Chapter 9: Post publication formalities examination
Sections (9.01 - 9.34) last updated: March 2018
Action on return from publication
The following checks should be made when you receive the “A Published” message from Publication Section to confirm;
a) that the A letter and published specification have been correctly imported on the dossier;
b) all documents open to public inspection, should be marked as “YES” in the Public column of the TOC;
c) that OLFI actions and annotations have been made where necessary
d) that the details on the published specification (ADOC) accurately reflect the information on file and that all pages have been printed (including amended claims and further search reports if filed). If this is not the case, the details can be corrected. An erratum is not normally issued at this stage unless the agent requests it;
e) whether an unactioned F10 is on the dossier
f) whether it is a Combined Search and Examination case – see 9.26 – 9.29
g) whether the case is a Divisional see 9.30
h) Where amended claims have been published alongside the existing claims they will have the code “ACLMS” in the TOC. There should be another copy of the amended claims on file which should have the code CLMS and annotated “Working Copy after pub”. The annotation should then be changed to Working Copy and the ACLMS cancelled.
Patents form 10 not filed
If a case does not have a Form 10 filed when it is returned from publication, the applicant has 6 months from the date of publication during which to file the form. The filing period for the Form 10 can be extended for 2 months under r.108(2). Further extensions under r.108(3) may be possible and details of procedures relating to this can be found at chapter 10.
Details for terminating the application if the Form10 is still not filed can be found at 11.36
As no further work will be done on the case unless a Form 10 is filed, any amendments to the specification, claims, or the drawings that have been filed on the application, before or during the publication cycle, are incorporated but not forwarded to an Examiner until a Form 10 is filed.
Patents form 10 filed
Cases with a Form 10 filed after publication should be checked to ensure that the form has been filed within the prescribed 6 month period from the date of publication with the correct fees (this can be extended by 2 months by filing Form 52 and appropriate fee). Follow the guidelines for processing a Form 10 (as set out in 7.01. Note, if the correct fee (for Form 10 and excess description pages) has not been paid after the prescribed time limit has expired, the fee will be refunded and the application terminated for failure to file a Form 10.
Important - COPS status must remain as ‘A PUBLISHED - AWAIT FORM10’ ’ if any underpayment is made, so that the application will appear on the Form 10 termination list if the underpayment is not made.
If the above requirements are met then the ‘Form 10 filed’ box can be ticked on the Formalities Post Publication checklist.
COPS action for cases ready for substantive examination
A newly filed Form 10 should be de-logged on COPS using the function REC PRE. This will automatically set the processing status to “Ready for Examination”.
If the Form 10 was already in the dossier (but it is not a CS&E case) the Formalities Examiner should go into REC PRO and change the status from “A published” to “Ready for Examination” (if the form has been delogged and the correct fees have been paid).
The application should be checked for any amendments to the specification that have been filed. These may take a number of forms as outlined below:
a) voluntary amendments filed with an applicant’s letter (such as replacement pages, drawings etc);
b) amended claims filed that have been added to the specification for publication;
c) amendments on PCT cases where the IB have sent pages that have been amended in the International phase of the application;
Amendments filed with an applicant’s letter
Once voluntary amendments to the application have been identified the Formalities Examiner should check to ensure that the pages have been filed within the period specified in the last s.18 report. If the amendment has been filed outside this period the Formalities Examiner should check the covering letter to see if an extension under r109 has been requested.
An extension of up to two months is available under this rule if the request is in writing. Amendments filed outside this two month extended period and any amendment filed out of time with no request for extension should be forwarded to the Patent Examiner for consideration as a Late Filed Response.
If the amendments have been filed in time they will need to be incorporated to create the working copy of the specification (if not already done before publication). The pages should be checked to see that they comply with r.14 and Schedule 2 (for details see 4.80. The pages should then be incorporated using the assemble function on PDAX, into the specification to create a “working copy” ensuring that all the pages still run consecutively. This specification should be annotated “Working Copy”
The superseded/cancelled description and/or claims should have the annotation “Working Copy” removed from the TOC and must be annotated “CANCELLED”.
If the pages do not comply with r.14 and Schedule 2 they should be incorporated but a minute to the examiner should be made as follows:
Pages filed with A/L dated ………………………….. do not comply with Schedule 2. Please add the following paragraph to your next report.
Replacement pages filed with your letter dated (date of applicants letter) do not comply with the requirements. Please file word for word copies that comply with Rule 14 and Schedule 2 of the Patent Rules 2007.
The COPS status should be changed using REC PRO to
regardless of whether the amendment is voluntary ( a letter) or a response to an examination report.
Where replacement drawings are filed, they need to be checked against the original drawings and marked ‘formal’ if appropriate. Previous drawings should be marked ‘informal’.
Amendments on PCT s89 cases
Amendments received from the IB in relation to PCT applications can be received at any time pre or post publication. They can be received with the International Search Report, the International Preliminary Examination Report, a Notification of Change of Name or Address, or on their own. The s.89 and Post Publication checklist should confirm if any such amendments have been filed. It is important that they are identified otherwise the substantive examination will be carried out on an out of date specification. The new and superseded pages should be handled as 9.10 above.
It is important that all letters and amendments are examined as soon as they are received in the Formalities Group. Letters/ documents filed which have been marked “Urgent” by the Agent/Applicant may be examined by the Formalities Manager to ascertain the degree of urgency. If an accelerated examination has been carried out then any subsequent amendments filed should also be treated as URGENT.
Amendments and the expiry of the Section 20 period
Particular note should be taken of any letters or amendments filed on applications nearing the end of the s.20 compliance period (4 years 6 months from the earliest date, or 12 months from the date the first report under s.18 is sent, whichever expires the later).
Special action should be taken on all cases where less than four months remain of the s.20 compliance period.
The dossier cover should have the “Compliance Date Imminent” label added and all messages should be preceded with “URGENT”.
Documents must be actioned within 24 hours of receipt within the Formalities department.
Translation of the priority document
If the application contains a priority document that is in a language other than English or Welsh the Patent Examiner may, if he needs a translation, request that the applicant files one, or a declaration to the effect that the application is a complete translation into English or Welsh of the priority application. A suitable declaration can be found in paragraph 6.55.
Where a translation is requested, the Patent Examiner will set a period by which it should be filed and set a diary date for response. This will normally be the same period as that set for response to the examination report. Where no translation or declaration is filed the priority claim will be disregarded. When the Diary date matures the case should be forwarded to the Patent Examiner stating that the translation/declaration has not been filed. The Patent Examiner may ask Formalities to remove the claim to priority as per 6.64
Where a translation or declaration is filed in response to the Patent Examiner’s request the application should be forwarded to him/her for further consideration.
Combined search and examination and divisional cases
Following publication, the dossier is checked as in paragraph 9.01 a) and also to see whether any amendments have been filed in response to the Combined Search and Examination report which was issued prior to publication. If amendments have been filed, these will now need to be incorporated if not already done. The new and superseded pages should be handled as 9.10. These new claims/description should be created using the assembler function on PDAX.
When the pages have been incorporated the Action Log should be updated ‘Amended Pages Incorporated’ and a message sent to the examiner via the ESO.
The Amended Pages/Claims filed box and the Pages Incorporated box on the Formalities Post Publication Checklist should also be ticked. The COPS processing status will then need to be changed using REC PRO status to “Amendment”.
If there are no amendments to the application no further action is necessary. The application will await a response to the CS&E report or the maturation of a diary made by the Patent Examiner when the CS&E report was issued. Once the post publication check is complete, the Action Log should be updated.
When the Patent Examiner is satisfied that the application complies with the Patents Act and Rules, they will issue a notification of intention to grant letter. The examiner assistant will monitor the application for the next month and if no response is filed the application will be forwarded to Formalities for the grant check. It is important at this stage that ALL details are up-to-date and correct and that all relevant pre-grant and assignment related documents can be viewed on IPSUM and have been correctly redacted.
The Formalities Examiner should use the PRI FRO page option on COPS, over type the “A” with a “B” to obtain a ‘B’ print and use this to check the details on the dossier. The processing status should be checked using DIS PRO status to ensure that the application is set ‘Ready for Grant’. The Assignments tab on PDAX and the COPS viewer should be checked to ensure no Form 21 has been filed for an assignment.
If a Form 21 has been filed to register an assignment, a message should be sent to Register Admin Section where staff will complete the necessary action. If Register Admin cannot complete their action within 24 hours they will contact the applicant/agent and ask if they want the case to be granted or delayed for one month. If the applicant/agent chooses the latter, the application should be set back to “No Longer Ready for Grant” and a diary should be set.
The address on the Form 1 for the agent should be checked against the last correspondence on file. If any changes have not been updated, this should be actioned using REG NAM.
Inventors names, priority details and applicants’ details should be checked and any discrepancy corrected. Normally this is done by sending a message to Indexing and Scanning, however, consult your Formalities Manager first.
The grant title on page 1 of the specification should be checked against the ‘B’ print and any discrepancies should be confirmed with the Patent Examiner and corrected by the Formalities Examiner. Once these are amended the application will then await the grant picklist. MOPP 18.86 also refers.
Once a case has entered the ‘B’ publication (grant) cycle it is not normally possible to withdraw it unless the office has made an error. In such cases advice should be sought and agreement at Divisional Director level will be necessary before the PLO can take action to remove a case from the cycle.
If an error (such as no s.18(4) report having been sent) is discovered during the course of the ‘B’ publication cycle, the Patent Examiner should contact the agent immediately to establish if it is necessary to remove the case from publication to resolve the matter. If there are no outstanding issues or matters can be dealt with quickly by correspondence it may be possible to allow grant to continue and no withdrawal action will be needed.
Cases granted in error
If an application has been sent to grant by the Office in error then the Publication Liaison Officer (PLO) should initiate remedial action either to remove the case from the B cycle or to rescind the grant.
If the case is still in the early stages of the B cycle it may be more sensible to simply withdraw it from the B cycle.
However, if the ‘B’ letter has been issued and the case is near the end of the publication cycle then it may be advisable to delay action until the ‘B’ publication date has passed. In these circumstances Publishing Section should be advised to retain the Certificate of Grant.
The PLO in consultation with the Head of Admin, Publishing Manager and Patent Examiner will decide on the best course of action. Annex 9A - Letter Rescinding Grant can be used to notify the applicant.