Litigation Manual (online version)

Chapter 24: Section 117 corrections of errors

Sections (24.01 - 24.94) last updated: March 2016

Introduction

24.01

Section 117 concerns the correction of errors in specifications and in other documents filed in connection with patents and applications for patents. Prescribed conditions are set out in the Patents Rules 2007. Section 117 relates solely to the correction of errors in documents and not with procedural omissions. Rule 105 relates to corrections to the specification and Rule 49 relates to corrections to the bibliograph. Section 117 does not cover the failure to file a document within a prescribed period or correcting the register or documents filed at the office in connection with the register. This is an action undertaken by Assignments Section under Section 32 and Rule 47.

24.02

Corrections to EP and GB patents are processed electronically on PDAX. On filing a request to correct an EP or GB patent, the A3 enters the published patent number into PDAX in order to view the dossier for that patent.

24.03

If there is no dossier for the patent, contact Nine Mile Point to see if there is a paper file in existence. If an EP or GB paper case already exists, this is requested from Nine Mile Point and scanned onto the dossier along with the request for correction by Index and Scanning section. If no dossier exists send a request to Index and Scanning to set up a new dossier.

24.04

Any person may request the correction of an error in the register or in any document filed at the office in connection with registration. The request needs to be in writing on a Patents Form 20 for all correction requests, with the exception of address corrections where a letter alone would suffice. The Patents Form 20 is usually accompanied with a covering letter from the Attorney, along with sufficient information to identify the nature of the error and the correction requested. If the comptroller has doubts that an error has occurred, the may require evidence to support the request. When a request is filed to correct a specification of a patent, the request will not be granted unless the correction is obvious.

Formalities checks – Bibliograph and Specification corrections

24.05

On receipt of the request for correction under Section 117, the A3 should carry out formalities checks to ensure the requirements of the Patents Rules 2007 have been complied with. In order to make public the request for correction has been applied for at the Office, an initial advertisement for the Journal should be prepared in all cases. Any issues should be resolved via official letter with the applicant before the allowability recommendation is sent to the B2 or Head of Examination Group. Once any defects have been eliminated, the case can be referred to the appropriate Head of Examination Group for corrections to the specification or the B2 Litigation Manager for bibliograph corrections. The dossier should be minuted with any actions taken and the PDAX checklist should be completed in order to show your progress with the correction and manage the dossier efficiently. Has the patent been granted?

24.06

A request for correction cannot be actioned by Litigation Section until the granted patent has been published in the Journal or the EP Bulletin. The status of the patent should be checked on OPTICS.

GB cases

24.07

Obtain a DIS FUL print from Optics. This will show two dates in connection with the granting of the patent. The first relates to when the applicant was notified by the Formalities Section that the patent was to be granted. The second gives the date when the notice of the grant is published in the Journal.

24.08

If the request is filed before the first date i.e. no notification of a grant letter has been sent by Formalities, the request for correction should be referred to the appropriate Formalities Section. Litigation will only deal with post grant correction.

24.09

Where the request is filed between the two dates, the applicant should be informed that the request has been filed too early and that the Office will therefore stay the proceedings until the notice of grant has been published in the Journal. The request for correction will be taken to have been filed on the day the notice is published in the Journal and processed by the Litigation section.

EP cases

24.10

Similarly to a GB case, obtain a DIS FUL print from OPTICS. This will show the date the patent was published as granted in the EP Bulletin.

24.11

If the request is filed before this date, the applicant should be informed that the request has been filed too early and the Office will therefore stay the proceedings. The request for correction will be taken to have been filed on the date that the notice is published in the bulletin and processed by the Litigation Section.

Formalities- Bibliograph and Specification

24.12

The initial formalities checks are the same for both bibilograph corrections, to the front cover of the specification and specification corrections, to the main body of the patent specification or the patent granted title. The request for correction is checked to ensure:

  • the patent has been granted
  • the correction is filed under correction section at number 4 of the Patents Form 20(i)
  • is the individual applying for the correction the applicant/proprietor. If the request is not from the applicant/proprietor, refer the correction to the B2 to investigate who wishes to make the correction
  • the proprietor’s name and address is correct as shown on the register A current address for service (AFS) is provided in the UK, an EEA state or the Channel Islands. If the AFS provided does not match the register contact the AFS proposed on the F20 as the attorney may be dealing with the correction only rather than being the new AFS
  • is the F20 signed and dated with a contact name and number for reference
  • EP- Is GB listed as a designated county
  • EP- Has the 9 month opposition period expired. Check there are no opposition proceedings pending. EP- Is the patent centrally limited to the EPO
  • EP- check the request has not already been allowed by the EPO
  • is the specification on the dossier the latest version. Check there are no previous corrected specifications e.g. CDOC
  • is the correction clear
  • is it clear what was originally intended
  • does the correction go back to the date of filing
  • does the correction require evidence to support it, eg. the request contains sufficient information to identify the nature of the error and how it occurred
  • does the patent claim priority from another patent, or is part of a larger patent family
  • for corrections to the specification - the request identifies the proposed correction (usually shown in red as a ‘marked up copy’ of the specification) and reasons for the correction are clearly explained.
  • that any documents given as supporting evidence and not published in English are accompanied by a copy of a translation
  • the request is correctly applied for as a ‘correction’ and not an ‘amendment’
  • check no revocation action or appeals are outstanding

Formalities not complied with

24.13

If after the A3 has completed the formalities checks and they have not been complied with, a standard file note can be adapted and added to the dossier.

“Request for correction under s117 filed on xxxxx Formalities not complied with (brief summary of reason, e.g. EPO opposition period not expired/evidence requested to support correction to the proprietor’s name etc). O/L issued xxxx. Optics updated. Initial advert prepared for PDJ xxxx, dated xxxxx B/F xxxxxxx (to await reply)

Is the request an Amendment or a Correction

24.14

The request should be checked to see that the applicant has applied the term “correction” in the correct manner (see Chapter 17 for a description of what constitutes an amendment). If it appears that the application is an amendment rather than a correction, a minute should be sent to the appropriate team in order for them to process the request as an amendment.

New attorneys - different address to the register.

24.15

If the current address for service is different from the attorney supplied on the F20, a Patents Form 51 may be required. However, if the new attorneys are only authorised to act with regard to the correction only, no Form 51 is necessary. Only correspondence relating to the correction will be sent to the attorney named on the correction request and the address for service on the register will remain the same. However, if the new Attorney are proposed as the new AFS they will need to submit a Form 51 in order for register admin to correct the register and change the name of the AFS below the line.

Evidence

24.16

Evidence may be required to establish that the correction offered is what was originally intended. For bibliograph corrections, where a proprietor wishes to correct its name for example, the comptroller may request evidence. Evidence can take the form of a document from the appropriate Companies House registration authority, such as a certificate from Companies House for an incorporated company in the UK, a State Certificate for the USA or an extract from the Handels register for Germany.

24.17

If the comptroller is not satisfied with a correction, he may require evidence demonstrating that the applied correction was what was originally intended and goes back to the time of filing. A copy of the applicant’s instructions to his Attorney, for example, or sworn evidence, may suffice.

24.18

Where insufficient evidence has been filed, or copies of documents referred to on the request have not been supplied, the applicant should be asked to file further evidence or the missing documentation, in accordance with the Patents Rules 2007.

24.19

Generally, evidence will not be required to correct a spelling error, transposition of a name or minor clerical or typographical errors. The A3 may proceed to apply the appropriate corrections and send the correction request to the B2 for OPTICS actions and authorisation to apply the electronic signature to the appropriate certificate.

24.20

If evidence is required, an official letter is issued.

PDAX:- Letter created and imported from Prose (see Annex 4 - S117D). Minute the dossier appropriately.

EPC Central Limitation Process

24.21

A patent may be centrally limited at the EPO. On receipt of a new S117 the European Patent register must be checked to determine whether there is a request to centrally limit the patent (https://register.epo.org/regviewer). The applicant will be asked whether they wish to stay the UK proceedings until the conclusion of the central limitation process or whether they wish to proceed. An official letter is created in Prose (Annex 2 - S117 CPC) and issued to the Attorney. A copy is also uploaded on to the dossier and sent to Proprietor. If a European patent (UK) has already been corrected before the EPO, the comptroller will not consider the request for an identical correction. The A3 will issue Letter (see Annex 1- S117 EPO ALLW) to the Proprietor. The request for correction under section 117 will be treated as ‘not proceeded with’. PDAX:- Letter created and imported from PROSE EP 9 month opposition period

24.22

A European patent (UK) has a nine month opposition period during which opposition proceedings may be filed and the patent may be amended or corrected before the EPO as part of such proceedings. The opposition period commences once the patent is mentioned in the European Patent Bulletin as granted. This date can be found on the OPTICS. The opposition period is 9 months from the date of grant. An official letter is issued to the attorney who will have 2 months to respond.

PDAX:- Letter created and imported from PROSE Minute created and corrections Diary updated

Opposition Period has not expired and/or opposition proceedings are pending

24.23

Where the opposition period has not yet expired, and/or, opposition proceedings are pending a Letter (see Annex 3 - S117E) will be issued. The applicants will be given two options as to how they wish to proceed. The applicant will be given option (a.) and option (b.) as follows: a. staying the request until the opposition period has expired or the opposition proceedings have been settled, or b. proceeding with the request to correct under Section 117 on the understanding that the correction may be negated as a result of subsequent amendment before the EPO.

24.24

An applicant may write to inform the office that they are aware of the situation but wish to proceed regardless. As per our Letter applicants are informed that the corrections may be negated as a result of subsequent correction before the EPO. They will advise us of their choice in proceeding with the request or staying the request until the opposition period has expired.

24.25

Section 117(B) of The Patents Act 1977 provides for an additional automatic extension of two months, for periods specified by the Office. The corrections diary should also be updated. Response to official letter - opposition period

24.26

The response to the Official letter is scanned onto PDAX by Index and Scanning and then the case is referred to the Head of Examination Group/B2 with one of the following minutes according to the nature of the reply. If the applicant wishes to stay:

“Attorneys have replied to Official Letter dated XX.XX.XX and have asked to stay the proceedings till the opposition period has expired or the proceedings have been settled. I shall diary the case until the opposition period has expired or until the opposition proceedings have been settled”.

“Correction stayed” and message. Update correction diary.”

Send “PSM” message to Head of Examination Group/B2.

24.27

The EP Register should be checked every 6 months for updates on the opposition proceedings. Once the opposition period has expired, the case should be referred to the Head of Examination Group (for specification corrections)/B2 (for bibliograph corrections) with a minute as follows:

“Case referred for report under Section 117 of the 1977 Act (see para 117.14 MOPP)”.

If the applicant wishes to proceed:

“Attorneys have replied to Official Letter dated XX.XX.XX and have asked to proceed with the correction. Case referred for report under Section 117 of the 1977 Act (see para 117.14 MOPP)”.

Applicant has applied to the EPO for Correction

24.28

Where the request is a correction of bibliograph details and the applicant has already applied to the EPO for the correction, the request should be stayed pending the outcome. If the request is successful, the correction will apply to all designated states and be actioned by our Register Admin Section via tape transfer, this will appear as a below the line entry. The request should be treated as not proceeded with as it has already been allowed at EPO, on the directions of the B2.

Outstanding revocation action

24.29

Whilst revocation action of a patent is still pending, it is for the comptroller to decide whether the application to correct under section 117 is to be stayed or resolved (see 117.16 MOPP). The case should be referred to the Head of Examination Group/B2 indicating that there is outstanding revocation action and asking for directions as to how to proceed.

Inventorship

24.30

If a correction request is surrounding inventorship, the proceeding could be processed under S117 as a correction request. However, it may relate to Rule 10(2). Rule 10(2) cases are referred to the B3 as an inter partes case which is relating to a later discovery of an individual’s inventorship contribution.

Assignment

24.31

If there is an assignment on a patent it will be dealt with by Register Admin. A Section 32 is filed in order for the patent to be transferred to another proprietor name for example, as a result of the patent being sold. If there is a correction request and an assignment filed on a patent at the same time, the correction will need to be processed first. For example if the correction is to the proprietor name, the name will need to be corrected to show on the register as the correct name, before it can be assigned to a different proprietor name. An assignment does not go back to the date of filing, therefore cannot be changed above the line. An assignment will show below the line on the register as a register entry.

Initial Actions

24.32

There are two initial actions that must be completed on receipt of a correction under S117 request. In all cases where formalities have or have not been complied with, an initial OPTICS entry and an initial advert must be completed in order to make public that the Office has received a correction request under S117.

Initial Advert

24.33

Prepare an initial advert (see Annex 11 - Initial Advert)

Optics

24.34

Complete an initial OPTICS entry as follows, using REG ENT facility: Request for correction under S117 filed on xx.xx.xxxx.

Formalities complied with

24.35

After the formalities checks have been carried out and all formalities have been complied with, the A3 can proceed to initial actions. A standard file note can be adapted and added to the dossier: Request for correction under s117 filed on xx.xx.xxxx. Formalities complied with. Optics updated. Initial advert prepared for PDJ xxxx, dated xxxxxxxx.

Referred to B2 for consideration.

Referring the Request

24.36

Corrections to the bibliograph details should be referred to the B2. A new ADP number should also be obtained from OPTICS and added to the minute to the B2.The minute sheet should be prepared as follows:- “Allowability Recommendation ADP: XXXXXXXXX Dear….. Please see new correction under S117 filed on xx.xx.xxxx. The request is to correct the Proprietor/Inventors details” From: To: The evidence filed to support the request is in the form of a statutory declaration/ witness statement etc. I consider the evidence supplied to support correction allowable under S117. Case referred for report under MoPP 117.14 and for consideration on whether or not to advertise for opposition. Please update Optics above the line should everything be in order.”

24.37

Corrections to the specification details should be referred to the Head of Examination Group. The minute sheet should be prepared as follows:-

Case referred for report under S117, for your consideration. Please advise if you require a S117 opposition advert, (MoPP 117.07 refers).

The Head of Examination Group tor may consider the corrections and report as to whether further corrections are required. An official letter will be issued in order to provide further corrections. The Head of Examination Group will then consider the additional corrections along with the proposed corrections. (See Annex 6 - S117EXAM)

Prima facie allowable

24.38

The report will state whether the correction is considered prima facie allowable and will advise whether it needs to be advertised in full. If advertisement is not necessary the B2 should update OPTICS, allowing the correction and then refer the case back to the Ex-Parte Team to produce a certificate, apply the B2’s electronic signature (see Annex 18 - Certificates table) and clear records (see Annex 17 - Clear records table). If the correction is referred to the DD the A3 will apply the correction to the relevant documents.

24.39

Where the corrections needs to be advertised, an advert is prepared for the Journal with the heading Request now open to Opposition An example of an advert of a bibliograph correction can be seen in (Annex 13 - Bibliograph Opposition Advert). The advert is placed in the Journal folder on SharePoint and a copy placed in the Journal file. The opposition period will last four weeks from the date of the published advert. Official letter (see Annex 5 - S117A) and issued to the Attorney. Date advert in PDJ and minute the dossier.

PDAX:-Letter created and imported from PROSE Advert is created and imported using manual Import (doc code is ADVERT)

24.40

If opposition is filed refer to B2. If no opposition is filed proceed to request the B2 to update Optics with the allowed bibliograph details. A minute should be prepared as follows, “Opposition advert prepared for PDJ xxxx dated xxxxxx. No opposition has been filed. Please update optics above the line should everything be in order. Please confirm I can now attach your electronic signature to the appropriate certificate and proceed to clear”.

24.41

If no opposition is filed proceed to minute the Head of Examination Group with regard the specification correction. A minute should be prepared as follows, “Opposition advert prepared for PDJ xxxx date xxxxxx. No opposition has been filed therefore I have applied the corrections to the specification manually (page reference)/ replacement page(s)/ replacement specification/ using enhance. Please confirm I can now attach your electronic signature to the appropriate certificate”.

24.42

Once the Correction has been authorised the appropriate certificate has to be applied and uploaded on to the dossier.

Apply corrections & certificates

24.43

On a GB patent, the correction will apply to the front page of the A and B specification. On an EP patent, the correction will apply to the front page of the BDOC only.

For corrections to GB bibliograph details

24.44

For GB cases, the Publishing Section of the Clear records sheet should be completed with actions taken. A request is made for an erratum. Publishing Section should be informed of the precise nature of the correction e.g. the original and the corrected name of the proprietor should be given. A detailed minute should be prepared for Publishing (see Annex 19 - Minute to publishing).

24.45

For corrections to the bibliograph details on a GB patent, the abstract and the A Pub drawings annotated “P” and “Working Copy” are copied from the Pre-Grant part of the dossier into the Litigation section of the dossier. The publication status is then changed to “C”. This enables Publishing section to extract all the documents required to produce an erratum. It should be noted that the abstract and drawings are required for the electronic publishing process only and will not be corrected as part of the corrections to the bibliograph (see Annex 17 - Clear records table and Annex 18 - Certificates table).

24.46

The certificate is completed and the electronic signature applied. This should then be pasted into a Word document and imported into the dossier using manual import (doc code CERT and annotate as ‘correction allowed certificate’).

For corrections to EP bibliograph details

24.47

For corrections to the bibliograph details on an EP patent, if the corrections cannot be applied using enhance or assemble, a copy of the front page of the BDOC should be printed from the dossier and the corrections applied manually or using enhance function on PDAX. The corrected front page of the BDOC should then be scanned onto the dossier by Index and Scanning Section.

Proprietor notified correction allowed

24.48

A letter will be issued by the Publication Section to notify the proprietor that the correction is allowed. If there is no publishing action required to the allowed correction, issue letter (see Annex 9 - S117 ALLOWED).

Clear records – correction to bibliographic details allowed

Case referred to Publishing Section

24.49

For GB cases, the corrected Abstract and Drawings from the Pre-grant part of the dossier on PDAX should be annotated “For Publishing Purposes”. A detailed minute should be prepared for publishing (see Annex 19 - Minute to publishing). For EP cases, the corrected BDOC should be annotated “For Publishing Purposes”. A detailed minute should be prepared for publishing (see Annex 19 - Minute to publishing).

Formalities complied with - corrections to specification

24.50

The following procedure relates to a correction to the specification where all formalities have been complied with. Initial Advert

24.51

Once all formalities have been complied with, an initial advert (see Annex 11 - Initial Advert) should be prepared for the Journal. The advert should be copied to the Journal folder on SharePoint and a copy placed in the Journal file and a copy should be uploaded on to the dossier. PDAX:- Advert is created in Word and imported using manual import (Doc code is ADVERT. Annotate Initial advert PDJ xxxx dated xxxxxxx.

Optics

24.52

Complete an initial OPTICS entry as follows:

“Request for correction under S117 filed on xxxxx”

Referring the Request

24.53

The request should be referred to the appropriate Head of Examination Group. Firstly a file note should be added to the dossier to show that the formalities have been complied with. File note should be prepared as follows: Request for correction under S117 filed on xxxxx. Formalities complied with. Optics updated. Initial advert prepared for PDJ xxxx dated xxxxxx

Referred to Head of Examination Group for consideration

24.54

The request should then be referred to the appropriate Head of Examination Group in the form of a minute. When specifying which Head of Examination Group to minute, check OPTICS for the group classification, if there are multiple classifications always use the first one as this is the primary classification.

Minute to Head of Examination Group and (name) the person for the attention of Message Title: Request for correction Sub title: S117 Specification correction

Message to Head of Examination Group- To group EXxx and the Head of Examination Group’s name Minute: PSM: S117 Specification correction

24.55

The request will be considered by the Head of Examination Group according to the tests set out in Section 117 117.09 of the MOPP and the Patents Rules 2007 i.e. that “the correction is obvious in the sense that it is immediately evident that nothing else could have been intended than what is offered as the correction”. The request is considered against a twofold test:

  • is it clear that there is an error, and
  • if so, is it clear what is now offered is what was originally intended

24.56

If the correction is allowed, it may be advertised for opposition as the rights of a third party could be adversely affected (see MOPP 117.23); otherwise advertisement for opposition may not be considered necessary.

Opposition filed following advertisement

24.57

Notice of opposition should be received on Patents Form 15 and filed within four weeks of the date of the full advertisement in the Journal, of the prima facie allowable corrections. This period may not be extended.

24.58

Upon receiving any opposition, the case should be referred to the B2, with an appropriate minute. The opposition initiates inter partes proceedings.

Please see opposition filed on xxxxxx for your consideration

PDAX:- Create a minute in PDAX and send a “PSM – Opposition filed” message to DD

Correction to specification prima facie allowable

24.59

The Head of Examination Group’s report will state whether the correction is considered prima facie allowable and will advise whether it needs to be advertised in full. If advertisement is not necessary, proceed to correct the specification.

24.60

Where the correction needs to be advertised, an advert is prepared for the Journal with the heading Request now open to Opposition An example of an advert showing a correction of a specification can be seen in Annex 12 - Specification Opposition Advert. The advert should be placed in the Journal folder on SharePoint and a copy placed in the Journal file. A copy also needs to be uploaded on to the dossier.

PDAX:- Advert is created in Word and imported using manual import (doc code is ADVERT Annotated as “Opposition Advert PDJ xxxx dated xxxxxxx.”(see Annex 12 - Specification Opposition Advert)

24.61

The opposition period will last four weeks from the date of the published advert.

24.62

A standard letter (see Annex 5) is sent to the applicant’s attorneys notifying the applicant of the date of the Journal advert and advising of the four week opposition period. A file note on PDAX should be prepared as follows:

“Correction allowable and advertised for four weeks opposition in PDJxxxx dated xx.xx.xxxx. O/L issued to attorney. B/F xx.xx.xxxx (4 weeks from the date of PDJ journal entry and add on a week for filing purposes- Corrections diary)”

PDAX:- Letter created, locked and imported from PROSE. (Doc Code- Letter- Lit) and annotate as Opposition advert PDJ xxxx dated xxxxxx

24.63

If opposition is filed refer to Head of Examination Group. If no opposition is filed proceed to correct the specification.

Refer the correction back to the Head of Examination Group, minute to be prepared as follows,

“Opposition advert prepared for PDJ xxxx dated xxxxxx. No opposition has been filed therefore I have applied the corrections to the specification manually/page reference/replacement pages/replacement specification/ using enhance. Please confirm that I can now attach your electronic signature to the appropriate certificate.”

Apply corrections and certificate

24.64

The corrected BDOC should then be scanned onto the dossier via the MFD printer.

24.65

For corrections to EP specifications

Apply the corrections to the BDOC specification either using replacement page(s) or replacement specification. If the corrections are minor they may be applied manually or using ENHANCE on PDAX. Once the correction is applied change the BPUB status to “C” and annotate “For Publishing Purposes”. Change the doc code to CDOC. Refer the correction back to the DD to authorise adding the electronic signature

24.66

For corrections to GB specifications

The corrections will apply to the BDOC only. Copy the DESC and CLMS identified with a “P” and annotated “Working Copy (WC)” and DRWGS identified with a “P” and annotated “Formal” onto the dossier and move to the Litigation part of the dossier. Apply the corrections to the description, claims or drawings using replacement page(s) or replacement specification. If the corrections are minor they may be applied manually or using ENHANCE on PDAX. Once the correction is applied change the BPUB status to “C” and annotate “For Publishing Purposes”. All documents are annotated “C” and “For Publishing Purposes” even if they haven’t been corrected. Publishing will require all the documents in order to produce a C spec. Refer the correction back to the DD to authorise adding the electronic signature.

24.67

If the corrections are extensive and no replacement page or specification has been filed, the A3 should request that one is filed see (Annex 7 - S117 REQSPEC). Any replacement specification should be checked by the A3 to ensure that the corrections made are the same as those allowed by the Head of Examination Group. Clearly mark the replacement pages and annotate as replacement pages and page number.

“Corrections applied to specification manually on pages xxxxxx/ corrections in the form of replacement pages xxxxxx/ corrections in the form of replacement specification/ using enhance. (Delete as appropriate). Please confirm that I can now apply your electronic signature to the appropriate certificate.”

Minute- Head of Examination Group- Specify Head of Examination Group. Message- Head of Examination Group (EXxx) and name Title- S117 Specification correction applied

Case returned from head of examination group with authorisation

24.68

Once a message is received from the Head of Examination Group, the appropriate certificate (Annex 18) should be dated with the date of clear records (Annex 17 - Clear records table) or in the case of a hearing, the date of the decision and a Head of Examination Group electronic signature applied. This should then be pasted into a Word document. and imported into the dossier using manual import (doc code CERT- annotate as Correction allowed certificate).

Clear records – correction to the specification allowed

24.69

Clear records action may be undertaken as follows. A final advert should be prepared for the Journal and the Ex-parte post grant SharePoint list and OPTICS updated appropriately. A minute (Annex 19 - Minute to publishing) is then sent to publishing to inform them of the corrected document.

Final advert

24.70

A final advert should be prepared for the PDJ. This advert should be copied to the Journal folder on SharePoint and a paper copy placed in the Journal file. The advert will appear in the Journal 3 weeks from the first Wednesday after the advert is prepared and submitted to publishing. PDAX:- Advert is created in Word and imported using manual import (doc code is ADVERT annotated as Final Advert PDJ xxxx dated xxxxxxx) (see Annex 14 - Final Advert Correction allowed).

Ex-parte post grant SharePoint List

24.71

The relevant entry in the Ex-parte post grant SharePoint list under section 117 should be updated to show the outcome of the request and the date of the clear records action. The entry should be annotated with the appropriate outcome and dated.

Optics

24.72

A free text entry should be made on OPTICS using the REG ENT option as follows:- Request for correction under Section 117 filed on xxxx allowed on xxxxxx

Case referred to Publishing Section

24.73

For GB cases, a minute should be prepared for publishing (see Annex 19 - Minute to publishing). requesting a C specification. If the C specification was corrected, then a C2 is requested.

24.74

For EP cases, the corrected BDOC should be annotated “For Publishing Purposes”. A minute should be prepared for publishing (see Annex 19). If the C specification was corrected, then a C2 is requested.

24.75

To refer a case to Publishing, create a minute in PDAX titled “S117 Correction allowed” and then send a message to Publishing titled “S117 Correction allowed”.

Correction not allowable

Corrections not prima facie allowable

24.76

The Head of Examination Group/B2’s report will give reasons why any correction or group of corrections are not regarded as allowable. These will be set out in a minute to the A3 who will then copy and paste them in the letter (Annex 8 - S117B) and sent to the applicant.

24.77

The letter is prepared with a formal heading and should include the Head of Examination Group/B2’s report together with his/her name and telephone number as follows: With reference to the above, the examiner (xxx ext xxx) reports that ……. (.insert report)

24.78

The file should be diaried for 2 months unless otherwise specified by the Head of Examination Group/B2. Diary should also be updated. PDAX:- Letter created, locked and imported from PROSE. File note is created in PDAX 24.79 Any further corrections received in response to the official letter should be scanned onto PDAX by Index and Scanning section and annotated with the date the corrections were filed. 24.80 The case should then be referred back to the Head of Examination Group/B2 with the following minute: “Attorneys have replied to the official letter dated xxxxxxxx and have stated in their letter dated …………… that …………… (insert summary of letter to help the examiner). For your consideration”

PDAX:- Create minute in PDAX and send “PSM – s117” message.

24.81

A new report will be produced and sent to the applicant until a set of corrections are considered prima facie allowable.

24.82

If an agreement cannot be reached, the Head of Examination Group/B2 will offer a hearing subject to advertisement of the proposed corrections. They will ensure it is clear that the allowability of the corrections have not yet been determined. An appropriate letter will be drafted by the Head of Examination Group/B2 and issued by the A3. If a hearing is subsequently requested, the case should be referred to the Hearings Clerk who will allocate a Hearing Officer. PDAX:- Letter created, locked and imported from PROSE. To refer to the Hearing Team, create, a minute in PDAX, send a “PSM – set up hearing” message Correction not proceeded with

24.83

A request may be considered but not proceeded with for the following reasons: * the applicant fails to file the request correctly * the request is an amendment rather than a correction * the applicant fails to respond to official letters * the correction is allowed by the EPO, and therefore already applies to the European patent (UK)

24.84

If the Head of Examination Group/B2 considers a request should be regarded as not proceeded with, they will import a minute onto PDAX advising that the applicant be informed and the Journal (see Annex 15 - Final Advert Correction refused) and Register updated.

24.85

The A3 should issue an official letter to the applicant informing them of the Head of Examination Group/B2’s decision. Records are now cleared.

PDAX:- Letter created, locked and imported from PROSE.

Withdrawal of a request

24.86

Any request to withdraw should be referred to the Head of Examination Group/B2 for consideration. The minute note should read as follows:

“Attorneys letter received on xxxxx. The attorneys wish to withdraw the request. For your consideration” PDAX:- Create minute in PDAX and send “PSM – S117 Withdrawal” message to Head of Examination Group.

24.87

If the withdrawal is allowed, the applicant should be informed by letter. Records are now cleared. PDAX:- Letter created, locked and imported from PROSE. File note is created in PDAX

Clear records – not proceeded with/not allowed/withdrawn

24.88

Once the applicant has been informed of the outcome of the request clear records action may be undertaken. An advert should be prepared for the Journal, the Ex parte post grant SharePoint List and OPTICS updated. The dossier should be updated with all actions taken.

Final advert

24.89

An advert should be drafted manually corresponding with the decision or directions of the Head of Examination Group/B2 (see Annex 16 - Final Advert Correction not proceeded with/withdrawn). The advert should be copied to the Journal folder on SharePoint and place a hard copy in the red journal file.

PDAX:- Advert is created in Word and imported using manual import (doc code is ADVERT).

Ex-parte post grant SharePoint List

24.90

The relevant entry in the Ex-parte post grant SharePoint list under section 117 should be updated to show the outcome of the request and the date of the clear records action.

Optics

24.91

A free text entry should be made on OPTICS indicating the outcome of the request. Using the REG ENT facility, type in wording corresponding to the outcome of the decision e.g.: Request for correction under Section 117 filed on xxxxxx not proceeded with/not allowed/withdrawn on xxxxxx.

Extension of time

24.92

Where official letters have been sent to the applicant for the correction, extension of time requests may be received. These should be referred to the Head of Examination Group/B2 with the following minute: The attorney by fax/letter on/dated xxxxxx has requested an extension of time. Please advise whether the request for extension is allowable.

PDAX:- Create minute in PDAX and send a “PSM – EOT request” message.

24.93

The applicant should be advised of the Head of Examination Group/B2’s decision and a note of the action taken added to the dossier.

PDAX:- Letter created and imported from PROSE (Annex 10 - S117 EOTALLW) File note is created in PDAX

24.94

An extension to the four week opposition period is not allowed.