Litigation Manual (online version)

Chapter 18: Section 29 Surrender of patents

Section (18.01 to 18.21) last updated: March 2016

Introduction

18.01

This section provides for the proprietor to offer to surrender a patent, including a European patent (UK), and for opposition by a third party to an offer to surrender. Procedures are prescribed by the Patents Rules 2007 (see rule 42). It is not necessary for the proprietor to file a form or pay a fee when applying to surrender a patent.

18.02

The offer to surrender should comprise:

  • a declaration that no action is pending before the Court for infringement or for revocation of the patent or
  • if an action before the Court is pending, full particulars of the action in writing

18.03

If there is an action before the Court for infringement or revocation or no declaration is filed, the appropriate Head of Examination Group should be consulted.

Initial action

All offers to surrender are processed electronically on PDAX. A message will be sent by Index and Scanning to the Litigation mailbox when the offer to surrender has been scanned. On receipt of an offer to surrender, the A3 will:

  • enter the application in the post-grant SharePoint list and enter the Section of the Act on the front page of the dossier (s29)
  • make a free text entry on OPTICS using REG ENT (see chapter 25 Annex 1)

18.05

For paper cases attach a request for index and scan to the application and send it to the index and scanning section. Once scanned a message will be sent to the Litigation mailbox.

Formalities

18.06

Deleted

Formalities checks

18.07

The offer to surrender should be checked to ensure the following details are present:

  • the patent number
  • the proprietors full name and address
  • the relevant section of the act
  • an Address for Service in the UK, an EEA state or the Channel Islands
  • signature
  • contact name and telephone number

18.08

The A3 should check the relevant details against the OPTICS print. The A3 should also check that no section 72 or section 73(2) action is outstanding. If an outstanding section 72 action is found, the case should be referred to the Head of Examination Group of the subject matter. If an outstanding section 73(2) action is found, reference should be made to MOPP 73.09 and 73.11.

The A3 will create, a minute in PDAX, then create and send a “PSM – S29 outstanding revocation” message to the DD.

Inital Journal advert and subsequent action

18.09

Once all the requirements have been met, a Journal advert should be prepared as follows:

Section 29
Section 29
Surrender of patent
Offer to Surrender

Any person may give notice of opposition to the surrender of the following patent(s) by filing a Patents Form 15 within four weeks from the date of publication of this Journal.

Patent number
Proprietors names
Title
Application filed on xxxxxxxx

Advert is created and imported using manual import (doc code is ADVERT)

18.10

The proprietor/attorney should be sent a letter (see Annex 1 - Letter re Journal advert) informing them when the advert will appear in the Journal and advising them of the four week opposition period. A file-note should be prepared as follows:-

File Note Formalities complied with. O/L issued on XX.XX.XX informing proprietor/attorney of advert in Journal dated XX.XX.XX B/F XX.XX.XX (This date should be four weeks after the Journal date)

Letter created, locked and imported from PROSE

File note is created in PDAX. The case should be diaried for a week after it comes out of opposition. Once out of opposition check DIS FOR on OPTICS and the dossier for a Patents Form F15.

Offer to surrender accepted - No opposition filed

18.11

Once the opposition period has lapsed, and providing no opposition has been filed, a decision to accept the offer to surrender (see Annex 2 - Decision accepting surrender offer) should be prepared and sent to the relevant Head of Examination Group for signature authorization. The unsigned decision should be exported into word and manually imported onto PDAX (doc code is DECISION-LIT) and annotated accordingly, but not locked on prose so it can be edited.

The A3 will create, a Minute in PDAX, then create and send a “PSM – s29 Please can you authorise the decision.” message to the Group Head.

18.12

Once the decision has been approved by the Head of Examination Group, find the decision in Prose and date it. Effective date of the surrender being accepted is the date the acceptance of the offer of surrender will appear in the Journal. Then export the Decision into word and add the Group Head’s electronic signature. The unsigned decision should then Imported into PDAX.

18.13

A covering letter (see Annex 3 - Letter re acceptance of surrender offer) should be prepared. The letter and the decision should be sent to the proprietor/attorney.

Letter created, locked and imported from PROSE

18.14

A file note should be prepared as follows:

File Note

Decision issued on xxXXxx. Patent surrendered on xxXXxx (final advert Journal date)

File note is created in PDAX

Clear records

18.15

To clear records an advert should be prepared for the Journal. The postgrant SharePoint list should be updated to show the date of surrender. The surrender also needs to be registered on OPTICS. The clear records minute (see Annex 4 - Clear records sheet) should be created in PDAX

Final Journal advert

18.16

The following advert should be prepared for the Journal:

Section 29

Surrender of patent
Offer to surrender accepted by the comptroller

The effective date of the surrender of the patent is the date of this Journal.

Patent number
Proprietors name
Title

The date of the Journal advert should be entered on the clear records template (see Annex 4 - Clear records sheet). This date is important as it is the effective date of the surrender.

Advert is created and imported using manual import (doc code is ADVERT).

Post-Grant SharePoint List

18.17

Update post-grant SharePoint list with the date the surrender was accepted (date of PDJ) and the date of clear records.

18.18

(Deleted)

18.19

OPTICS should be updated to show that the patent has been surrendered and is therefore no longer in force.

  • Enter REG SUR in Next Action
  • Type in Authority (A3)
  • Type in the patent number
  • Enter the date that the offer to surrender has been accepted (final advert Journal date)
  • The entry will then appear for you to check, if correct enter Y, if incorrect enter N and repeat the above

18.20

Deleted

Opposition filed

18.21

If an opposition is filed on Patents Form 15, the case should be referred to the B3. The case will then become an inter partes case, and will be subject to Part 7 of the Patent Rules 2007.

The A3 will create, a minute in PDAX, then create and send a “PSM – S29 Opposition filed” message to B3.