Formalities Manual (online version)

Chapter 8: A publication

Section (8.01 - 8.74) last updated March 2017.

Introduction

8.01

“A” Publication [under s.16(1)] of a patent application normally takes place eighteen months from its earliest date (or priority date) [r.26]. The process is known as the “A Publication Cycle”; it takes five weeks and ends on the “Publication Day”.

Applications that have been withdrawn or refused are not s16(1) published. Applications covered by s.22(3)(a) are not published until their security restrictions are revoked.

8.02

The “A” Publication document or “A Doc” consists of the following on the front page:

  • publication number
  • bibliographical data
  • classification information
  • list of the documents cited in the search report,
  • abstract and an accompanying drawing

and inside the document:

  • formal drawings
  • description
  • claims
  • amended Claims (if any)
  • copy of the external search report(s) (ESR)

Where no search is possible, no ESR will be included.

On the publication day

8.03

On the publication day the application and the Patents Register become open to the public [s.118]. This means that anyone can physically inspect the documents forming the Open to Public Inspection (OPI) part of the PDAX dossier. The Patents Register and most documents and correspondence can also be inspected on-line using the IPSUM service on the IPO website.

8.04

Bulky or lengthy pages of computer programs and DNA sequences that are ancillary to the specification can be omitted from the ‘A’ Doc, providing this meets with the Patents Examiner’s approval. MoPP 16.27 A suitable footnote should be added. (see 8.24).

8.05

The Patents Act [s.24(3)] provides for an application to be published a second time: “B” Publication or grant is explained in more detail at 9.26.

Setting applications ready for A publication

8.06

When an application’s formal requirements are met and the Patent Examiner has issued the search report, it can enter the A Publication queue. Cases are selected on a weekly basis for publication in chronological order by their earliest date – either the filing date or earliest declared priority date.

8.07

The Examination Support Officer will have updated the COPS status to “MAY BE S16 PUBLISHED” and Formalities should identify the application as ready for A Publication by selecting the ‘FML Complied’ or ‘FML Repub’ box (S89 cases) in the appropriate Formalities checklist.

8.08

The trigger for setting a case ready for A Publication is either one of the following:-

When the search report has been issued, the Formalities Examiner receives the message “CHECKLIST SEARCH” and all requirements on the Formalities checklist have been met, or

The search report has already issued and the final outstanding Formalities requirement is now met (for example F7 or replacement drawings are filed).

8.09

The Formalities Examiner must complete an ‘OLFI’ check of the dossier because when the application is published the documents will be available to view on-line via the IPSUM service. It is important that an applicant’s personal data (signature, telephone number or e-mail address) is not published and this information should be redacted in accordance with the IPSUM guidance.

8.10

The Formalities Examiner must ensure the following are complied with before an application can enter the A Publication queue:

  • the Formalities checklist is fully completed
  • there are no outstanding minutes or diaries
  • no unactioned correspondence is on the dossier
  • any Footnotes have been entered on COPS (see 8.24).
  • the ESO has set ‘P’ markers against the external search report, abstract and RTM (if present).
  • there are no outstanding Assignment actions. If there are any unactioned F20 or F21 on COPS DIS FOR, Formalities should minute the Manager of Register Administration Section: “application is in order for a publication. F20 / 21 outstanding” Register Admin will deal with the outstanding action and confirm this within 24 hours. If they are unable to complete their action, they will minute Formalities accordingly.

8.11

If the Patent Examiner updates or corrects the search prior to publication, the corrected ESR should be clearly highlighted on the dossier. Formalities should ensure that the altered report is published and the original is cancelled.

8.12

If an incorrect search report is published or the search report is omitted altogether, an erratum should be raised. see 8.68

8.13

“Front Page” Print (Annex 8B - ‘A’ publication preview) - This is obtained from PRI FRO and should be checked for:

  • applicant(s) name, country and full address agrees with F1
  • inventor(s) name(s) agrees with F7
  • agent/address for service agrees with F1 and last correspondence
  • footnotes are recorded

8.14

COPS Status - Formalities must set the application to “READY FOR A PUBLICATION” using REC FOR (see 8.18). This can only be done if the Processing status is set to “MAY BE S16 PUBLISHED”. If the status on DIS PRO is anything other than this, it should be raised with the ESO and the correct status entered.

8.15

Where an application declares a priority date, the applicant may elect to cancel the claim to priority before ‘A’ publication. MoPP 19.11 If the request is filed after the application has been placed in the queue for A publication, the COPS processing status should be set to “NO LONGER READY FOR A PUBN.” using REC PRO.

8.16

When a message is received from the Assistant Head of Administration, confirming that its priority (or earliest priority) has been cancelled, its processing status should be set to “AGAIN READY FOR A PUBN.” using REC PRO. The application may now re-enter the A Publication queue but will be selected according to its new earliest date (either its filing date or earliest remaining priority date).

8.17

Priority documents must be on file for an application to be published, however, a S89 - PCT application can be published without the priority document.

Record formalities status (REC FOR)

8.18

This function completes the Formalities Pre-Publication COPS action so that an application enters the Publication cycle at the appropriate time.

The Formalities Examiner should perform the following:

  • if Formalities are complied with, enter “Y”
    1. Enter the number of pages that are to be published.
  • enter the date the search report was issued. This is taken from the ESR in the TOC. Errors should be corrected using REC PRO (see 8.61-8.64)
  • if COPS does not offer REC FOR screen 2 the COPS status is incorrect

If the status is incorrect, amend ‘Formalities Complied With’, enter ‘N’and request the ESO to re-set the correct status if appropriate. The Formalities Examiner at this stage should re-check if the case is ready for A Publication.

8.19

The Formalities Examiner continues to:

  • check the “approximate date of A Publication”; it should appear as either eighteen months after the earliest date or 9 weeks from the date the Search Report is issued whichever is earlier If publication is to be accelerated, (See 8.29 - 8.33) today’s date should be manually entered by the Formalities Examiner
  • enter “Y” if the displayed date is correct to confirm the application is ready for publication

8.20

If the wrong date has been entered on REC FOR for the issue of the external search report, COPS must be corrected. Otherwise, the application may be published either sooner or later than it should be.

8.21

If the application has already entered the A-publication cycle, the P.L.O. must be advised immediately. Action to remove the case from publication will then be considered.

8.22

Once the error has been realised, it must only be corrected in the following manner:

  • set COPS processing status to “NO LONGER READY FOR A PUBLICATION” using REC PRO
  • using REC FOR screen, enter the correct date on which the search report was issued. Key “Action”
  • the application should now be set to “AGAIN READY FOR A PUBLICATION.” using REC PRO
  • you will now be offered the recalculated approximate date of A Publication. If this is correct, enter “Y”

Footnotes

8.23

Applications are ‘A’ published “as filed”. Any changes to the specification or the F1 prior to publication are highlighted as Footnotes on the front page of the “A” doc. Enhancing of pages to renumber or remove references or the like does not require a footnote.

8.24

Footnotes are recorded on COPS using REC FOO as soon as they are required (for example when replacement drawings or later filed claims are filed), by referring to the proforma NOTICES FOR FRONT PAGE OF “A” DOCUMENT (Annex 8A - Notices for Front page of ‘A’ document (P.I. Notice)).

Recording footnotes for front page (REC FOO)

8.25

The Formalities Examiner should carry out the following:

  • enter the number(s) of any standard footnotes required
  • if a non-standard footnote is required, the approved text should be typed (in lowercase) under “Additional Footnote”

8.26

The Formalities Examiner continues by checking the correct footnotes have been recorded and that any non-standard entry has been typed correctly If footnote(s) have been entered incorrectly they can be corrected using CHA CAS.

8.27

S89 - PCT applications where the applicant(s)/inventor(s) details have changed prior to republication, or when the case has entered the National Phase early should have the relevant additional footnote recorded (see Chapter 13.111.

8.28

Where the Publication of Translation fee has been paid, the Formalities Examiner should add a below the line entry using REG PCT (see Chapter 13).

Accelerated “A” publication

8.29

An applicant may request that the application be published before the r.26 period expires [s.16(1) MOPP.16.04. Accelerated Publication is sometimes part of an overall intention to prosecute the application quickly. No reason is needed for this action but the Formalities Examiner must ensure that the applicant/agent clearly wants accelerated action as premature publication may prejudice future applications.

8.30

The five-week publication cycle itself cannot be accelerated or shortened in any way. An application would not normally enter the publication process until the search or CS&E report has been issued (except where no search has been possible) and all the formal requirements have been met.

8.31

On receipt of a request for accelerated publication, the Formalities Examiner will:-

  • add the ‘ACCELERATED PUBLICATION’ label to the cover of the dossier.

  • follow the instructions set out in PDN 11/13

  • enter the date of the request if it can be actioned immediately or the date the request becomes actionable using the REC ACC function on COPS. [The request is ONLY actionable once the formal requirements have been met and the search report has issued].

  • the REC ACC date will be the later of:

The acceleration request; Date formal requirements are met; Date of issue of Search Report.

8.32

Before completing the Formalities Pre-Publication COPS action the Formalities Examiner should again check the dossier to confirm that accelerated publication has been requested and documents have been correctly redacted.

8.33

When accelerated publication is confirmed and the application is being prepared (see 8.07) the Formalities Examiner will manually accelerate the picklist date on COPS. Using REC FOR (see 8.18); at the prompt “approximate date of A publication” the Formalities Examiner should insert that day’s date. This will cause the case to appear on the next available picklist.

Re-publication of S89 - PCT Applications (See also Chap 13)

8.34

Section 89 PCT applications have already been published by WIPO. They are republished in order to give the application a Publication Number.

8.35

If the WIPO International Application was published in English, it is republished because publication by WIPO satisfies s.16 of the Patents Act.* However, if the WIPO print was in a foreign language, we republish the translation but the applicant’s enforceable rights under s.16 do not begin until the date of republication.

  • Section 16 confers on the applicant(s) the enforceable rights as detailed under Sections 55 and 69 of the 1977 Act.

8.36

The applicant may backdate their rights to the date of the WIPO publication by requesting that the translation is published with a footnote on the front page and an entry in the Patents Journal. (see Chapter 13.59 – 13.62).

8.37

The Office will publish the same drawings as WIPO providing they do not contain any foreign textual matter. If they do, replacements should have been provided with the NP application. If they have not, refer to 13.105.

8.38

Any amendments to the application that were published by WIPO may be republished as long as they are in English. If they were published in a foreign language, a translation of the amendments should be requested. (See 13.66).

8.39

Abstract drawings containing foreign text may be republished with the examiner’s approval. They should be annotated in the TOC by Formalities and an explanatory minute should be created for the examiner’s attention.

8.40

The dossier should be checked to ensure that no corrected front page of the PCT publication has been filed subsequent to the original.

8.41

After the Patent Examiner has completed the classification action, Formalities receive the message ”CHECKLIST PCT RECLASSIFICATION”. The dossier should be checked and set ready for ‘A’ publication using REC FOR (see 8.18 - 8.22).

The A publication picklist – digital transfer

8.42

Each week applications are selected for publication that -

  • are at least sixteen months and three weeks old, Or where at least four weeks have passed since the s.17 search report was issued if that is later. and
  • have a Processing status of “READY FOR PUBLICATION”,

8.43

Each Thursday morning, every Formalities Section accesses a list of cases to be sent for publication using the Digital Transfer function. Cases can be filtered by examining group as necessary.

8.44

Documents that are to be published for Form 1 cases, will be marked with a “P”. For NP1 cases documents will be marked with an “R”. Early entry PCT cases which we publish rather than re-publish will need to be marked with an “R” against all documents to be published.

8.45

The Formalities Examiner should also check that the appropriate ‘OLFI’ action has been taken in respect of documents that are open to public inspection online via IPSUM.

8.46

If there are any problems with the documents listed for Publication there will be a warning or error message. Documents added to the dossier after the ‘Ready for A publication’ date will be shown with a different colour background. Urgent or withdrawal letters dated after the ‘Ready for A publication’ date will show a warning message.

8.47

Other warning messages will appear to highlight:

  • page total discrepancies
  • abstract not present or not marked ‘P’
  • description not present or not marked ‘P’ or ‘R’
  • drawings not present or not marked ‘P’ or ‘R’
  • drawings not marked as Formal
  • RTM not marked ‘P’
  • claims not present or not marked ‘P’ or ‘R’
  • amended claims not marked ‘P’
  • external search report(s) not marked ‘P’
  • WIPO spec front page not present or not marked ‘R’
  • international Search Report not present or not marked ‘R’
  • documents not for publication marked as ‘P’ or ‘R

8.48

To remove a warning or error the appropriate corrective action should be taken in the dossier and saved. The refresh button should be clicked so the latest details that are in the dossier are displayed.

Errors relating to COPS page numbers will not clear on refresh.

8.49

If an application is not in a position to be published, for instance the Patent Examiner is performing a further search or there is an outstanding Assignments action, cases can be removed from the list by clicking the ‘Remove Case’ checkbox. This will prevent the images being extracted for the In House Publication (IHP) but will NOT update COPS.

If a case is removed from publication, Formalities must ensure that:

1) The remove case box is ticked on IHP; 2) The COPS status is set to “NO LONGER READY FOR A-PUBLICATION” using REC PRO; 3) Publication section are emailed to notify them of the removal of the application.

Before removing the case, the Formalities Examiners should confirm with the Formalities Manager that the case can be removed.

8.50

On completing the check of the dossiers on the publication list the Formalities Examiner should e-mail Publishing section to inform them that they can commence the publication procedures.

Documents filed after a case is ready to be “A” published

8.51

The Preparation for Publication Completed (PPC) date will be specified on the A letter sent by Publication Section. This will usually be the 2nd Friday after the picklist. The examiner will have estimated this date in the s.17 Search Report

Amended claims

8.52

Any new or amended claims filed before the PPC date must be incorporated by Formalities in the following manner:

  • new pages must satisfy r.14 and Schedule 2
  • annotate the amended claims ‘Working Copy after A Pub’ in the TOC.
  • prepare a copy of the amended claims and enhance with “AMENDMENTS TO THE CLAIMS HAVE BEEN FILED AS FOLLOWS” on the first page. (If the new claims are not a complete set, the assembler should be used to create a full set)
  • re-number the pages and the copy of the external search report to follow from the original claims.
  • details on REC FOR will have to be altered to show the new number of pages (the case will have to be set back on REC PRO first)

8.53

If a second or further copy of amended claims is received, if time permits before Publishing, the new pages should supersede any previous pages filed.

8.54

When a new or amended set of claims have not been filed as a complete set Formalities should use the assembler to create a full set. Any new pages should be renumbered.

8.55

After publication, the amended claims should be annotated ‘Working Copy’ in the TOC. When Form 10 has been filed and the case is ready for examination, the COPS processing status should be “READY FOR EXAMINATION”

8.56

When amended claims are part of a response to the Patent Examiner’s CS&E report or accelerated examination, they should still be incorporated (as per 8.54). Any amendments to the description or drawings can be actioned and annotated ‘working copy after A pub’. The P marker in the “A Pub” column in the TOC remains against the original document to indicate that they form part of the published document. A message should then be sent to the examiner via the ESO “pre pub amendment”. The COPS processing status must remain “READY FOR A-PUB” or the application will lose its place in the publication queue.

8.57

If amended claims are filed after the application has entered the A-Publication cycle, check a see if the A Letter is on file, and whether the PPC date has passed. If the PPC date has not passed, the pages can be included for A Pub. Otherwise, they should be annotated ‘Incorporate after A-pub’ in the TOC and actioned accordingly.

Requests for withdrawal or other documents

8.58

Correspondence filed in the Office before the application enters the Publication Cycle may be actioned. For any correspondence received in Formalities before the PPC date, confirm with the Formalities Manager whether the COPS processing status should be set-back to “NO LONGER READY FOR A-PUBLICATION” using REC PRO. (see 8.49) If a valid and unqualified request for withdrawal is received the application should be terminated immediately on COPS by the Formalities Manager to avoid publication. (see 12.95) If the application has entered the Publication Cycle, the PLO should be consulted.

8.59

If a withdrawal request is received on or after the PPC date it is too late to withdraw the application from the publication cycle. The applicant should be contacted and asked whether they still wish to withdraw the application after publication. If they do then they will need to confirm in writing.

8.60

Correspondence filed after digital transfer is complete should be brought immediately to the attention of the PLO to assess its urgency and importance.

There are three ways in which publication may be prevented, which one is used depends upon the position of the case in the publication cycle.

Setting applications “NOT READY FOR PUBLICATION”

8.61

Between the day of the picklist (Thursday) and the end of the following day (Friday), an application may simply be “set-back” using RECORD PROCESSING STATUS (REC PRO) which will prevent publication.

8.62

Publishing section should be informed with written confirmation by email that the case has been removed from the “A” cycle and will not be published on that list.

8.63

If the case is again ready for publication, the Formalities examiner uses REC PRO and selects Option 7 “Again Ready for A publication. REC FOR should not be used to make the application ready again.

8.64

If the “approximate date of ‘A’ Publication” is correct (see 8.19), “Y” should be entered to set the application ready for publication again.

Withdrawal of applications prior to PPC date

8.65

The ‘A’ letter will be issued informing the applicant of the PPC date. Any requests for withdrawal received after 23.59hrs on the day before the PPC date are too late to withdraw the case.

Withdrawal emails should be sent to :-

withdraw@ipo.gov.uk

before 23.59 hours on the day before the PPC date.

8.66

Where an application is to be withdrawn and/or removed from the publication cycle before the PPC date, please discuss with the PLO. PLO specific guidance can be found under PLO Desk Notes.

Cases Set “NO LONGER READY FOR A PUBLICATION”

8.67

“No longer ready for A publication.” is an inappropriate status for many applications. Formalities must ensure that COPS always shows the correct processing status:

If the current Status is Formalities are complied with? Formalities should set the Status to…
May be S16 Published Yes Ready for A publication. using REC FOR
No longer ready for A publication Yes
Yes
Yes
Yes
Again ready for A publication. using REC PRO
Do not change status until case returns to EP queue and set Again ready for A publication. using REC PRO
May be S16 Published using CHA CAS - Code 14
Ready for A Publication No May be S16 Published using CHA CAS - Code 14

Correcting errors in the ‘A’ document

8.68

A correction to the ‘A’ document or Erratum may be issued for an error that was discovered after preparations for publication were complete, in respect of any of the following:

  • the Specification
  • the Bibliographic or Classification data
  • omission of a footnote
  • the external search report

8.69

For an erratum to be raised, the error must have originated within the office and not be a mistake by the applicant/agent. When the error is identified, either by the applicant or by the Office, the case should be minuted to the Publishing Section:

“Please raise an erratum in respect of item (*) of ‘A’ print GB

The [enter name of field] should read….”

COPS should be updated and any footnotes added. An ‘ERRATUM’ message should then be sent to Publishing.

8.70

It is not necessary to correct all errors immediately as they can be corrected at ‘B’ Publication. Discretion should be exercised in determining which errors need to be corrected at this late stage.

8.71

To help distinguish corrected publications from original ‘A’ and ‘B’ documents the following document codes are used:

  • A8 – a corrected front page of a published ‘A’ document
  • A9 – the complete reissue of a published ‘A’ document
  • B8 – a corrected front page of a granted ‘B’ specification
  • C – the complete reissue of a granted ‘B’ specification

8.72

For an A8 front page reprint the WIPOFP or Abstract and Formal drawings required for the erratum should be indicated with a ‘C’ in the A pub column.

8.73

For an A9 complete reprint all documents for ‘A’ publication should be selected, ‘P’ should be removed and replaced with ‘C’. If the erratum relates to a foreign language PCT the ‘R’ in the ‘A’ pub column should be replaced with a ‘C’.

8.74

If an erratum is relating to the ‘B’ specification, then check with the PLO if a replacement grant certificate also needs producing.