| A telephone call was received from a Patent Agent expressing dissatisfaction with the decision of a patent case. The Agent felt that the Officer had misrepresented his arguments and had misunderstood the technical nature of the invention. He also highlighted some typographical errors. |
The hearing was to decide how the invention was classed. In general, once a decision has been issued, it is final and cannot be changed in response to further argument. We would also not correct typographical errors if they do not hinder understanding. Having reviewed the customer’s comments and the relevant guidance set out in the Patent Hearings Manual, the officer decided to issue a corrected decision restricted
to correcting certain
typographical
errors
that had been previously missed. The client telephoned the officer dealing with the case to query the content of the corrected decision. He was informed that the corrected decision was final and the relevant chapter from the Patents Hearing Manual that related to changing decisions was quoted. |
| The Chief Executive received a letter from a private applicant complaining that his mark had objections raised against it and was eventually refused, yet we accepted a similar later filed mark to his. The applicant’s mark was considered to be contrary to public policy or accepted principles of morality. He was unhappy because a later filed mark had been accepted
and he felt that this
was
on par with his mark
and should have had the same objection raised against it. |
The Chief Executive wrote to the applicant and explained that it would be improper for him to comment on the acceptance of individual marks. He went on to explain that thousands of marks were registered each year and sometimes marks are registered incorrectly. For this reason there is the option to oppose or invalidate the mark. Whilst the opposition period had ended, invalidity proceedings against the mark were still available
to the applicant. The applicant was told where invalidity information could be found on our web site and was given a contact telephone number for the Trade Marks Law Section Manager,
if he wanted any
further
assistance. |
| A private applicant wrote to the Chief Executive to complain as he felt that the opposition period should be exactly 12 weeks i.e. 3 x 28 days and not the 3 calendar months approach that that is adopted by the Trade Marks Registry. He was also unhappy that he was not allowed to add additional classes to his application. This meant that he would have to file a new application if he wanted additional
coverage for
these
classes. |
The Chief Executive wrote to the applicant and explained that Rule 13(1) of the Trade Marks Rules 2000
states that the notice of opposition must be filed within three months from the date of the advertisement
of the application in the Trade Marks Journal. The Registrar has interpreted the three months period for opposition as meaning three calendar months
from the date that the application is published e.g. 17 March 2006 to 17 June 2006. There is no explicit provision within the Trade Marks Act 1994 nor the Trade Marks Rules which takes
account of the actual number of days within any three month period. The applicant was told that we do not have any discretion to allow the addition of a further class or
classes to an application after it has been filed and given a filing date. For legal purposes the application date is critical and this is why the law does not allow the addition
of further classes at a later date, hence the need for a new application. |
| A private applicant wrote to The Chief Executive because he felt that the booklet "Applying to Register a Trade Mark" was not easy to understand. He applied for a trade mark to which the examiner objected as it was descriptive and non distinctive for the goods/services that he wanted coverage for. He thought that the booklet should have had better examples to show which was and was not an acceptable Trade Mark. The applicant held the Patent Office at fault and as a result asked for a full refund of his application fees. |
The Director of Trade Marks carefully reviewed the booklet and explained that it was only intended to provide general guidance and in his opinion the examples gave a good indication of what we would, and would not, register as a trade mark. The applicant’s request for a full refund was refused. He was also invited to make further submissions to the examiner or to proceed for the mark in the one acceptable
class. |
| A private applicant reported that a page was missing from the fax-back of an EPC application. She was incorrectly told that we had received the missing page and was concerned that the filing date had been put at risk. |
There was some confusion over who had actually dealt with the incoming fax. The customer re-filed another application which claimed priority from both the original filing and a US equivalent application which solved the problem. In view of the initial incorrect information and uncertainty caused to the customer, we refunded all fax-back fees. |
| A private applicant was unhappy with our handling of a patent assignment application. He was particularly concerned about the way we had corresponded directly with the proprietor rather than the appointed agents for the case, coupled with the delay in
processing through
our
repeated requests for
assignment documents. |
The case had been handled correctly. An agent had not been appointed at the start of the assignment process so Register Admin corresponded directly with the proprietor. This caused confusion over possession of the assignment documents and resulted in our repeated requests for the return of the original form 21/77, leading to delays
in processing. After reviewing the case, the assignment application was finalised using the duplicate documents supplied. |
| A Patent Agent complained that a letter addressed to Search and Advisory (SAS) team had somehow arrived at the Office for Harmonisation in the Internal Market (OHIM). |
We apologised for our mistake, but could not determine whether the letter had become attached to a design application sent to OHIM, or simply misunderstood by a new member of staff. |
| A Patent Agent complained that a sheet of drawings sent to the European Patent Office (EPO) had been spoiled by a PO stamp on the back of the sheet. |
We have asked for further detail, if possible, so that we can fully investigate. EPO has never complained about our date stamps. |
