Litigation Manual (online version)

Chapter 25: Making up new cases

Sections (25.01 to 25.16) last updated: March 2016

Patent cases

Introduction

25.01

Messages will be sent to the Litigation Team mailbox by Index & Scanning on a daily basis. The B3 Head of Litigation will allocate the work to the relevant team within Litigation Section. If it relates to a new case the team should record the case details in the SharePoint Lists, place the relevant label on the front cover of the dossier and make the relevant register entry. Where paper copies of documents are received in the office they will be sent to Index and scanning to be scanned into PDAX (see Annex 2 - Document Codes and Annex 3 - Request for Index & Scanning Sheet).

Types of cases

25.02

The types of cases are as follows Patents Form 2 and Form 4 – inter partes cases

  • Patents Form 15 – interpartes cases in respect of opposition to amendment (section 27(5)), correction (section 117(2)), surrender (section 29(2)) and cancellation of licence of right (section 47(6))
  • Patents Form 20 – correction (section 117) – A Form 20 may not be filed when a correction has already been allowed at the EPO
  • Patents Form 54 - correction of the translation of a European patent (UK) (Section 80(3))
  • Patents Form 30 - cancellation of licence of right proceedings (section 47)
  • Patents Form 16 – restoration cases
  • Patents Form 17 – request for an opinion
  • No form is required for:
    (a) request to surrender a patent (section 29);
    (b) amendment before the court (section 75);
    (c) a claim or counterclaim for revocation before the court;
    (d) amendments after grant (section 27);
    (e) revocation on the comptroller’s initiative sections 73(1), 73(2) and 73(1A)

Initial action

25.03

On receipt of a message relating to a Patents Form 2 or Patents Form 15 and associated papers, the B3 should update the ledger and message the B2 case officer. Where appropriate, the B2 will obtain the patent file or a copy of the patent specification and will arrange for it to be scanned or imported into PDAX (see 25.04 for further details)

Inter Partes cases

25.04

On receipt of the message from the B3, the B2 will:

  • Make a register entry to record the fact that proceedings have been filed.
  • Obtain the file from NMP (If the patent file is not a PDAX case). The file should be sent to Index & Scanning along with the other documents. If the file is an EP patent which is not at NMP see 25.14 for details.

Section 13, section 75 before the court, counterclaim for revocation before the court

25.05

An entry should be made in the inter partes SharePoint list for section 13 cases and in the ex-parte post grant SharePoint list for section 72 and section 75 cases before the court.

Main patents file, Ledger, OPTICS

25.06

The B2 should follow procedures in paragraphs 1.06.

25.07

Using the OPTICS function REG ENT (Menu no. 11), a free text entry is made, eg:

Application for revocation under Section 72 filed on …………..

A list of free text entries is included in Annex 1.

If the document filed is a Patents Form 4 then a different procedure is used when using REG ENT on Optics. After the free text entry instead of recording authority in the following screen the Form 4 should be noted together with the date of filing.

25.08

When the above actions have been completed, messages on inter partes cases will be sent to the B3/B2 and messages on ex-parte cases sent to the A3’s

Design Right cases

25.09

The files are similar to the inter partes files for pre-publication patent applications under section 8 and section 40 because the whole file is NOPI.

PDAX Action: Ensure that the public status of each document is set to NOPI

25.10

The details of each case will be entered in the Design Right ledger by the B3 and the LIT reference number will be allocated by Index and Scanning.

European Patent Files

25.11

In order to check whether a European patent file already exists, you should check the patents register (OPTICS). Use the DIS FUL function.

25.12

If the patents register shows the entry “file raised”, this means that a file has been made up. You should send for the patent file from Nine Mile Point by emailing PDD Filestore.

PDAX Action: Arrange for the documents to be scanned into PDAX. (see Annex 3 - Request for Index & Scanning Sheet)

25.13

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European Patent Files not made up

25.14

If an EP patent has not been raised, a copy of the granted specification should be electronically imported into PDAX from the espacenet website. Carry out a number search on espacenet and click on the PDF copy of the published ‘B’ specification. Choose to save the full document to your desktop and then use the manual import function to import it into PDAX (Doc Code – BDOC).

25.15

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25.16

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