Tribunal Patents Manual (online version)

Chapter 23: Revocation on the comptroller's initiative Section 73(1A

Sections (23.01 to 23.30) last updated: September 2017.

Introduction

23.01

This section relates to the revocation of patents on the Comptroller’s initiative under Section 73(1A). Where an opinion has been issued which concludes that the patent in question lacked novelty or inventive step, then if the patent is clearly invalid, revocation action under section 73(1A) may be initiated. The patent cannot be revoked until either the period for requesting a review of the opinion, which is three months from the date of the opinion, has expired and no review has been requested or if a review has been requested, until after the decision on the review is made or, if there is an appeal against that decision, the appeal is determined and that decision and any appeal has upheld the opinion. However, action under section 73(1A) may be initiated during the period for requesting a review. Action should not be initiated if a review has already been requested.

Action by A3

23.02

Once the opinion has been issued, the A3 will commence formality checks as follows:

If the opinion relates to a EP(UK) patent

23.03

A print relating to the European patent (UK) should be obtained via the Online European Patent Register(Register Plus). The A3 will check that:

  • the 9 month EP opposition period has expired
  • no opposition to the grant of the patent has been filed
  • there are no opposition proceedings ongoing
  • the patent designates GB
  • there are no ongoing requests for central revocation of the patent 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)
  • there are no ongoing requests for central limitation of the patent (This allows the proprietor to request that their patent is amended in all contracting States in which the patent is in force). The latest version of the patent specification can be downloaded from Register Plus and imported into the dossier

If amendment proceedings are ongoing, the A3 will proceed as follows:

The A3 will obtain a copy of the amendments filed at the EPO and this should be forwarded to the appropriate group head (who handles the relevant subject matter), as per the minute below. The group head will consider whether the amendments, if allowed, mean that action under section 73(1A) is no longer justified. If so, they may choose to stay the S73(1A) action pending the outcome of the central amendment. If the amendment is not allowed or does not overcome the validity objection the S73(1A) action may proceed.

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

“Deputy Director / Head of Examination Group (Name) “Please see Opinion number (–/–) issued on (date). However 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 validity objection. If so, please confirm that you wish to stay the S73(1A) 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 overcome the validity objection, please confirm whether you wish to proceed with the S73(1A) action. If you do wish to proceed with section 73(1A) action, please specify which disclosures should be cited in our communication to the proprietor.

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

The A3 should set a deadline for response one month from the date that the minute is issued. If an opposition to the European patent (UK) has been filed, the case should be referred to the appropriate group head (who handles the relevant subject matter) with the following minute:

“On checking the EPO register, it appears that opposition proceedings are pending before the EPO. Please confirm whether you wish to stay the S73(1A) action pending the outcome of the proceedings. The register will be checked regularly to monitor the progress of the proceedings.

The A3 will create a minute on PDAX, then send a “PSM - S73(1A) EP Opposition proceedings pending” message to the group head.

The A3 should set a deadline for response one month from the date that the minute is issued. Note: If the European patent (UK) has lapsed since grant, revocation action should continue (see MOPP Section 73).

If the opinion relates to a GB patent

23.04

The A3 will check that the patent is in force and is not surrendered by using the COPS function DIS FUL. If the patent is not in force, the case will be referred as follows:

The A3 will create a minute on PDAX as follows:

“On checking COPS it appears that the patent is not in force/has been surrendered. Please advise how you wish to proceed”.

The A3 will then send a “PSM - S73(1A) Patent not in force surrendered” message to the group head (who handles the relevant subject matter).

Formalities complied with - referral to Head of Examination Group

23.05

The A3 will create a PDAX minute to the group head of the subject matter of the patent and request confirmation of whether or not section 73(1A) action should be initiated using the following minute:

Deputy Director / Head of Examination Group (Name)

“Please see Opinion number (–/–) issued on (date). Please advise whether action under section 73(1A) to revoke the patent should be initiated. If you do wish to proceed with section 73(1A) action, please specify which disclosures should be cited in our communication to the proprietor.”

The A3 will create the minute on PDAX and then send a “PSM - S73(1A) for consideration” message to the group head.

The A3 should set a deadline for response one month from the date that the minute is issued.

Response from Head of Examination Group

No Revocation action to be initiated

23.06

Where the group head responds by indicating that revocation action is not to be initiated, a report will be provided for the dossier. Upon receipt of the report, the A3 will ensure it is placed on PDAX. The A3 will also need to:

  • enter the case details on the S73(1A) tab on the Exparte Post Grant SharePoint List and mark the relevant column to show action has been considered but has not been proceeded with
  • issue letter PL6 (Annex 1B - S73(1A) PL6) to proprietor

A file note should be prepared as follows: PL6 issued on ………….. (insert date of PL6),

  • a COPS free text entry should be made using the function REG ENT. The entry should read: “No action to be initiated under section 73(1A)”

Revocation action to be initiated

23.07

Where the group head responds to confirm that action under Section 73(1A) should be initiated the A3 will:

  • issue Official Letter PL2A (Annex 1 - S73(1A) (PL2A) ) to the proprietor allowing 1 month for a response.
  • a file note should be prepared as follows:

PL2A issued on ……….. (insert date of PL2A), B/F to ……………(insert reply date)

  • an COPS free text entry should be made using the function REG ENT. The entry should read: “Section 73(1A) initiated on (date of PL2A.)
  • a S73(1A) entry should be made on the Exparte Post Grant SharePoint List The Head of Examination Group should confirm in their minute that they are content for the case not to be referred back to them in the event that the proprietor fails to reply

Response to Official Letter PL2A

23.08

The proprietor may respond to the initiation of revocation action by:

  • advising that he has no objection to the revocation (he is content for the patent to be revoked)
  • advising that he has applied to revoke/limit the patent centrally at the EPO
  • filing observations/comments for the group head’s consideration
  • filing amendments to the patent
  • advising that he intends to offer to surrender the patent
  • advising that he intends to allow the patent to lapse through non payment of renewal fees

The A3 will undertake the following action as appropriate:

No objection to revocation

23.09

If a response is received to the PL2A letter stating that the patentee has no objection to the revocation of the patent, a Decision REV-DEC-3A (see Annex 4 - Decision 3A (Agree to revocation)) should then be prepared for the Head of Examination Group. The A3 will create a minute on PDAX, then send a “PSM – Dec 3a to authorise” message to the group head. 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 2 - 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 electronic signature of the relevant group head. Electronic signatures can be located on SharePoint. (For clearing records - see 23.27-23.29 below)

Patentee advises he has applied to centrally revoke the patent

23.10

A response may be received advising that the patentee has applied to centrally revoke at the European Patent Office. In this circumstance, no action under Section 73(1A) will be necessary. Once confirmation is received that the EP patent has been centrally revoked, the A3 will notify the appropriate group head.

Once the group head has agreed that the patent has been centrally revoked and action under Section 73(1A) is no longer required the A3 will issue letter S73 EPOREV (see Annex 13 - S73 EPOREV Centrally revoked at EPO) and clear records (For clearing records see 23.12)

Observations/comments filed in response for consideration by the Head of Examination Group

23.11

The patentee may disagree with the group head’s view that the patent is not valid and will file their observations for consideration. The observations are referred to the originating group head with a suitable minute. If the group head allows the submissions, Decision REV-DEC-2A (see Annex 5 - Decision 2A (Observations allowed)) should be prepared for their authorisation. The A3 will create a minute on PDAX, then send a “PSM – Dec 2a to authorise” message to the group head. 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 DNL2 (see Annex 3 - DNL2 (No appeal period)). A file note should be prepared as follows:

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

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

Observations not allowed

If the observations are not allowed, the group head will issue further instructions as to how you should proceed in an examination report. This report is then included in an exam letter (Annex 11 - S73EX S73 Exam letter). The proprietor should also be provided with the opportunity to file amendments to overcome S73(1A) validity objection. If no agreement can be reached, a hearing should be offered to be taken by a Deputy Director (DD). If the DD decides, as a result of the hearing, that the patent should be revoked, they should issue a reasoned decision to that effect and instruct the A3 accordingly.

23.12

Clear records – Revocation not proceeded with

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

Section 73(1A) initiated on (date of PL2A) not proceeded with on (date of decision)

The Ex Parte 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(1A) 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.

Amendments allowed instead of revocation

23.13

The patentee may submit proposals to amend the patent in order to remove the validity objection.

23.14

When proposals for amendment of a patent are received in response to revocation action under Section 73(1A), the amendments should be referred to the appropriate Head of Examination Group as below:

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

The group head will consider whether the proposed amendments are acceptable or not. If they are not acceptable, they 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(1A) objection. (see Annex 11 - S73EX S73 Exam letter).

If no agreement can be reached, a hearing should be offered to be taken by a Deputy Director (DD). If the DD decides, as a result of the hearing, that the patent should be revoked, they should issue a reasoned decision to that effect.

23.15

If the proposals for amendment are prima facie allowable but are extensive, the Head of Examination Group 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 group head to issue an S73FS2 letter to proprietor to request further amendments. (see Annex 9 - S73FS2 Fresh specification conformity).

If the proposals for amendment are deemed acceptable by the group head, but require a freshly typed specification in order for publishing to produce a C spec, letter S73FS1 is issued (see Annex 10 - S73FS1 Request for fresh specification).

If the proposals for amendment are acceptable, use the ‘assemble’ and ‘enhance’ functions 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 REV-DEC-1A (see Annex 6 - Decision 1A (Amendments allowed)) should be prepared for the appropriate group head.

Certificates and decisions are created using Word templates and applying the electronic signature of the relevant group head. Certificates and electronic signatures can be located on SharePoint.

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

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).

23.16

The decision and certificate should be dated and the decision issued to the patentee together with Official Letter DNL2 (see Annex 3 - 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.

23.17

Clear records – Amendments allowed- no order for revocation made

An COPS entry should be made as follows:

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.

Specification amended under Section 73(1A), 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.

23.19

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.

23.20

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 8 - Publishing referral template), then send a “PSM – S73(1A) Produce C Spec and see CERT” message to the Publishing Team mailbox.

Amending an EP(UK) patent

23.21

If the EP(UK) patent is being amended in order to remove the validity objection, amendments will be considered under Section 27. Liaise with RAPS (Restoration and Post Grant Proceeding Section) for placing of S27 advert.
On expiry of the S27 advert opposition period, prepare Decision REV-DEC-1A (Annex 6 - Decision 1A (Amendments allowed)). For full procedures on amendment under S27 see RAPS Manual.

Patent to lapse or be surrendered

23.22

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. 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 group head with a suitable minute. The group head 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(1A) request to lapse/surrender” message to the group head.

No response to Official letter PL2A

23.23

If, after the one month period allowed for response to Official Letter

PL2A, no reply has been received, the A3 should issue Decision Form 5A (Annex 7 - Decision 5A (No reply to PL2A or PL4A)), having ensured that the group head specified in their original minute that the case does not need to be referred back to them if no response is received.

The decision should be dated and issued to the patentee with official letter DNL1 (see Annex 2 - DNL1 (Appeal period)). A file note should be prepared as follows:

Decision 5A 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 electronic signature of the relevant group head. Electronic signatures can be located on SharePoint. (For clearing records see 23.27-23.29 below) Request for a hearing in response to Official letter PL2A

23.24

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. The Hearing will be taken by a Deputy Director. Following the hearing, a decision will be written by the hearing officer and issued. If the patent is revoked, see 23.27-23.29 for clear records action. To refer to the hearing team, create a minute on PDAX, then send a “PSM – set up hearing” message to the PD Hearings mailbox. The Hearings Clerk will diary the expiry of the appeal period and will notify the A3 accordingly. The A3 will then clear records following the expiry of the appeal period.

Clear records – Patent Revoked

23.25

An COPS entry should then be made from the Revocation Section menu, select item 16 – Register Revocation – type in the patent number, 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.

23.26

A Journal entry should be prepared under the following heading as indicated: (S73 final advert – Patent revoked) Section 73 Revocation on the Comptroller’s Initiative Patent revoked under Section 73(1A) 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.

23.27

The case will be updated on the S73(1A) tab of the Exparte Post Grant SharePoint List on SharePoint by recording the revocation and clear records dates against the file reference number. Clear records file note is created on PDAX.

Extensions of time

23.28

Under S117B(2) of the Manual of Patent Practice an automatic two month extension of time must be applied for in writing (by letter, fax or email).

23.29

Where an automatic extension of time has been applied, any further EOT must be applied for before the expiry of the end of the extended period and must be applied for in writing specifying reasons for the request. Further extensions are at the comptroller’s discretion and may be subject to conditions. The request should be referred to the originating group head, 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(1A) Extension of time request” message to the group head.

23.30

Once an extension of time has been granted, this should be confirmed in writing and a new deadline for a response set. (see Annex 12 - S73EOT Extension of time) Letter created, locked and imported from PROSE. File note is created on PDAX.