Chapter 15: Private Applicants
Section (15.01 - 15.16) last updated: March 2017.
The Office treats agents and private applicants in the same manner, however the following points may be considered useful when dealing with private applicant cases.
Who are Private Applicants?
Applicants applying for patents without using a registered patent attorney/agent are referred to as ‘Private Applicants’ (or P.A.s). They may be individuals, limited partnerships or companies and can be identified by the label ‘PRIVATE APPLICANT’ on the dossier cover page.
Who identifies P.A. applications?
PA cases are initially identified by Index and Scanning section staff using the criteria set out in the table at Annex 15A - Types of address for service. Index and Scanning section treat private applicant cases in the same manner as all other cases but record the case as a private applicant type on COPS. This information is subsequently displayed when the case is accessed using other COPS functions such as the CHA CAS. However, the final decision as to whether any cases is a PA case or otherwise rests with PAU Examiners, Formalities Examiners and their managers.
Representatives for P.A.s
Applicants may nominate someone to act on their behalf by completing section 4 of the Form 1. This could be another individual, a solicitor, or a company secretary. They are not registered “agents/attorneys” but if the applicant has expressly authorised them to act for them, that person takes responsibility to sign forms or withdraw the application. Since a forwarding or postal address cannot be considered an agent, forms or a request for withdrawal must be signed by the sole applicant or by all joint applicants.
If an applicant writes to or telephones the Office directly, bypassing their agent, Formalities should avoid any detailed conversations or lengthy correspondence and refer the applicant back to their agent. Correspondence and telephone reports relating to the matter are sent via the agent until their authorisation is revoked.
Joint applicants in dispute with one another or with separate addresses for service must agree for one ‘agent’ to prosecute the application. The Office duplicates any correspondence to the other applicants’ nominated addresses and at A publication the ‘A’ print carries a footnote explaining the other address(es). Ownership and authority to act must be decided before grant because only one certificate is issued. If the dispute cannot be resolved, the matter should be referred, via the Head of Administration, to Litigation Section for action. (s.10)
Private Applications in Formalities
Private Applications are treated the same as agent cases in Document Reception and Index and Scanning section. There are two main types of private applications – those for which the application fee has been paid and those for which it has not been paid.
Basic filing requirements
The basic filing requirements which must be met in order for a filing date to be accorded are set out in s.15(1) of the Act. They are:
- An indication that a patent is sought (usually a Form 1).
- The identity of the applicant or a means of contacting the applicant.
- Something which appears to be a description (may be hand-written or in any language) or a reference to an earlier application (by the same applicant or his predecessor/successor in title) including the number and filing date of the earlier application and the country where it was filed.
Cases with only a contact point on the Form 1
Where the application is filed with only a means of contacting the applicant (for example, a telephone, mobile or fax number) but no applicant details or address for service, Document Reception will attempt to contact the applicant to obtain an address so as to send out the filing receipt. If an address is provided they will send the receipt to this address and produce a minute for scanning into the dossier accordingly. If an address is not provided, or the applicant cannot be contacted, the filing receipt will be produced but not sent to the applicant. A minute will be drafted to indicate that the receipt has not been issued. It should be attached to the filing receipt and the application documents for scanning by Index and Scanning Section.
On receipt of such an application Index and Scanning Section will capture as much information as possible on COPS and pass the file to Formalities. Failure to provide a name and address within 2 months of the date of any notification to do so may lead to refusal of the application (r.12(3)). A suitable diary entry should be created.
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 Annex 15B - No case letter), 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.
Preliminary Examinations are conducted in the same way for both Agent and Private Applicant case, therefore see chapter 4 for in depth guidance.
Defeciencies found at preliminary examination
If the description has been retyped, the applicant/agent must be given a period of one month to object. When one or more pages are prepared from an unsuitable original, an appropriate footnote for publication should be added in COPS using REC FOO .
The additional drawings may be considered at the substantive examination stage. If pages of drawings or text have been copied or retyped to improve their quality, the applicant must be informed in case they specifically wished the pages to be treated as informal to prevent the case being automatically published.
No deficiencies found at Preliminary Examination
If the Formalities Examiner has no objections to the application, he/she should prepare and issue the standard ‘No Objections’ letter (see Annex 15C - No objections letter) and import a copy of the letter into the dossier. A note should be added to the PDAX action log that the preliminary examination has been carried out (action type: Prel Ex Comp; action text: No objections)