| A Patent Attorney telephoned to complain about the length of time taken to issue a substantive response to his letter of 31 August 2006. |
The Head of Formalities apologised to the attorney and explained that the delay was due, in part, to inexperience in using PECS to deal with correspondence and, in part, to waiting for a decision on a separate
case
with the same issues to appear on our website
before a pre hearing report could be issued. The attorney said that he fully accepted the apology and
would inform his clients that the delay was not intentional. |
| A Patent Attorney referred to an issue previously raised in a Box 49 complaint, where the agent contended that we failed to inform the applicant that a search could not be performed on the application in view of insufficiency, only after the end of the 12 month
convention period. (The examiner’s report was issued 3 months after the Form 9/77 date). |
The examiner replied, dealing with the feedback and the outstanding case-related legal issues. The examiner quoted from the CEO’s reply to the Box 49 complaint: "He [the applicant] did not ask us to expedite proceedings
or otherwise indicate that he attached any urgency to the handling of his application. The examiner
therefore dealt with the application in turn in the usual way, that is, according to the date of the
request for search.
We do not generally
give priority to
those cases approaching the end of the convention year, be they from individual inventors or represented
applicants." |
| A Private Applicant was unhappy because he had not received his accelerated CS&E report. |
Our records show that the report had been printed and sent out. The report was re-issued to the customer along with an apology. |
| A client complained that the Litigation Department dealing with a Patent Application was not acting impartially. |
Peter Hayward replied to the client who was not happy with the way litigation against the customer was progressing. The reply stated that his complaints had been noted, but that it would be improper to interfere in the judicial process. he matter
was in the hands of the appointed hearing officer. The ruling had been made on who was entitled to the
patent, and this decision is final. |
| A fax was received from a customer explaining some difficulties he had on a recent filing of an application. |
Sean Dennehey replied to the customer stating that the circumstances of the filing of his application had been considered and a possible way forward was explained in the letter. |
| An applicant emailed The Office to complain about the progress of his application G B 0606722.7. |
A detailed reply was sent to the client, giving him advice about how to get his application back on track. he Head of Administration had looked into the case and her email address has been forwarded to the customer, as a point of contact, if he required
more advice. Heads of Admin are to discuss how procedures can be amended to avoid a repeat of this. |
| A client wrote a letter complaining that the present examiner of her patent was taking a different view on the patentability of the invention than that expressed by an earlier examiner. Also, that the examiner’s reports were repetitive in
their raising of objections. |
The Director of Patents wrote to the customer stating that it was inevitable that examiners would occasionally differ in their opinion on whether an invention is patentable. It is not unusual for the examiners to disagree with the applicant. When
a disagreement cannot be resolved between the examiner and the applicant, specific procedures are put
in place. In such circumstances, an applicant can ask to be heard. This means that the applicant is
referred to a
senior officer
known as
a Hearings Officer, who will take a formal decision as to whether the invention is patentable. The Director
suggested that it seemed to him that this should happen. He also stated that he had asked the examiner
to write
to the customer
explaining
the procedure which includes the opportunity for a case to be put to the Hearing Officer. |
| A complaint was received that a UK search report did not include a relevant citation that was cited in a corresponding PCT search. |
A letter of apology was sent, explaining that the relevant citation fell within the IPC and UKC classification areas search by the examiner. However, the search records were refined using keywords that limited the documents viewed. Specialist
search trainers have been asked to remind all examiners of the need for careful use of limiting keywords. |
| A Trade Marks Hearing was held and the applicant was given 2 months to respond. In this particular case, they decided to respond to the examiner via e-mail. Unfortunately the examiner was on long term sick leave and nobody else on the team
was aware of this e-mail until the applicant phoned the office. |
Following the applicant’s telephone phone call, a Trade Marks examiner dealt with the applicant’s queries and the issue has been resolved. This issue is being carefully reviewed by senior Trade Marks managers, to see if a system
can be put in place to avoid this problem happening again in the future |
| A small number of solicitors said that they had difficulty finding "The consent and evidence of use information documents on our web site”. |
The solicitors were directed to the appropriate pages on our website, where they could view "The consent and evidence of use” information. The ease of finding information on the Office website is under constant review. The Internet
Development Team has recently asked all staff to review the content on the website and forward any improvements,
to them, by the end of February. Any agreed improvements will be implemented when the Office name change
is actioned.. |
| An agent was unhappy with the new website. He complained that it looked unprofessional and all favourites and bookmarked decisions had disappeared. |
We were unable to respond directly to any particular agent. Before the new website was launched The Internet Development Team made a list of the top 100 most visited pages on the old website. After the re-launch, if customers clicked on one of these
100 pages they were re-directed to the relevant page on the new website and were asked to re-bookmark
this page. |
| A customer was searching for Community Trade Marks on the OHIM website and the Patent Office website. He was surprised that he could find some trade marks on the OHIM website but could not find them on our website. |
A Trade Marks team leader contacted the customer and explained that we were reliant on the Community Trade Mark Office providing us with the information to update our website. Sometimes there was a delay in us receiving this information, which meant that our
site did not always have the most up to date information relating to Community Trade Marks. As a result
of this issue, we are reviewing the Community Trade Marks information on our website and, if appropriate,
we will
make any necessary
improvements. |
| A customer was disappointed that we did not have a Word version of the TM50 on our website. He files a number of TM50s and it would be easier for him if they were in Word format. |
A Trade Marks team leader contacted the customer and said that his suggestion would be forwarded to the appropriate work area to consider. He also told the customer that a Word version of the TM50 would be put on our website within 2 weeks (this has
now been actioned). The customer was very impressed with the speed and high standard of customer care
he had received. He even put details of his positive experience with the Patent Office in his WOW customer
services
newsletter that
he
owns, including
a special mention for the team leader involved. |
| A customer was unhappy because he believed that he had been given incorrect information about which class he should file his trade mark in. He filed in class 41 and a very strong Section 3 objection was raised against his trade mark application. |
A review was undertaken of the telephone conversation, but there was no evidence that the customer had been given incorrect information by Patent Office staff. Further investigation of the case discovered that the customer intended to file for the
same mark in class 16 for the associated goods. The Trade Marks Examination Team Leader contacted him
and said that if he did file in class 16 it was likely that a similar section 3 objection would be raised
against
his mark. He
was not happy
but said he would think it over before re-applying. The CEU Team Leader reminded her staff of the importance
of not giving specific advice on the registerability of trade marks or any specific classification.
These
queries should be passed
on to the relevant work area to be dealt with. |
| A senior Trade Marks examiner was sent correspondence confirming an agreed specification change. Attached to the letter was a TM31R asking for a certified copy to include the amended specification. The TM31R was removed and actioned before the specification
amendment was done, which meant that the certified copies were sent out with the wrong specifications. |
The examiner contacted the agent and apologised for this error and said that the amended, certified copy would be sent out as soon as possible. The agent asked that in the circumstances, they should not be charged for the second certified copy. The
Trade Marks Directorate Liaison Officer with Document Reception has passed details of this case to Document
Reception for them to review. It is hoped that a procedure will then be put in place to try and avoid
this issue
happening again. |
| A customer complained because when he searched for some Designs on the website, not only did he not receive any results, but found the system to be sluggish. |
A call was made to the IT Helpdesk and they said that due to the excessive use of the search service on that particular day, the web server could not cope with the demand and Network Services had to restart it. All databases were unavailable for about
18 minutes. This information was passed on to the customer. |
| A customer was unhappy that our website was not available 24/7. |
The IT Helpdesk Manager informed the customer that, for operational reasons, this free service could not be made available 24/7 at the moment. |
| A customer was unhappy that the e-TM3 notes stated "The trade mark is being used by the applicant or with his consent. She felt that this should be gender neutral, either just the applicant or his or her etc. This
appears to have
just been an omission when it was typed. |
The e-TM3 notes were amended to:- I confirm that the trade mark is being used by the applicant, or with his or her consent, in relation to the goods or services stated, or there is a bonefide intention that it will be so used. |
| A customer was very unhappy as he had very little knowledge of trade marks and was guided by the Central Enquiry Unit (CEU). He had spoken to four different advisors and followed their instructions, but his mark was still objected to. None of the advisors
informed him about the Search and Advisory Service (SAS). |
This issue was originally reported in the December Feedback Report. The CEU Manager has reviewed the telephone recordings, discussed this complaint with her staff and highlighted areas for improvement. The applicant has now applied for a hearing to try and overcome
the objections raised against his application. |
| A customer was very unhappy when she discovered that her personal address details would be published on the internet and could be found by searching on most search engines. She requested that her personal address details should be removed. |
Following telephone conversations with the customer, a the customer feedback co-ordinator explained what could be done and how long it would take. In this case it only took a week and the customer was very pleased with the way that the Patent Office had responded
to her request. We have informed customers that their personal address will appear on our website and
can be searched for, using most search engines. However, we are going to look at this information on
our forms/booklets/website
to see
if any improvements
can be made to the information we have given customers on this issue. |
| A customer complained to a Trade Mark examiner that she had used our website to search for any similar trade marks but did not find any. She applied for her mark and the examiner raised three similar marks as citations against her mark. |
This issue was reviewed by the Assistant Head of Trade Marks who explained to the applicant that if they had used our search facility correctly and taken account of all of the advice on our website, then they would have found the additional conflicting trade
marks. However, Sarah did raise the point that there was nothing on the search pages that highlighted
the fact that the search systems were not comprehensive tools. It has now been decided to add the following
sentence
to all the Trade
Mark search
pages "You should, however, note that this service has not been designed as a comprehensive trade
mark search facility and should not be used to determine conclusively whether a conflicting trade mark
already exists”. |
| An applicant asked if someone could tell her which edition of the Nice Classification the "Classification Search" on our website was based upon. |
Details were passed to the Classification Manager, who informed the customer that the Classification Search database on the website is in line with the 9th edition of the Nice Classification, which came into force on 1 January 2007. |
| A customer was put through to a member of the CEU team. He was most unhappy because he had registered a mark in 2001 but an identical mark for the same services has been registered in OHIM, several years after his mark was registered. |
The system was explained to the customer by the member of the CEU team. He was under the impression that he had bought the rights to the mark, but now thinks it was a waste of money as someone else has come along and registered an identical mark. He wanted to know what we could do about it. It was explained that he must enforce his own rights and that he should contact a trade mark agent. The customer said that he did not have the money to do this. He believes our system
was seriously flawed and he was unaware of any need to keep an eye on other marks, registrations etc.
The company using his mark is a large company in the US and he believes it is simply a "David and
Goliath” situation,
and does
not think he stands a chance against them. He hasn't the money to employ a search service or employ
a trade mark agent. Although there is information relating to this issue on our website and in our literature,
this will be reviewed
to see
if it can be made more prominent and easier to understand. The customer wanted to make an official complaint
so was directed to our complaints procedure on the website. |
| The Head of Trade Mark Practice visited a firm of agents to discuss and explain the section 5 proposals. Whilst there he received a complaint that the trade marks area was difficult to contact and speak to by telephone after 4pm on a Friday. |
Our published business hours are that the Office is open between 9am until 5pm Monday to Friday to deal with any telephone calls, and consideration is being given to extending this to 5.30pm. It wasmentioned this issue at a recent Team Leaders’
meeting at which he emphasized to all Team Leaders that they should ensure there was sufficient staff
available to deal with any telephone queries during our stated hours of business. |
| A customer was unhappy and has requested a refund of the application fee. His mark was only filed after he searched for conflicting marks on our website and only found one withdrawn mark. The Examiner cited 5 earlier marks, 3 of which could be picked up by the
new (beta) advanced search facility. The applicant did not think that he was given sufficient information
to make an informed decision as the new search function was not clear. |
This issue was reviewed by the Assistant Head of Trade Marks who explained to the applicant that if they had used our search facility correctly and taken account of all of the advice on our website, then they would have found the additional conflicting trade
marks. |
| A customer could not find the consent information on our website, even though they were directed to the correct page, they did not see the "see also link" on the right hand side. The customer called back and said that they did not find the
website very customer friendly. |
A member of the SAS team directed the customer to where the consent information was on our website. Trade Marks SAS and Patents SAS are reviewing the website pages to see if improvements can be made to their website pages, to make it easier for customers to
find information relating to the SAS Teams. |
| A customer contacted the Customer Feedback co-ordinator about a letter that he had received from a company based in Birmingham asking him for £100.00 + vat to protect his name "Emission Master” from a dilution of the mark due to some
new EC legislation, whereby the UK is to abolish their practice of conducting a search to ensure newly
filed trade marks are not identical or confusingly similar to any trade marks that already exist on
the UK and/or
EC Trade Mark Registers.
He wondered
whether or not this was correct. |
The co-ordinator asked the customer if he would send a copy of the letter to the Office for us to review. After looking at the letter, it was explained to the customer that there did seem to be a number of inaccuracies in the letter and that it would be passed
to a more senior officer to consider what action should be taken. The feedback was passed to the Head
of Trade Mark Practice who wrote to this company highlighting a number of inaccuracies in their letter
and asking
them to correct them.
Staff
have
been asked to report any further examples of this letter or any thing similar to the Customer Feedback
Officer. |
| A customer telephoned for help because he had difficulty navigating our website and found it very confusing. He wanted to find the relevant forms and fees information for UK, OHIM and Madrid application forms. |
The customer was directed to where the information relating to the various forms and fees was on our website. A suggestion is being considered to add a link to the website page that has a list of all the UK forms and fees. The link would
be to a page on the website informing people how to file for a Community or International trade mark.
This page would include details about the forms, how to complete them and where to send them. |
| A Trade Marks Pleading Officer received the following complaint from a customer (not an agent) who rang to say they found our website very difficult to navigate, were unable to find what they were looking for and had to resort to calling the office to be directed
to pages relating to the opposition process. |
The Head of Law Section and the Internet Development Manager have both been informed that this is not a "one off” complaint. Law Section staff have confirmed that they have had a significant number of complaints from customers who
are having difficulty navigating their way around our new web site. The Law Section manager has agreed
to encourage his staff to inform the Customer Feedback Officer and the Internet Development Team when
they receive
negative/positive
feedback from
our customers relating to the new website. |
| A call was received from a customer who was concerned that he could not open certain e-mail attachments - they showed what he called an error. He did not have the Wordpad package on his PC, so he could not open them. He thought that we were trying
to tell him that there was a problem with his applications. He phoned his bank and they told him the
money had not been taken, which added to his concern. |
It was explained to the customer that his applications had been reviewed and that the finance team had authorised collection of his fees. The customer was asked to forward the mails to the Trade Marks IT Advisor and he would copy them across to a WORD
document and return them. This has been done.This
issue has been escalated to the Head of Registry Practice, who intends to raise this issue at the next
Trade Marks Senior Management Group meeting, to see if a solution can be found to the problem, which
is causing difficulties
for a
small number
of our customers. |
| The agent was unhappy that we had taken four months to reply to their letter. |
The examiner apologised for the delay and any inconvenience caused. The mark has now been published. This issue is being looked at by the New Applications Manager to ensure that the same mistake is not made in the future. |
| The applicant was unhappy that there had been a three week delay in publishing her trade marks. |
The examiner apologised for the delay and any inconvenience caused. His line manager has been informed and is satisfied that this is an unfortunate one off situation. |
| The agent was unhappy that the letter which informed him of the cases to be discussed at a hearings session only listed the application numbers and did not include the agent’s reference numbers for these applications. |
The Hearing Clerk contacted the agent and explained that the present IT system used to compile these letters does not contain the agent’s individual references. These would all have to be inserted manually into the letter and would be a very
time-consuming exercise for the Hearing Clerk to undertake. |
| The applicant was one of a number of customers who have had difficulty finding the "Consent Details" on our new website pages. |
The applicant was sent a copy of the "Consent Details" information. A review of the "After you Apply" pages on the TMD website pages has been undertaken and improvements have been put forward to make the consent
details and other useful customer information easier to locate. |
| The agent could not understand one of the paragraphs on the examination report which related to the division of a series of marks. The wording did not make much sense if there were only two marks in the series. |
The examiner was also a little confused by the wording and said that he would fill in a customer feedback form to highlight this issue. The Deputy Head of TMD Examination was informed and after carefully considering the wording, agreed that it was
a little confusing. As a result the wording in this paragraph has been amended and is now much
easier to understand. |
| An applicant was unhappy that a Section 3 objection had been raised against her mark by the examiner. She said that she had spoken to a helpful man on our helpline before she filed and that she was told that "as it is not registered”
the mark is acceptable. |
The examiner explained that it is not as simple as that. There were two tests. The first test was to establish if anybody else had the same mark and the second to establish if the mark functions as a trade mark. The examiner explained what
makes a Trade Mark acceptable. The applicant understood the explanation and could see why the objection
was raised. The Central Enquiries Manager has been informed but unfortunately there is a fault with
the telephone
message recording
system,
so it has not
been possible to listen to the applicants telephone conversation with the member of staff. |
| An applicant was unhappy that we had raised an objection against his mark which was for a "repeating pattern”. He said that he had called for advice on how to fill in the application form and he was told to insert a "repeating pattern".
He said that he called the general office number. |
The examiner explained the objection to the application and said the concerns would be passed to the Customer Feedback Officer. The Central Enquiries Manager has been informed but unfortunately there is a fault with the telephone message recording system. It
has not been possible to listen to the applicant’s telephone conversation with the member of staff. |
| Three customers were unhappy that their personal address details could be viewed on the internet, and all asked for them to be removed as soon as possible. |
All of the customers were informed that we had highlighted this issue on our website on the trade mark application form notes and in our "how to apply for a trade mark” booklet. All three customers provided alternative address details
to replace the ones shown on the Internet. They were told how long it would take for these details to
be updated and all of them were pleased with the way and the speed that their concerns were dealt with. |
| The applicant filed an electronic Trade Mark Application for a series of two marks, one was "word only" and the other was a "stylised word". The applicant had put the "word only" mark in the "interpretation
of a mark" box. |
There appears to be a fault with the electronic form system when applicants apply for a series of marks when one is a "word only" mark and the other is a "stylised word" only mark or a "device" mark. This is already being looked into and the next time that the electronic application form system is reviewed this
issue will be dealt with. |
| An applicant was confused by the wording on the Trade Marks Registration certificate. On the front sheet it states "the mark shown below has been registered under No 2387540 as of the 21 March 2005”. This date is actually the filing
date and the registration date which is shown at the end of the certificate is actually 9 September
2005. |
It was explained to the applicant that their rights started from the date they filed their trade mark which was 21 March 2005, although it was accepted that the wording was a little confusing and would be reviewed. This issue has been considered by the Head
of Registry Practice, who has suggested improved wording to go on the Registration Certificate. A Change
Proposal will be raised to put this change into practice as soon as possible. |
| The agent was unhappy that the examiner had raised citations against his application. He said that his dealings with the office had been "a very unpleasant experience". |
The examiner thanked the agent for his letter and discussed the citations with his Team Leader. The Team Leader agreed that the citations were valid and wrote to the agent. He explained why the citations were being maintained and suggested that the
agent applied for a hearing to discuss the citations. The citations were valid citations and the agent
has applied for a hearing to discuss the citations. |
| The applicant was unhappy that the examiner had raised a section 3 objection and a series objection against her application. He said that he has called the Central Enquiry Unit before he applied and he states that he was told that the series of marks
was acceptable. |
The examiner explained that only the person examining her trade mark could make these decisions. The examiner also suggested that in future the applicant might want to use our Search and Advisory service (SAS). The applicant was unhappy that they were not made
aware of the SAS service when they initially called. The Central Enquiries Manager has been informed
but unfortunately there is a fault with the telephone message recording system. So it has not been possible
to listen
to the applicant’s
telephone
conversation with the member of staff. |
| The agent was unhappy that we were no longer Accepting colour claims for marks. He also was questioning our interpretation relating to the old Rule 5 (3). |
One of the managers in the New Applications Team replied to the agent explaining our practice on this issue. They also said that the issue would passed onto the Customer Feedback Officer for them to consider. This issue has been considered by the Head
of Registry Practice. Having carefully reviewed the agent’s comments it has been decided that there
will not be any change to our existing practice when dealing with colour claims. However, if the agent
simply wishes
to identify the colours
in the
mark by reference to colour names/codes, then this could be regarded as a part of the mark itself and
published / entered in the register. |
| An agent wanted to do a proprietor search for OHIM marks and was disappointed that he could not do this on our website. Our website only allows a proprietor search to be carried out on UK trade marks. He thought that it would be a useful tool if he could search
for the proprietors of International and Community trade marks. |
At the moment it is only possible to do a proprietor search for UK trade marks and we do state that International and Community trade marks are not included in this search. Following further research on this issue it was discovered that both the Community Trade
Mark Office and WIPO have search systems on their web sites that would allow people to do proprietor
searches. Links to these other websites on our proprietor search page, so that customers can also do
proprietor searches
on Community
Trade Marks and
International Trade Marks if they want to, is already on a list of future. I.T. improvements |
| An applicant was unhappy because when they did a Search for designs on our web site in class 6 sub class 13. a "no results" message came up. |
The examiner informed the applicant that there were designs in this class and that they should try again. The message probably came up because there was a fault with the search system. The examiner raised a helpdesk call and has suggested that perhaps the message
should say "there s a fault with the system" please try again later. Rather than showing the
message "No results". This issue will be considered under a Change Proposal that has been
raised to look
at certain
Designs improvements. |
| The applicant said that he had requested deferment of his design application and the Office did not inform him when the case was in order. |
The deferment system is part of the new Designs legislation. As a result of this feedback, the Designs Team is now issuing a letter informing applicants when their case is in order. |
| An agent was unhappy that she had received a number of examination reports that had classification objections. She had filed applications for goods in class 2 which transferred to class 1 on 1 January 2007. She felt that she should have been made aware of these
changes and other such classification changes. |
The agent was told that these changes were highlighted on our website prior to 1 January 2007. The classification changes were just part of the usual changes that WIPO make every 5 years. The agent asked if companies which make large numbers
of applications each year could be notified prior to the introduction of these changes. While it was
accepted that this information was publicised on our website and that this is a regular 5 year occurrence,
there is
always room for improvement.
One
possible idea might be to send an e-mail to all of the people who have signed up to our e-alerter system,
every time there is a significant change in policy or practice etc |
| The applicant was unable to find the cross-search list on our website. |
He was given instructions on how to find it but was shocked he had to click on the following links:The
Decision Making Process How we classify Cross searching, Using
the Cross-search list. He did not
feel that this part of the website was user friendly. As result of this feedback along with a few other
similar concerns relating to the classification information on our website, the Classification Manager
is going
review all the classification
information
on the website to see if it can all be brought together and made much easier for customers to find and
understand. |
| A customer complained that we had not applied funds from his Deposit Account to pay Patent International (PCT) fees quickly enough to avoid late payment penalties. |
The customer was informed that we had alerted him to a low balance in his Deposit Account at the earliest opportunity and faxed him clear instructions about what he should do. His failure to follow that guidance and give us prompt instructions about
the application of funds from his account had led to the legitimate imposition of late fees. |
| At the Trade Marks Patents and Designs Federation (TMPDF) meeting, complaints were raised from companies which have multiple premises. They reported that receipts were being sent to the incorrect office, whereas the address for service had been specified
on each application. |
Finance was unaware of the specifics of the complaints, so requested further information from TMPDF. To date no reply has been received. |
| A problem had arisen with a Trade Marks caveat response. The agents believe the response was incorrect and had not been issued on time. |
Upon investigation, it was discovered that the response was correct and had been issued within the agreed timescale. A clerical error had resulted in a second caveat response being issued, for which an apology has been sent. |
| A customer was unhappy with the service he had received from a member of the CEU team. |
A CEU Oficer contacted the customer by e-mail with an apology who was content with the response. The call was tracked and the team leader held a one to one meeting with the operator. |
