Suggestions for Improvement

Search and Advisory Service (SAS)

You said	Our response
Suggestions for improvement made by customers regarding our search and advisory service. The customer suggestion is in the first column. Read across the row to find our response.
SAS for Patents should be cheaper so that agents can provide a better service.	We are required by Treasury rules to charge for our commercial services at a rate which enables us to recover our costs. We are sorry that this does not enable us to reduce our charges which we believe are competitive with others providing the same service.
I think you should be able to fill forms e.g. SAS form in online. Currently you can only download PDF’s. If Word docs were used it would be easier. I also went on the KOI version on the website & found some areas were easier & clearer to understand.	We have made a Word version of the Trade Mark SAS form available online which we hope will be easier to use. We are also looking to make improvements to our website which will include access to online forms.
Delay in processing Search and Advisory applications and Trade Mark applications. The back log means time estimates we give to clients from submission to registration are inaccurate. Need to revise time estimates if cannot maintain 14 days and 2 months by examination.	We are sorry that you have experienced delays in the processing of Trade Mark and Search and Advisory applications. For the current financial year we have completed 96% of our Search and Advisory searches within our target of 10 working days. Statutory Trade Mark applications are currently being examined within 4-5 weeks. In both cases, any delays are reported to the customer immediately.
It would be a good idea to highlight clearer that for a small fee (I believe £50?) you can have our Trade Mark checked for suitability before submitting your TM3 application.	The service referred to is the Search and Advisory Service which advises on the registrability of a mark prior to the filing of a statutory application. The charge for this starts at £80 + VAT. We have made changes to our website to improve awareness of this service.
High Speed 2/3 day 'contract' search at a cost premium.	On 7 April 2008, we will introduce a premium rate "fast-track" examination process for statutory Trade Mark applications i.e. examination within 10 working days. If this new service proves successful, we will then investigate the feasibility of offering commercial Trade Mark searches more quickly than our current 10 working day turnaround time. For commercial Patent searches we already try and meet requests for shorter turnaround times where resources allow.

Trade Marks

You said	Our response
Suggestions for improvement made by customers regarding our Trade Marks service. The customer suggestion is in the first column. Read across the row to find our response.
Suggestion that cases should be reviewed before hearing as sometimes the Examiner can be quite harsh and the Hearing Office later approves the application. Some members of staff are rude and non-responsive to discussion.	Cases are reviewed by the Team Leaders before a hearing. At this stage, the Team Leaders will sift out cases that are clear cut and only those where this is an argument will be sent to hearing. We would like to apologise and to stress that we take this comment very seriously. If this occurs again, please contact crm to report the incident and mark for the attention of John Hamilton-Jones.
Inconsistency – one Examiner may be more lenient than another.	This is because Trade Mark decision making is subjective. Even at senior levels, staff will often disagree on borderline cases.
Difficult to find anyone who can advise – should have a Classification Unit	We do have a dedicated classification unit. Calls and emails received by our Central Enquiry Unit can be passed to the team directly.You can contact our central enquiries unit (CEU) by calling 0300 300 2000.
Do not always take on board arguments raised in examination correspondence	It is difficult to comment without further information about this. All we can say is that all staff are trained in the same way. If you would like us to comment on a specific case, please contact crm and mark for the attention of John Hamilton-Jones.
Reduce use of standard paragraphs, check spelling and grammar, check wording of letters. Quality check by Team Leader	Standard paragraphs are used in examination because our examiners regularly deal with the same issues. These can be tailored to suit individual cases. Following the spelling and grammar comments made in this survey, we will take steps to remind staff of its importance in an attempt to address this problem. Quality of correspondence is assessed and is a high priority. We would welcome any examples that you would be prepared to submit via e-mail to crm and mark for the attention of John Hamilton-Jones.
Quote agents refSingle sided aids faxing to Clients	The issue of agent's references was considered, but the data held on our internal database under this record is not always current. It was considered that it would cause more confusion by having an incorrect reference than having no reference at all. In relation to the single sided letters, this was a deliberate decision taken by the Office in its aim to be more environmentally friendly. At the moment, we are issuing over 700 notification letters each week, each is 3 pages long. Therefore, by using double sided letters, we have a weekly saving in excess of 1000 sheets of paper.
Acknowledge correspondence with a "will respond by" note	We feel that there is little benefit in adding this as customers would be unlikely to welcome this additional correspondence. This could unduly slow the process and so it is doubtful that the majority of customers would want this.
Layout of letters needs to be looked at	The quality of our correspondence is a high priority. Standard paragraphs are used in examination because our examiners regularly deal with the same issues. However, following the responses received in this survey, we will remind staff of the importance of proof reading correspondence. If you would like to discuss specific examples please contact crm and mark for the attention of John Hamilton-Jones.
More attention should be paid to spelling and grammar in letters	Following these comments, we will remind staff of the importance of proof reading correspondence for spelling and grammatical errors before they are issued.
No availability of databases at night	This is because at night, our IT system is performing back-ups. This is an ongoing task.
CTM and Material mark information is not available from noon on Fridays.	This is likely to have been a one-off. When we make changes to our online search facility, we use Friday afternoons to test and launch them because this has been shown to be a quietest time. When this happens, the online service is not available.
Online access to marks, not having to enter the same details time and time again	This requirement is unclear.
Online database is not kept up to date	We are already aware of this problem. These are archived cases and we hope to resolve this issue in the near future.
Citation letters are raised against marks with the same owner	These are likely to be “technical cites” which are raised as a precautionary measure.
Exam reports can be scary for Private Applicants	The aim of our examination report is to make the position clear. However, following customer feedback, we were aware that perhaps we had not struck the right balance and so the wording has already been changed to address this problem.
Examiners do not respond to Extension of Time (EOT) requests very quickly	These requests are processed quickly. This is likely to be an isolated incident but individual examples are welcomed so that we can investigate further. Please contact crm and mark for the attention of John Hamilton-Jones.
Sometimes the information given is disputed by legal reps as being incorrect (e.g. you can challenge a registered mark with an invalidity action)	This appears to predate the changes implemented on 1 October 2007. The response to this depends largely on what the question was, who provided the information. Without knowing more about this, we are unable to investigate in more detail.
Some Examiners could be more specific with their opinions rather than hedging their bets.	Examiners are not able to give advice but can provide information. Whilst this may be seen to be being unhelpful it is critical that examiners remain impartial. Any decisions about your application must be made by you.
Response times particularly around consideration of evidence.	Without further clarification, it is difficult to respond to this. However, the delay could be owing to the amount of evidence filed. One document will take less time to analyse than 5 boxes for example. This largely depends on the case.
Paid for a search before applying for registration but then received an opposition	Using the SAS does not guarantee a registration. Our covering letter clearly reflects this.
TM search facility: results should show details of the owner	This was not a requirement of inter-search. It is possible to do this but this is dependent on resources.
Designs search	Not enough information to respond. We have received no other complaints about the Designs search.
No warning before the TM search was changed	The newer Beta search was running in parallel to the old search for some time before the change.
Investigate a name before refusing someone else use of part of it.	The concern raised is unclear.
Highlight more clearly that there is a commercial Search and Advisory service available.	The profile of the SAS has recently been made more prominent. Our Central Enquiry Unit mention the SAS in all of their Trade Mark phone calls, it is also mentioned in the widely encouraged TM literature. Additionally, the SAS has been given its own link on the website and has featured in a number of cover stories on the Office’s homepage.
More advice on generic terms used in Trade Marks.	The concern raised is unclear.
Objections are sometimes not credible	The quality and consistency of objections is monitored closely by both the managers and at the weekly Quality Standards meeting. However, if you are unhappy about any of the objections raised, you do have the opportunity to put forward your views, either in correspondence, or at hearing.
Simplify forms and categories	Our forms were reviewed to make them more user friendly as part of a project in 2006. We have no immediate plans to amend them all but we are taking a closer look at the Form TM7.
Automatic extension of TMs in line with Patent rules	There is no relationship between Patent and Trade Mark rules and we have no plans to change this.
Costs are high for a small business. To lose £200 per application is a lot.	Our SAS offer a cheaper alternative. Whilst it does not guarantee registration, it can help you to decide whether to apply for full protection.We have considered a "split fee" structure but this is still at a very early stage.
Reduce UK Designs renewal fees in line with OHIM.	Our fees structure was changed in October 2006 to provide better value for money for our customers.
Make the Work Manuals easier to find	We will review this as part of our current website redesign project with an aim to making the manuals more accessible.
Preferential treatment is given to Private Applicants.	Each case is judged on its own merits and this alone. No preferential treatment whatsoever is given to applicants without representation.
Opposition proceedings are of huge importance to client and time frame to complete, these are commercially untenable.	The new consolidation of the Trade Mark rules should address issues of timescales in proceedings.
Movement of files is slow	Whilst file movement may not be as streamlined if we were an e-working office (this is being reviewed as part of our business plan), we have reduced examination time by half and so our service to customers has actually improved in recent months.
Speed of actual award of Trade Mark	We are looking to reduce this in the future. Recent changes made have saved 5 weeks and we are hoping to build on this in the near future.

Patents

You said	Our response
Suggestions for improvement made by customers regarding our patent services. The customer suggestion is in the first column. Read across the row to find our response.
When a patent officer leaves, hand over existing cases and notify current cases.	We appreciate that continuity is important to our customers and we ensure that all correspondence clearly identifies the sender. However, it is inevitable that the case officer will occasionally change during the prosecution of an application. When this happens we have procedures to ensure that any enquiries are quickly redirected to the new case officer. However, we feel that it would not be cost effective to write to the applicant/agent every time a case officer changed.
Customer Service in PCT section.	Customer service is always something we strive to excel in and whilst there may be the occasional criticism our most recent customer survey indicates that 98% of people who responded were satisfied with the friendliness and 95% satisfied with the knowledge of our staff. However, if you have any specific complaints or criticisms please let us know so that we can ensure that they are investigated thoroughly.
Answers from formalities could be faster particularly the international section.	We try to respond to customers as quickly as practicable and we have a range of internal targets, for example we aim to issue the preliminary exam within 4 weeks of the filing of your UK application. The international section aims to dispatch applications to the International Bureau within 4 weeks of receipt and deal with PCT amendments within 3 weeks.
Your preliminary examination for Patents is very good value for money but wouldn’t mind paying a bit extra for Search Reports if they were more thorough/had better database coverage. Sometimes EPO find more relevant prior art than UKIPO.	Quality is obviously highly important to us and we are disappointed to hear that occasionally searches do not appear to be as thorough as the EPO. We are constantly looking to improve the quality of our searches. We have a procedure in place to monitor the search results of applications that have been searched by us and by the EPO to compare quality. A fees review is currently under consideration and your suggestion has been passed to those responsible.
I think the official fees should be more representative of the cost of providing the examination service. At the current levels, there is unrealistic impression of the value of the early stages of a patent application. Cost to small entities could be reduced as is done in USA for Patent holders.	A fees review is currently under consideration and your suggestion has been passed to those responsible.
The layout of letters need to be improved. Letters of objection - these are standard and sometimes too heavy - i.e. - if only a spec query then letter makes out whole app would fail etc. Some letters have spelling errors. Grammar & Spelling in examiner’s letters.	The quality of our correspondence is a high priority and in response to these comments we will remind our staff of the importance of proof reading all correspondence and give training where appropriate.
Improve English of Examiners, reduce use of standard paragraphs, letters to be checked by section head before dispatch.	We use standard paragraphs because it is much more efficient to do so and because it aids consistency.
Acknowledge correspondence with a ‘will respond by...’ note. Possible interim reports on progress of Patent requests e.g. A couple of lines to state that the progress of an examination has been started or when it is likely to start or finish.	Patent examiners are available via telephone, email or post should you wish to know the status of your application or when a search/examination/subsequent examination of amendments is likely to be issued. We feel that the extra correspondence which would be generated if we adopted this proposal would be a significant drain on our resources to the extent that it may even slow down the examination and granting process.
Bring back the Patents letter which informed agents that the publication preparations for Patents would be complete by XYZ	This letter is still used. If customers have examples of this letter not being issued it would be very helpful if they notified us.
Two months extension would be nice to get reply back, nice to know if everything is OK.	Two month extensions are as of right so we did not consider it necessary to issue a reply. If a request is received it will be granted. We appreciate that customers may like some reassurance that a request has been received and if you send the request for an extension via e-mail to pateot you will receive an automated reply.
Consistency of responses. Interaction and discussion between staff of UK IPO. Failure to follow European Law. Failure to act and follow Law consistent with EPO and OHIM Consistency of discussion working which I feel it’s pot luck and which examiner you get. Examiners being more lenient of errors for applications	Certain areas of Patent Law can be contentious, for example inventive step and patentability and especially issues of excluded matter relating to software and business methods. We continually strive to ensure that all of our staff are trained on these areas of law to maintain consistency within the Office and stay up-to-date with all relevant case law. However, we appreciate that in these contentious areas it is impossible to please everyone. With regards to leniency, we have to follow the Act, Rules and current case law.
When I respond to a Patent Examiner in the prosecution stage of an application, I take great trouble to answer the points fully and use the Examiner’s numbering for clarity. However, there is not usually and acknowledgements that the explanations have been accepted. The only indication is the absence of that particular point on the next office letters as the standard 'Letters of Allowance'	We very much appreciate the trouble taken by customers to respond in the thorough and helpful way described in this comment. We will remind examiners that it is important and courteous to acknowledge every point raised by the customer.
The registering process is clear but the routes to obtaining UK, EU or USA Patents is not clear. Better documentation on this point. European Patents - not easy to put through to UK-IPO.	We are sorry to hear you have found the route unclear. Prosecuting Patents can be complicated and the use of a patent attorney is recommended We have various fact sheets, booklets and a flowchart on our website to aid the prosecution of a UK patent. You can also contact our central enquiries unit (CEU) by calling 0300 300 2000. With respect to other Patent Offices, we have some publications regarding their processes but it is not possible to provide up to date guidance on all the various Patent Offices around the world. We suggest you contact the individual offices themselves for specific assistance.
Yes- As a suggestion, I believe you are starting to put too much emphasis on speed. In particular, you are putting too much emphasis on getting official letters on Patents and Trade Marks answered too quickly. In the real commercial world, undue speed can work against an applicant. It is not in the public interest at large for patent application to remain pending and unexamined for so long. Speed of Service. Very satisfied with the speed of response for PATS EXCEPT in search reports and exam reports where very dissatisfied as they take far too long. Some responses to Patent requests are slow.	Timeliness is an issue we are very much aware of, however the comments highlight the disparity between customers requirements. We strive to balance the varied needs of customers and the resources available to us. To that end we have a number of published targets, for example, we have targets to perform searches and CSE’s within 4 months of filing. Accelerated search and examination are available if requested with a valid reason, or combined search and examination (CSE) is also available. We are in the process of recruiting more patent examiners to help us meet these various targets.
The speed at which documents are loaded onto PECS. Often I am chased for a document, I say I have sent it in and it turns out that the document has not yet been sent to Patent Formalities.	We are sorry that you are experiencing this problem and we have put systems in place to address this. Our index and scanning section has targets and our figures for February 2008 show 100% of these targets were met (over 5000 items filed). Without further details it is difficult to comment on this specific issue. However, if you would like us to comment or investigate a specific case, please contact us.
Lone inventors and inventors clubs need something to make enforcement of patent rights more affordable. Opinions are a step in the right direction but something is needed beyond that - currently inventors have little confidence in Patents as a means of protection.	We are pleased to hear the opinions service is recognised as making a difference and there has been a good uptake on the service. The Office is prepared to consider expanding the service if there were sufficient support from users. Recent reform of rules governing litigation at the Office will help keep costs down for those involved. New practices have been introduced (see TPN 6/2007) which are aimed squarely at reducing time and encouraging dispute resolution. The Office also encourages mediation between parties as an alternative to litigation and we offer our own mediation service. The Office continues to look for new ways to help those involved in disputes over Patents and are actively considering further changes to litigation procedures to distinguish us further from the courts.
More flexibility to ‘dove tail’ into customer’s development process.	Although this suggestion is unclear it would appear to be implying that it would be preferred if new features could be added to the patent application later in the development process. Such added matter would not be allowed under the Act and Rules.
The organisation/admin of files in complex opposition matters.	The exact nature of this suggestion is unclear. Since 2006 we have received 6 oppositions for post grant amendments or corrections (s27(5) & s117(2)) and we feel that the system in place is well organised. However, if you would like us to comment or investigate a specific case, please contact us. Following TPN 6/2007 a full review of Patents inter-parte disputes and procedures is underway. The review team are currently consulting with small groups of users and should any large changes be recommended a full external consultation will be carried out.