Litigation Manual (online version)

Chapter 27: Clear records

Sections (27.01 to 27.17) last updated: January 2015

Introduction

27.01

Clear records are the final actions taken when case work proceedings are complete. EP and GB patents are cleared electronically on PDAX (Patents Document Access Exchange Management System).

Standard procedures - Ex parte proceedings

Register entry

27.02

Update as appropriate by using OPTICS (see ex parte Chapters 17 – 24).

Journal entry

27.03

Compile a final advert for the Patent and Designs Journal. The wording is normally in line with the corresponding register entry (see Chapter 26). The advert is manually imported into PDAX.

Sharepoint lists

27.04

Complete the result box e.g. allowed, not proceeded with, or revoked.

27.05

[Deleted]

Publishing action

27.06

For Sections 27, 75 and 117 proceedings you should inform Publishing Section of the changes required to the A, B and C printed specification as appropriate. For example you may want to correct bibliographic details for the applicant or inventor or there may be technical changes required to the specification.

The A3 will create, a minute in PDAX, then create and send a “PSM – Amendment/Correction allowed – please prepare a C specification, and issue an official letter accordingly” message to Publishing Section

27.07

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Inter partes proceedings - clear records after issue of an office decision

27.08

An Office decision is issued following a hearing or where the proceedings have been decided on the papers. The A3 Hearing Clerk will pass a copy of the decision to the B3 with clear records proforma.

Register entry

27.09

The B3 will make an entry on the register reflecting the outcome of the proceedings if necessary. The B3 will also amend the register if appropriate, for example if a proprietor or inventor needs to be added or removed.

Journal entry

27.10

A Journal entry is made in the Patent Journal. To ensure consistency the wording should be taken from the register entry made by the B3. The advert is manually imported into PDAX.

Electronic Ledger and spreadsheet

27.11

The Inter Partes SharePoint list should be updated to reflect the result of the proceedings and the date of the decision. The front cover of the dossier is labelled Precedent.

Publishing action

27.12

In order for the A and B patent specification to reflect the outcome of proceedings (see 27.08 above) Publishing Section should be requested to make the necessary changes. This will usually be done by the addition of an addendum slip or in the case of amendment, the request for a C specification.

The A3 will create a minute in PDAX, then create and send a “PSM – Amendment/Correction allowed – please prepare a C specification and send an official letter accordingly” message to Publishing Section.

27.13

[Deleted]

27.14

[Deleted]

Inter partes proceedings - other clear records

27.15

Where a case has been withdrawn, the B2 should update the register using Revocation Section menu - free text entry. The journal entry and Inter Partes SharePoint list should be completed. However there will be no need for any publishing action to be taken. The front cover of the dossier is labelled Precedent.

[Deleted]

27.16

[Deleted]

Multiple files

27.17

There may be a number of patent files linked to a case. Where this occurs each patent file should be cross – referenced to the other on the front cover of the dossier.