Restorations and post grant section manual

Chapter 5: Section 47 cancellation of licence of right

Sections (5.01 - 5.16) last updated: September 2017.

Introduction

5.01

This section provides for the cancellation of an entry made originally in the register under section 46 i.e. that licences under a patent are to be available as of right. It also provides for opposition to the cancellation (see Section 47 of the MOPP).

Patents Act 1977

Section 47(1)

At any time after an entry has been made under section 46 in respect of a patent, the proprietor of the patent may apply to the comptroller for cancellation of the entry.

Application by proprietor

5.02

An entry in the Register that licences under a patent are available as of right, allows renewal fees to be paid at 50% of the total fees. The proprietor of the patent may apply for the cancellation of the licence of right (LOR) entry at any time after it has been made. However, if that endorsement is cancelled those reduced fees have to be repaid. An application should be made on Patents Form 30 and should be accompanied by the back fees payable, as prescribed in section 47(2).

Section 47(2)

Where such an application is made and the balance paid of all the renewal fees which would have been payable if the entry had not been made, the comptroller may cancel the entry, if satisfied that there is no existing licence under the patent or that all licencees under the patent consent to the application.

Initial Action

5.03

All cancellations of LOR are processed electronically on PDAX. A message will be sent to the RAPS Team mailbox when the F30 has been scanned. On receipt of a Patents Form 30, the Admin team will:-

  • enter the application in the post-grant SharePoint list and enter the Section of the Act on the front page of the dossier (S47)
  • make a free text entry on COPS using REG ENT (Application by the proprietor to cancel a licence of right under Section 47(1) filed xxxxxxxx)

5.04

For a paper case send it to the Index and Scanning section. Once scanned, a message will be sent to the RAPS team mailbox.

Formalities

5.05

The Admin team should carry out the following checks on the Patents Form 30:

  • the Applicant under section 47(1) is the proprietor
  • the Patents Form 30 is signed
  • the form includes a declaration that there is no existing licence under the patent or that all licensees consent to the application
  • that the address for service matches the Register. If not request a Patents Form 51 in order for this to be updated.
  • address for service provided in the UK, an EEA state or the Channel Islands

5.06

The Admin team should prepare an initial advert (see Annex 1 - Initial advert (Proprietor)) for the Patents Journal (PJ). The advert informs third parties that an application has been made by the proprietor and gives any third parties four weeks to file an opposition on Patents Form 15 should they wish to do so.

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

5.07

The Admin team should issue letter s47a (see Annex 2 - S47a letter) which advises the proprietor of the date when the advert is going to be published in the Journal and the opposition period.

Letter created, locked and imported from PROSE

5.08

The Admin team should prepare a file note as follows:

File Note

Formalities complied with, initial advert generated. Official letter issued on xxXXxx.

The case should be diaried for a week after it comes out of opposition. When the case comes out of the opposition period the Admin team should check the DIS FOR screen on COPS and the PDAX dossier for a Form 15.

File note is created in PDAX.

Opposition filed

5.09

Notice of opposition should be filed on Patents Form 15 within four weeks of the advert in the Journal. The four week opposition period is not extendable.

5.10

If an opposition is filed, the case will be referred to the Tribunals Section, with an appropriate file note. It will then be processed as an inter partes case.

PDAX minute created and message sent - “PSM – s47 Opposition filed” to the Tribunals Section.

5.11

Where no opposition is filed, the Admin team should refer the case to the Renewals Section to calculate and process the back payment of renewal fees. A minute is prepared as follows:

Renewals section

An application to cancel an entry in the Register that licences under patent are available as of right for patent number GB/EP xxxxxxx was filed xxxxxx the application was advertised on xxxxxx for opposition and no opposition has been received. The case is now referred to you in order to calculate and request payment of the back fees.

Once the fees have been recorded on the renewal screens please refer the case back to me.

PDAX minute created and message sent - “PSM - Calculate/Record back fees” to the Doc Despatch mailbox.

Cancellation of the licence of right

5.12

When the case is referred back from Renewals Section, the Admin team should check the minute from renewals and the COPS - DIS HIS screen to ensure that the back fee payments have been recorded. A minute should be prepared for the RAPS Manager as follows:-

RAPS Manager (name)

An application to cancel an entry in the register that licences under the patent are available as of right, for patent number…………….was filed on XX.XX.XX. The back dated fees have been paid, please see COPS - DIS HIS. Please cancel the LOR.

PDAX minute created and message sent - “PSM–s47 Cancel LOR” to RAPS Manager.

5.13

The RAPS Manager will then make the appropriate register entry by carrying out the following COPS action, and, will cancel the LOR.

  • from COPS main menu choose option 12 Revocations Section Menu
  • from Revocations Section menu choose option 12 Register Licence of Right
  • from screen REG LIC 0 enter publication/application number
  • from screen REG LIC 1 enter “2” in the selection field, todays date in Date of Decision field, B2 in authority for Register Entry field
  • from screen REG LIC 2, enter “y” in “Register Entry correct?” field and “Y” in “Suppress PDJ Entry?” field. The PJ entry needs to be suppressed as otherwise an incorrect entry will automatically be generated in the PJ.
  • press “Enter” to record and exit

The RAPS Manager will send a message to the Admin team confirming that the LOR entry has been cancelled and that a manual entry in the Journal needs to be prepared.

5.14

Once the RAPS Manager has cancelled the LOR, the Admin team should issue letter s47b (see Annex 3 - S47b letter) to the proprietor confirming the cancellation.

Letter created, locked and imported from PROSE.

Clear records

5.15

Once the applicant has been informed of the outcome of the application, clear records action may be undertaken. An advert should be prepared for the Journal (see Annex 4 - Final advert) and the Post-Grant SharePoint updated with the date of the cancellation and the date of clear records. A clear records minute should be created. This should be completed to indicate that all actions have been finalised.

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

Application by other persons

5.16

The comptroller makes a licence of right entry only if he is satisfied that the proprietor of the patent is not precluded by contract from granting licences under the patent. There is an opportunity, after an entry that licences are available as of right has been made, for cancellation to be applied for by persons other than the proprietor, for example an exclusive licensee, and/or others who claim that the proprietor was at the time of the entry precluded by a contract from granting licences.

An application by such a person should be made on Patents Form 2 within two months of the relevant entry being made in the register (rule 43(4)); this period cannot be extended. The application should be accompanied by a statement (see rule 76(4)).

These requests should be referred to the Tribunals Section.