Chapter 5: Decisions
Sections (5.01 - 5.39) last updated: September 2017.
Decisions are usually written by the Hearing Officer (HO) following an inter partes or ex parte hearing. Occasionally the HO will give an oral decision at the hearing. Where the part(y)ies agree, the HO may write a decision based on the papers filed. Decisions can be:
- Preliminary; where a preliminary point has been decided in order to progress the case to a substantive hearing
- Interim; where the final decision can only be issued once certain points have been fulfilled following the substantive hearing
- Substantive; where the definitive orders of the comptroller are made.
Each decision is allocated its own British Library number (BL number). The hearings clerk will allocate the BL number on receipt of the electronic version of the decision.
Issuing a decisions
The HO will email the TribunalsDecisions e-mail box with the decision and abstract (summary) and request that the hearings clerk send a copy of the decision to the part(y)ies. An abstract should be supplied at the same time as the decision. If this is not possible then it should be supplied within 5 days.
Hearings Clerk action
Decisions should be received through the TribunalsDecisions e-mail box, which is regularly monitored by the hearings clerk. Unless instructed otherwise, decisions are actioned as a priority and should be processed as soon as possible. The hearings clerk will attach the paper checklist to the relevant ‘hearings arrangement’ file in the DECISIONS folder if one is available.
The hearings clerk will:
On receipt of the decision, open it in word and check that it is on the correct template and correctly formatted. If not, the HO should be contacted immediately.
Open the BL number spreadsheet, SharePoint\Hearings\BL Numbers Spreadsheet, allocate the next number to the decision and enter the BL number, Parties names, P and the date the decision is issued on the SharePoint List. The BL number and the issue date will then be entered on to the decision.
Add the HO’s electronic signature to the decision. Electronic signatures are located in SharePoint in the Signature Library. Save the decision in the SharePoint Hearings Library. The decision should be renamed so that it is saved in the form BL Number_Dec_HO Initials.
Print signed copies of the decision for the parties and import a signed copy of the decision as a PDF onto the dossier using Manual Import – doc code DECISION LIT or DECISION-IP as appropriate. The status of the application should be checked and annotated accordingly as OPI or NOPI on the dossier.
Delete the signature on the decision in Word and resave. Print 3 copies for British Library, EPO and RPC editor if OPI. If it is an SPC print a copy for the hearing officer.
Update the Hearings SharePoint List, with the date the decision is issued and the section of the Act. The status should be checked to determine if OPI or NOPI for the OPI/NOPI field.
In Prose select the appropriate covering letter to be issued with the decision, complete options as follows:-
Due to changes under the Appointed Person (Designs) Rules 2015, the A3 should refer to the B2 case officer for details of procedure and appropriate content of letters.
The appropriate template should be selected and completed with the necessary information. Any paragraphs not required should be deleted. For Inter Partes proceedings separate letters should be issued to each party. Copies of all letters are imported onto the dossier. The decision should be issued with the covering letter to the parties. If the decision is for an SPC print a copy of the letter and send with the unsigned decision (5.09) to the hearing officer.
Once the abstract is received open the abstract in word, add the same BL number and date as on the decision. Save the abstract on SharePoint in the Hearings Library. Rename the abstract so it is saved in the form BL Number_Abs_HO initials.
If the decision is OPI it will be placed on the external website. An e-mail should be sent to webmaster with the unsigned copy of the decision in Word attached. The email should be headed ‘new patent decision for the website’.
Do not send copies of NOPI decisions to webmaster.
Copies of all Inter Parte and Ex Partes decisions and abstracts should be circulated internally to the decisions circulation contact list on Outlook. Section 13 decisions are only circulated to a limited Section 13 decision contact list.
If the decision is NOPI ensure the covering e-mail states this.
Set a task on Outlook for the following day to add the abstract and for the day following that to check the decision and abstract are available to view on the external website.
Set a task on Outlook for the end of the appeal period plus 2 weeks to clear the decision if no appeal is received. The end of the appeal period can be taken from the covering letter but is usually 28 days from the date of the decision for Patents, 6 weeks from the date of the decision if a substantive decision for a Design or 14 days from the date of the decision if a procedural decision in a Design case. For decisions issued following a hearing in Scotland, the appeal period should be confirmed with the hearing officer.
For a section 13 decision, a message should be sent on PDAX to the case officer requesting ‘Clear records and Action’.
The hearings clerk will:
If the decision is OPI, send unsigned copies of the decision to the EPO, British Library and the RPC editor
Complete a clear records pro-forma Annex 10 - Decision Pro forma and pass it to the case officer for processing.
Enter the date the decision was sent on the BL number spreadsheet in SharePoint.
The abstract cannot be added to the Patents Decision database on the date that the decision is issued. It is usually added on the following day. If the HO has not supplied the abstract with the decision then it should be supplied within 5 days. If the abstract is not received the hearings clerk should contact the HO.
The hearings clerk will:
Using the abstract complete the fields in the PATENTS DECISIONS application. If a new hearing officer needs to be added, this is achieved through the PATENTS DECISIONS ADMIN application. Note that all section 13 decisions are Inter Partes. NOPI abstracts should not be placed on the database until published.
The decision and abstract should have been uploaded to the external website overnight.
The hearings clerk will:
Check the website to ensure that the abstract and decision are correct. Any errors should be reported to webmaster.
Enhance the decision on PDAX and annotate the decision as OLFI only if the decision is OPI.
Delete both the abstract and decision (Word and PDF versions) from SharePoint before placing the original e-mail into the ‘cabinet’ in OUTLOOK. NOPI decisions should not be deleted in WORD but stored in the NOPI decisions folder in the SharePoint Hearings Library.
Complete the appeal B/F dates on the checklist. The paper file should then be placed in the AWAITING APPEAL PERIOD folder and a task set in OUTLOOK to check if an appeal has been received.
NOPI decisions, (Not Open To Public Inspection), are not published externally until the Patent is published or unless all parties give their consent. NOPI decisions usually relate to unpublished patent applications, section 40 cases, design right cases and decisions which contain potentially commercially sensitive material.
In the letter issued with the decision see Annex 2 - Decision Letter NOPI the parties are asked to inform us if they are content for the decision to be published. If consent is received then a version of the decision may be published or alternatively it may be agreed that all sensitive matter is removed and a redacted version may be published and circulated as above. This redacted decision will also be sent out to the original recipients with a redacted decision letter (see Annex 4 - Decision Letter Redacted).
If consent is not received then a Patents Form 49 is sent to the Caveat Clerk in Formalities asking to be informed when the Patent is published. Once it has been published then the Patent can be distributed and circulated in the normal way. Until it is published the electronic versions of the decision and abstract should be stored in the NOPI folder in the Hearings Library on SharePoint.
The HO may make an oral decision at the hearing. This may happen in cases where no transcript writer is present. In these cases the HO will provide a decision and annotate that an oral decision was given at the hearing. The decision will then be processed as normal.
Where an oral decision is given in the presence of a transcript writer, the transcript becomes a part of the decision. The hearings clerk should liaise with the HO to ensure that no NOPI information is in the transcript. Upload March 2016 the transcript to PDAX as HRG-TRANS or HEAR-TRAN-IP and annotated accordingly. The transcript will be issued to the parties with the decision and then processed as normal. If a transcript forms part of a decision then it must be forwarded to Webmaster with the decision to be published on the website.
No Appeal Received
If no appeal is received by the set date, (see 5.16) the decision can be cleared from the hearing clerk’s records.
The arrangement pack should be removed from the ‘Awaiting Appeal Period’ file. The Pro-Forma (Annex 10 - Decision Pro forma) should have been returned from the case officer, see 5.19, if not request it. This will provide the instructions on how to proceed. A minute and message will be sent on PDAX to the Inter Partes case officer or the relevant Formalities group.
For ex-parte cases the date the decision was cleared should be entered on the Ex-Parte SharePoint List.
Remove all unnecessary information from the arrangement pack and dispose of as required. Store the remainder of the arrangement pack – usually just the arrangement sheet, decision checklist, proforma and any non-standard information - in the cleared decisions store. As this becomes full, remove and dispose of the oldest packs.
For some Inter Partes hearings bundles consisting of copies of all the papers that may be required at the hearing are produced by the parties see Chapter 4. These bundles are offered back to the parties.
Unless the parties request return of the bundles, the hearings clerk should destroy them once the appeal period has expired. Note that the bundles are not to be confused with the original evidence filed in the proceedings, this will always stay with the case.