Formalities Manual (online version)

Chapter 16: Certified office copies (COC)

Section (16.01 - 16.37) last updated: March 2017.

Introduction

16.01

Certified Office Copies (COC) are documents that comprise copies of patents, patent applications or extracts thereof covered by a Certificate of the Comptroller and bearing the office seal. Their purpose, in the main, is to act as convention documents for patent applications made in foreign countries by UK residents. However, these may also be required for use in legal proceedings. To this end, the Office may be asked to certify anything relating to a patent (or application for a patent) under the provisions of r.48.

16.02

Such a request is made on Form 23. This is a fee bearing form for requesting either a ribboned and sealed certificated copy at £20 or an uncertified copy at £5. Requests for uncertified copies are dealt with by Cashiers. The request will come under one of the following categories:

a) a copy of an application as filed.

b) a copy of a specification as granted;

c) any other document or extract kept in the office.

16.03

Before processing any request for a COC, the Formalities staff should ask the following questions:

a) What is being requested?

b) Is the person making the request entitled to receive what has been requested?

c) Is the certificate needed for a country which has particular requirements?

d) Has the application/specification been altered in any way since the date of filing/grant?

e) Does the fee tie up with the number of copies ordered?

By answering these questions the Formalities Examiner will be able to determine exactly how the request should be dealt with.

Customer service standards

16.04

The issuance of COCs forms part of the IPO’s customer service standards and internal targets, in that the office will “issue 95% of correctly filed COC requests within 5 working days for GB applications”. A correctly filed F23 is one that can be actioned immediately. If the COC cannot be issued because the fee has not been paid or a F51 is needed then the F23 is not correctly filed until the fee or F51 is received.

Patents form 23

16.05

Formalities should check that the appropriate fees have been paid and that the person making the request is entitled to do so (In the case of an unpublished application this means either the applicant or his appointed representative). If the details on the F23 do not match those given on F1 (or otherwise stated on COPS), the COC must not be issued. The person requesting the copies should be contacted to request a F51. An appropriate minute should be recorded.

16.06

When a Form 51 is received, if the person requesting the COC answers ‘No’ to the question at Part 5 of the Form 51 the Formalities Examiner should:

Contact the registered AFS (preferably by telephone) asking if they are aware of the Form 23 request and not issue the COC until confirmation of the legitimacy of the request has been given.

The 5 day target time will not start until such confirmation has been received.

If a response is received from the agent/address for service disputing the authority this should be referred to the relevant Head of Admin for consideration. They will investigate the matter further and make an appropriate decision as to whether the COC should be issued or not.

16.07

Where applicant details, or a means of contacting the applicant, have not been provided and it is not possible to confirm if the person requesting the COC is entitled to receive a copy, the fee paid on Form 23 will be refunded.

Printing documents

16.08

The documents that need to be printed for COC purposes should be printed off the dossier, either directly by Formalities staff or via Reprographics using the departmental printer. Only the original “as filed” documents should be printed.

Recording receipt of form 23

Only requests for COCs of GB applications under the 1977 Act are actioned in Formalities. Any request for an Old Act (1949) COC or a request for a European Patent COC should be routed to Formalities Support Officer. Requests for uncertified office copies should be routed to (Sales and Publications).

16.09

Details of the processing of COC requests are recorded on an Excel spreadsheet.

16.10

Once the COC has been despatched the information should be recorded on the appropriate Excel spreadsheet. The information contained in each Formalities Group’s sheet automatically feeds into a master spreadsheet. It is used to monitor the overall performance of Formalities in the processing of F23s with regard to meeting the customer service target of 95% issued within 5 working days.

Certificates

(All the standard certificates are available from PROSE)

16.11

There are three standard certificates:

COC1 (see Annex 16A - Certified Office Copies 1 Certificate)
COC1 (USA) (see Annex 16B - Certified Office Copies (USA) Certificate)
COC77 (see Annex 16C - Certified Office Copies 77 Certificate in force)

COC1 and COC1 (USA) are for use on a COC of an application as filed, while COC77 is for a COC of a GB specification as Granted.

16.12

These certificates may be amended to suit the requirements of the COC request, however, it should be noted that any amendment to a standard certificate other than the inclusion of one of the optional paragraphs (see 16.14) must be referred to the Formalities Manager for approval prior to issue.

The standard certificates certify that the documents attached are a true copy of the documents filed and stored electronically on PDAX. If the COC request relates to a paper file the paragraphs relating to PDAX should be deleted.

Optional standard paragraphs

16.13

Optional standard paragraphs (see Annex 16F - Optional Standard Paragraphs) fall into three main categories:

a) paragraphs to be added to the standard certificates.

To be used after paragraph one on COC1 or COC1 (USA).

COC2b - amendment
COC2c - correction
COC2d - assignment

b) paragraphs to be used in place of those already on the standard certificates

To be used in place of paragraph one on COC1.

COC1a - declaration of assent

c) paragraphs to be used as stand-alone paragraphs replacing the standard certificates. To be used as stand-alone paragraphs.

COC3a - irrevocably withdrawn
COC3b - priority document
COC3c - priority document and translation

16.14

Formalities staff should check the Form23 to determine what is being requested and to consider whether the application/specification has been altered since filing/grant. In certain circumstances it will be necessary to use the optional standard paragraphs. All the options are available for selection within the PROSE letter category certified office copies.

Personal signatures

16.15

Certain countries require the COC to be endorsed by a “live” personal signature . A number of individuals have had their signatures legalised by the Foreign and Commonwealth Office (FCO) for this purpose and any such COC should be passed to one of them for signing. Authorised signatories include all Formalities Managers, Heads of Administration and their deputies. Facsimile or copied signatures should not be used.

Ordering copies of printed specifications

16.16

When a request is made on F23 for a COC of a GB specification as granted, it will be necessary to obtain a copy of the printed specification (B print) via the ad hoc ordering system using the publication number. It is important that the Formalities Examiner indicates that a ‘B’ print is required, unless a ‘C’ print has been requested on F23 (see 16.27).

COC for an application “as filed” (Except USA)

16.17

Follow the procedure set out in 16.05. If a third party claims that they are entitled to a copy of the application under the provisions of s.118(4) or (5) the matter should be referred to Litigation Section.

16.18

The Formalities staff should check the F23 to determine what has been requested and then print off all the necessary documents from the dossier. It should be noted that only those documents filed on the date of filing of the application should be printed. Any claims, abstract or drawings filed later than the date of filing must not be used.

16.19

When the documents have been printed, they should be checked for quality and completeness. The Formalities staff should then select certificate COC1 (assuming that there has been no change to the application and therefore no requirement to include any optional paragraphs) and make up the COC as specified below:

a) COC1.

b) F1.

c) Description.

d) Claims (only if originally filed - see 16.18).

e) Abstract (only if originally filed - see 16.18).

f) Drawings (only if filed - see 16.22).

16.20

Formalities staff should then ribbon and seal the documents, check which country they are for, adding either the printed or live signature. The F23 in the TOC should be annotated “Certificate issued”.

COC for an Application “As Filed” for use in USA

16.21

The procedure in this case is the same as above however if a Form 7 was filed on the date of filing of the application the F7 should be copied and placed after the F1 and a COC1 certificate used. If a Form 7 was filed later than the date of filing of the application, the F7 should be copied and placed after the F1 and a COC1 (USA) used.

COC for GB specification as granted

16.22

The Formalities Examiner should order the specification via the ad hoc document ordering system. A check should be made to ensure that the correct specification has been sent and also that no amendments see 16.27 have been made to the specification after grant.

16.23

Use COPS to obtain the relevant prints of the register. For example, a DIS FUL print and a DIS REN print. These prints should be obtained on the day the COC is to be issued so as to have the most accurate data.

16.24

If the patent is in force then the version of COC77 at Annex 16D - Certified Office Copies 77 Certificate not in force should be used. If the patent is not in force then the version of COC77 at Annex 16E - Certified Office Copies 6 WIPO/Certified Office Copies should be used.

16.25

The COC should then be made up as specified below and the prepared COC actioned as per 16.19 - 16.20:

a) COC77 (as appropriate - see 16.24 above).

b) relevant patent forms.

c) Specification.

d) Renewals data.

e) Register extract.

COC for GB priority and divisional applications

16.26

If a later filed application claims priority from an earlier GB application there is no need for the applicant to file a Form 23 or priority document see 6.51. This also applies to GB Divisional filed applications see 14.16.

Amendments and/or corrections after grant (C Prints)

16.27

A specification may be amended (s.27 or S75) and/or corrected (s.117) after grant. Such a specification with post-grant amendments and/or corrections will have the publication (patent) number on the front page prefixed (sometimes suffixed) with the capital letter “C” (as distinct from the capital letter “B” for an ordinary, unamended specification).

16.28

The Formalities Examiner must be careful to check that in response to a request for a granted specification (B print), a print containing amendments after grant (C print) has not been supplied by mistake.

16.29

Where the F23 specifically requests a “C” print, the COC should be made up as per 16.25 with the exception that an amended version of COC77 will be required to reflect under which section of the Patents Act 1977, the post-grant amendments and/or corrections were made. Such an amended certificate must be referred to the Formalities Manager for approval prior to issue (see 16.12).

16.30

The completed COC should then be despatched to the agent under cover of a compliment slip bearing any reference given on the F23. The F23 in the TOC should be suitably annotated and the appropriate entry in the COC record folder completed.

COC Containing sequence listing on CD-R

16.31

When an application is filed containing a sequence listing it is often the case that, as well as a paper copy, the agent filed the sequence listing in CD-R format. If a COC of such an application is requested it is possible to certify the information on CD-R and so remove the need to print and certify what is normally a large number of pages containing the sequence listing.

If an application does contain a sequence listing which is not in CD-R format, the sequence should be copied from the TOC and incorporated into the specification of the COC after the description but before the claims.

16.32

The standard practice for issuing a COC for an application “as filed” can be followed ie. points 16.18 - 16.20, however the Formalities Examiner should also check that the agent has stated that the sequence listings on CD-R are an identical copy of the written sequence listing and that they were filed on the date of filing. If no such statement is on file, then the Formalities Examiner should request one from the agent. F1, specification and any drawings can be printed from the dossier as normal.

16.33

The Formalities Examiner should then send the CD to IT Helpdesk in order for them to make copies of the sequence listing onto a blank CD and for the following text to be placed on top of the CD.

“I, the undersigned, being an officer duly authorised in accordance with Section 74(1) and (4) of the Deregulation & Contracting Out Act 1994, to sign and issue certificates on behalf of the Comptroller-General, hereby certify that attached hereto is a CD-R which purports to be an exact copy of the sequence listing (pages * - ) filed on **/**/** in connection with the Patent Application GB**.*.”

16.34

When the documents are returned from reprographics and IT Helpdesk, the paper copies should be checked for quality and completeness. The Formalities Examiner should then select the certificate on PROSE and make up the COC as specified below:-

a) Certificate

b) F1

c) Specification

d) Drawings (if filed)

e) The signed CD-R placed in a secured plastic envelope.

16.35

The copy should then be ribboned and sealed ensuring the ribbon goes through all the pages, including the page containing the CD-R and then be signed and dated.

16.36

The completed COC should then be despatched to the agent under cover of a PROSE letter bearing any reference given on the F23.

Requests for electronic uncertified copies from patent files (PEDDS)

16.37

These requests are dealt with by Cashiers. Full details can be found at Get an uncertified electronic copy of your patent.