Litigation Manual (online version)

Chapter 21: Revocation on the Comptrollers initiative Section 73(1)

Sections (21.01 - 21.30) last updated: March 2016

Introduction

21.01

This section relates to the revocation of patents on the Comptroller’s initiative under Section 73(1).

Action by Litigation officer A3

21.02

All S73(1) revocation actions are processed electronically on PDAX. A patent examiner will either send the patent file to Litigation Section asking for revocation action to commence in respect of the patent or if the case is already on PDAX, he will send a message to the Litigation Team Mailbox. The examiner may cite, for example, a published GB application or a published European patent (UK) application as being in conflict with the relevant GB patent.

For cases not yet on PDAX, the A3 will :

  • arrange for the application to be indexed and scanned as a PDAX case.

The new case will be placed by index and scanning in the Ex parte team mailbox to be actioned by a member of the ex parte team.

21.03

The A3 will also need to:

  • enter the application on the Exparte Post Grant SharePoint List, the filing date is the date of the minute sent by the examiner to initiate proceedings under Section 73(1).

21.04

A print relating to the European patent (UK) should be obtained via the Online European Patent Register (Register Plus). You should check that:

a) the opposition period of 9 months has elapsed since the grant of the patent
b) there is no opposition to the grant of the European patent (UK)
c) the European patent (UK) has designated GB status
d) there are no requests made for central revocation of the European patent before the European Patent Office under EPC Article 105a. This allows the proprietor to request that their patent is revoked in all contracting States in which the patent is in force (see MoPP 73.10)
e) the specification on PDAX is the latest version using Register Plus and there are no central limitation proceedings ongoing. If proceedings are ongoing, proceed as follows;

EPC 2000 - Central Amendment Process

Following the introduction of the central limitation process, an EP patent may now be amended centrally at the EPO or in each individual contracting state. On receipt of a new S73(1), the online European Patent Register should be checked to determine whether there is a request to centrally limit an EP (UK) patent. If so, you need to obtain a copy of the amendments filed at the EPO and forward these to the examiner. The examiner will consider whether the amendments, if allowed, remove the conflict. If so, the examiner may stay the S73(1) action pending the outcome of the central amendment. If the amendment is not allowed or does not remove the conflict, the S73(1) action may proceed.

A minute should be prepared and referred to the examiner as follows:

On checking the EPO register, it appears that an application has been filed to amend the patent centrally at the EPO. The amendments are available to view on the dossier. Please consider, if allowed, whether these amendments remove the conflict. If so, please confirm that you wish to stay the S73(1) action pending the outcome of the centrally filed amendment. The register will be checked regularly to monitor the progress of the amendment. If the amendment does not remove the conflict, please confirm that you wish to proceed with the S73(1) action.

The A3 will create a minute on PDAX, then send a “PSM - S73(1) Central amendment filed” message to the examiner.

If the European patent (UK) has lapsed since grant, revocation action should continue (see MOPP Section 73). If an opposition to the European patent (UK) has been filed at the European Patent Office (check via EPOline), the case should be referred to the originating examiner with a minute.

The A3 will create a minute on PDAX, then send a “PSM - S73(1) EP in Opposition” message to the examiner. In most cases, a view will be taken on whether to stay the S73(2) action pending the outcome of the EPO opposition proceedings.

The A3 should also check that any GB patent the examiner wishes to revoke is in force by using the OPTICS function DIS FUL. If the patent is not in force, refer the case to the originating examiner as there was a period of double patenting in place.

The A3 will create a minute on PDAX, then send a “PSM - S73(1) Patent not in force” message to the examiner. If all formalities have been complied with, an Official Letter PL2 (Annex 2 - S73(1) (PL2)) should be issued to the patentee allowing two months for a response.

A file note should be prepared as follows:

PL2 issued on ………… (insert date of PL2), B/F to ………….. (insert date - 4 months from date of PL2, and always to the nearest Wednesday).

The case should be diarized accordingly.
Update Diary EX2.

Letter created, locked and imported from PROSE.
A File note is created on PDAX.

21.05

An OPTICS free text entry should be made using the function REG ENT. The entry should read:

Section 73(1) action initiated on (date of PL2) in view of xxxxx.

EP (UK) citations

21.06

If the examiner cites a published European patent (UK) application, the A3 should proceed as above except:

a check should be made to ensure that the citation designates GB on either the OPTICS DIS FUL print-out or the EPOLINE (European Register) print-out.

a PL1 letter (see Annex 1 - S73 (1) (PL1)) should be issued if the citation is a European patent (UK) application which was originally cited before grant but then deferred as a citation because the priority document was not available. If you have any doubts about this, you should consult the appropriate examiner.

Letter created, locked and imported from PROSE.
File note is created on PDAX.

Response to Official letter PL1/PL2

No objection to revocation

21.07

If a response is received to the PL1 or PL2 stating that the patentee has no objection to the revocation of the patent, the letter should be scanned onto PDAX. A Decision 3a (see Annex 6 - Decision 3a (Agree to revocation)) should then be prepared for the appropriate Head of Examination Group.

The A3 will create a minute on PDAX, then send a “PSM – Dec 3a to authorise” message.

Once authorisation is received from the group head, an electronic signature can be applied to the decision. The decision should be dated and issued to the patentee with official letter DNL1 (see Annex 4 - DNL1 (Appeal period)). A file note should be prepared as follows:

Decision issued on ……………. (date of Decision). Patent revoked. Clear records.

Letter created, locked and imported from PROSE.
File note is created on PDAX.

Decisions are created using Word templates and applying the appropriate electronic signature. Electronic signatures can be located on SharePoint.

For clearing records see 21.25 – 21.27

If a response is received to the PL2 that states the patentee has applied to centrally revoke at the European Patent Office, no action under Section 73(1) is necessary. Once we have received confirmation that the EP patent has been centrally revoked, notify examiner.

Once the examiner has agreed that there is no conflict under Section 73(1), issue letter S73 EPOREV (see Annex 16 - S73 EPOREV Centrally revoked at EPO).
For clearing records see 21.25 – 21.27

21.08

[Deleted]

Disagreement that the patents are in conflict

21.09

The patentee may disagree with the examiner’s view that the patents are in conflict. In such circumstances, observations will usually be provided to support this view. The observations should be referred to the originating examiner with a suitable minute. If the examiner allows the observations, Decision 2a (see Annex 7 - Decision 2a (Observations allowed)) should be prepared for the Head of Examination Group. The A3 will create, a minute on PDAX, then send a “PSM – Dec 2a to authorise” message. Once authorisation is received from the group head, an electronic signature can be applied to the decision. The decision should be dated and issued to the patentee with official letter DNL1 (see Annex 5 - DNL2 (No appeal period)). A file note should be prepared as follows:

Revocation action under S73(1) not proceeded with on (date of clear records)

Letter created, locked and imported from PROSE.
File note is created on PDAX
Decisions are created within Prose using Word templates and applying the appropriate electronic signature. Electronic signatures can be located on SharePoint.

Clear records

An OPTICS and journal entry should be prepared to reflect the fact that revocation has not taken place. Using REG ENT on OPTICS, a free text entry should be made as follows:

Section 73(1) action initiated on (date of PL1/2) in view of ……….. not proceeded with on (date of decision)

The Exparte Post Grant SharePoint List should be updated by entering against the file reference number, Not proceeded with on (insert date of decision) and the date of clear records.

A Journal entry should be prepared as follows:-

Revocation action under Section 73(1) not proceeded with on (date of decision).

Advert is created in Word, imported on PDAX using manual import (doc code is ADVERT) and is uploaded to the weekly PDJ Live on SharePoint.

If the observations are not allowed, the examiner will issue further instructions as to how you should proceed in an examination report. This report is then included in an exam letter. The proprietor should also be provided with the opportunity to file amendments to overcome S73(1) conflict. (see Annex 14 - S73EX S73 Exam letter).

Patent to lapse or be surrendered

21.10

The patentee may state that he is either: * allowing the patent to lapse due to non-payment of renewal fees, or * that he proposes to surrender the patent

It would appear that neither of these options is prima facie allowable because both patents would have been granted for a period of time. The MOPP Section 73.09 indicates that once revocation action has started, it should normally continue even though the patent may have lapsed or an offer to surrender has been made. The case should be referred to the originating examiner with a suitable minute. The examiner will usually ask for a letter to be issued to the patentee pointing out these facts and offering a hearing.

The A3 will create minute on PDAX, then send a “PSM - S73(1) request to lapse/surrender” message to examiner.

Amendments allowed instead of revocation

21.11

The patentee may submit proposals to amend the patent in order to remove any conflict.

21.12

When proposals for amendment of a GB patent are received in response to revocation action under Section 73(1), the amendments should be referred to the examiner. The examiner will consider whether the proposed amendments are acceptable or not. If they are not acceptable, the examiner will issue further instructions as to what action should be taken in an examination report. This report is then included in an exam letter. The proprietor should be provided with a further opportunity to file amendments to overcome S73(1) conflict. (see Annex 14 - S73EX S73 Exam letter).

The A3 will create a minute on PDAX, then send a “PSM – S73(1)
Amendments filed” message to examiner.

21.13

If the proposals for amendment are prima facie allowable but are extensive, the examiner may request that amendments are made throughout the whole specification in order to achieve consistency within the specification in order to conform.

The A3 is then instructed by the examiner to issue letter to proprietor for further amendments. (see Annex 12 - S73FS2 Fresh specification conformity).

If the proposals for amendment are acceptable by the Examiner, but require a freshly typed specification in order for publishing to produce a C spec, letter S73FS1 is issued (see Annex 13 - S73FS1 Request for fresh specification).

If the proposals for amendment are acceptable, use the assemble and enhance function to apply the amendments to the B specification. The description, claims and drawings annotated “P” and “working copy” are copied from PREGRANT into the LITIGATION section of the dossier. The amendments are then applied using the enhance and assemble functions. In order to identify the amended sections of the specification, they are annotated “C” and “For publishing purposes” along with the sections not amended.

The references to “P” and “working copy” of the copied documents are deleted. This enables publishing section to extract all the documents required to produce a “C” spec. Decision 1 (see Annex 8 - Decision 1 (Amendments allowed)) should be prepared for the appropriate Head of Examination Group.

If both the GB and the EP patents require amendment in order to remove any conflict , the GB patent is amended under S73(1) and the European patent that it is in conflict with is amended under S27. The amendment under S73(1) is stayed pending the expiry of the S27 opposition period. On expiry of the opposition period, prepare Decision 1a (see Annex 10 - Decision 1a (Amendment to G8 & EP/UK)). For procedures on amendment under S27 see Chapter 17.

Certificates and decisions are created using Word templates and applying the appropriate electronic signature. Certificates and electronic signatures can be located on SharePoint.

Create a minute on PDAX, then send a “PSM – S73(1) Dec 1/1a and CERT to authorise” message.

Once authorisation is received from the group head, an electronic signature can be applied to the decision and certificate. The certificate is imported using manual import (doc code is CERTIFICATE).

21.14

The decision and certificate should be dated and the decision issued to the patentee together with Official Letter DNL2 (see Annex 5 - DNL2 (No appeal period)). A file note is prepared as follows:-

Decision issued on (date of decision). Patent amended. Clear records.

Letter created, locked and imported from PROSE.
File note is created on PDAX.

21.15

Clear records

An OPTICS entry should then be made. From the Revocation Section menu select item 7 – amendments allowed – type in the file number and then select item 4 – under Section 73 which will prompt you to insert the date of the decision. When prompted, use A3 as authority for the entry.

21.16

A Journal entry should be prepared as follows:

Specification amended under Section 73(1), on (date of decision).

Advert is created in Word and imported using manual import on PDAX (doc code is ADVERT) and is uploaded to the weekly PDJ Live on SharePoint.

21.17

The Exparte Post Grant SharePoint List should be updated by entering against the file reference number, Patent amended on (date of decision) and the date of clear records.

21.18

Following this, the case can be referred to Publishing Section for the amended specification to be published.

The A3 will create a detailed minute on PDAX (see Annex 11 - Publishing referral template), then send a “PSM – S73(1) Produce C Spec and see CERT” message to the Publishing Team mailbox.

No response to Official Letter PL1/PL2

21.19

If, after the two month period allowed for response to the Official Letters PL1/PL2, no reply has been received, Official Letter PL4 (Annex 3 - S73(1) (PL4)) offering a hearing should be issued, specifying a 21 day period for reply. Diary EX2 should be updated. A copy of the PL4 should be placed on file.

A file note should be prepared as follows:

No reply received to PL1/PL2 issued on (date of PL1/2) PL4 issued on (date of PL4) B/F to …………………..

Letter created, locked and imported from PROSE.
File note is created on PDAX.

Request for a hearing to Official Letter PL4

21.20

The patentee may reply that he would like a hearing. If this is the case, a hearing will need to be arranged by the Hearings Team. Following the hearing, a decision will be written by the hearing officer and issued. If the patent is revoked see 21.24 – 21.27.

To refer to the hearing team, create a minute on PDAX, then send a “PSM – set up hearing” message to the hearings mailbox.

The Hearings Clerk will diary the expiry of the appeal period and will notify the A3 case worker accordingly.

The A3 will then clear records following the expiry of the appeal period.

No response to Official Letter PL4

21.21

If no response is received and the B/F period has expired, Decision 5 (see Annex 9 - Decision 5 (No reply to PL2 or PL4)) should be prepared for the appropriate Head of Examination Group with the following minute:

No reply has been received to …………………. (insert PL1/PL2 as appropriate) or PL4. Decision 5 prepared. Please can you authorise your electronic signature can be applied to the decision.

Decisions are created using Word templates and applying the appropriate electronic signature. Electronic signatures can be located on SharePoint.
Create a minute on PDAX, then send a “PSM – Dec 5 to authorise” message to the Head of Examination Group.
Once authorisation is received from the group head, an electronic signature can be applied to the decision

21.22

[Deleted]

21.23

The decision should be dated and issued to the patentee together with Official Letter DNL1 (see Annex 4 - DNL1 (Appeal period)).
Letter created, locked and imported from PROSE.

21.24

A file note should be prepared as follows:

Decision issued on ……………. (date of Decision). Patent revoked. Clear records.

File note is created on PDAX.

Clear records

21.25

An OPTICS entry should then be made. From the Revocation Section menu, select item 16 – Register Revocation – type in the patent number and then select the section of the act, insert the date of the decision and use A3 as authority for the entry. If, when registering the revocation of the

patent, it is found that the patent has lapsed, the case should be referred to the B3, who will change the status of the patent so that it can be revoked.

The A3 will create a minute on PDAX, then send a “PSM – Patent Ceased” message to B3.

21.26

A Journal entry should be prepared under the following heading as indicated:

Section 73 Revocation on the Comptroller’s initiative Patent revoked under Section 73(1)

Patent Number Proprietor’s Name Title Patent revoked on (date of Decision)

PDJ Advert is created and imported using manual import on PDAX (doc code - ADVERT) and is uploaded to the weekly PDJ Live on SharePoint.

21.27

The Exparte Post Grant SharePoint List should be updated by entering against the file reference number, Patent revoked on (date of decision) and date of clear records.
File note is created on PDAX.

Extensions of Time

21.28

S117(B) of the Patents Act 1977 provides for an additional automatic extension of two months for periods specified by the Office. This may be applied retrospectively. Most of the requests for extensions of time relate to proposed amendments. These extensions of time may be allowed with the examiners discretion.

21.29

Where an automatic extension of time has been applied and then a further extension of time is received the request is referred to the originating examiner, who will consider it on its respective merits. It should be remembered that Section 73 cases are ex parte. Therefore no other parties are involved or need to be consulted.

The A3 will create a minute on PDAX, then send a “PSM – S73(1) Extension of time request” message to DD.

21.30

Once an extension of time has been granted, this should be confirmed in writing and a new deadline for a response set. (see Annex 15 - S73EOT Extension of time)

Letter created, locked and imported from PROSE.
File note is created on PDAX.