been allowed.
If the request to resuscitate relates to an application which has been published and its withdrawal has been advertised then 3rd party terms will apply as set out in s.117A. Any correction to an erroneous withdrawal which is allowed on a published case must be made by Order (s.117(4)). A ‘Resuscitation Order’ is available in PROSE (see Annex 12E - Resuscitation order).
The (Assistant) Head of Administration will reverse the termination using CHA CAS and send an erratum notice for the next available Patents Journal (see Annex 12D - Erratum notices ). The applicant/agent should be informed that the correction will be advertised as allowed and informed that 3rd party terms will apply.
Provisions exist under s.81 (1) and 81(2) of the Patents Act where the applicant may request that their European patent application be converted to a GB patent application.
This is an unusual occurrence which arises when a European patent application is deemed withdrawn because it has not been received by the EPO within the time limit (14 months from the earliest date) The failure to transmit the application to the EPO is usually a result of a decision by the national office to make the subject matter of the application secret. It could also arise accidentally.
When such a case arises it is given a lodged date similar to a divisional application but will retain the same filing date and any priority date from the original EP application. Security Section will deal with the conversion action and the case will then progress as a GB application. See MoPP 81.07 – 81.19 and National security checks on patent applications.