| You said our Formalities letters now specify periods for reply that take into account excluded days (e.g. weekends and bank holidays)
when calculating reply dates and this is causing you problems because your diary system does not take
account of excluded days. |
We decided that this issue should be submitted for discussion at the next meeting of the Patents Practice Working Group in order to canvass the views of other patent professionals. |
| You said that you were very disappointed that your patent application would not be searched. |
We reviewed the patent application and it related to unpatentable subject matter. A letter was sent explaining our procedures for not searching unpatentable subject matter. |
| You said that a translation objection raised by the office was unwarranted and vague. |
We apologised for the errors made and the inconvenience caused and confirmed the original translation filed did meet all requirements. All caseworkers have been reminded of the correct practice and have
been asked to be more specific in the phrasing of objections. |
| You said your Registered Trade Mark (RTM) was being used by third parties in patent applications and that the applicants were not identifying the trade mark and asked that patent examiners ensure that any such references be removed or identified as a RTM. |
We reminded patent examiners about the practice in respect of the acknowledgement of trade marks in patent applications, which stated they had to be acknowledged or removed. |
| You said you thought the office had disclosed details of your patent before it was officially published. |
We assured you the UK Intellectual Property Office did not make any patent available to the public until after it had been formally published. Publication normally takes place about 18 months from the filing date provided a search has been performed. |
| You said we had not replied to two letters that you sent to the Office. |
We apologized and said the Private Applicant’s Manager would review the application and reply immediately to any outstanding issues. |
| You said you felt the period between the issue of the letter and the Preparations for Publication date are Complete (PPC) date, within which to withdraw an application was to short. |
We explained that the letter should not be used as a reminder and was only intended as a notice of publication. |
| You said our website search system did not find the conflicting marks highlighted in our exam letter. |
We have added a new internet search guide on our website to help you search for conflicting trade marks. |
| You said search engines like Google were displaying your personal address details, which they extracted from the Patent Office website. |
We removed all references to your personal address and replaced your personal address with an agreed alternative address. |
| You said our Search and Advisory pages on our website were difficult to find. |
We revised our website pages and links, so that the Search and Advisory pages were easier to find. |
| You said our new notification letter was ambiguous. |
We have simplified the letter and it is reviewed regularly to see if any other revisions are necessary. |
| You said the statement of novelty on a design on the Designs Database was difficult to read. |
We sent you a copy of the statement and we are looking at ways to make the statement easier to read. |
| You said you were disappointed that under the 1938 Act you could not appeal to an Appointed Person and the only appeal route available was an appeal to the High Court which was an expensive option. |
We informed you that this case had been carefully considered and that the advice given was correct. Any appeal from the decision in opposition proceedings could only have been made to the High Court. |
| You said you had not heard anything about your trade mark for a few months and wondered if there was a problem with it. |
We searched for the trade mark and found it had been incorrectly filed away. An apology was given for this delay and the application was made ready for publication immediately and procedures were reviewed to try and ensure that this did not happen again. |
| You said it was a waste of resources and money to keep on sending the same 'warning' enclosure relating to trade mark register services to trade mark agents and attorneys. |
We explained the background to this initiative, including the methods used for sending out the warning enclosures and how the recipients were targeted and this dealt with your concerns. |
| You said it was difficult to find information relating to the Trade Mark Rules, directions on hours of business s.80. and said this should be published by the Office on our website. |
We reviewed this issue and agreed that this information should be made available on the IPO website. A review of our hours of business is currently being undertaken and this is expected to result in the placing of all our hours of business, for the various classes
of business to
be put in the same
place on our website. |
| You said you filed for a trade mark and decided a few days later to withdraw the trade mark, you were unhappy to find references to the withdrawn trade mark were still captured on our database. |
We gave a full explanation as to why the information was captured and gave the contact details of managers in the relevant work areas, in case this issue needed to be pursued any further. |
| You said it was difficult to find an example of an acceptable consent letter on our website. |
We directed you through the various screens on our website and showed you where the consent information could be found. |
| You said it's great having the option to file on-line but for those who prefer the certainty of a paper copy it would be really helpful if the forms (e.g. TM3) were available in a word format. |
We have made all of the trade mark forms available in a word format on our website apart from the TM7. |
| You said you could not find any details on our website relating to the new section 5 changes due to commence in October 07. |
We informed you that information relating to the new section 5 changes had been made more visible on our website and could be found on the trade marks home page under the “See Also” link under “the changes to the examination process
on relative grounds”. |
| You said you wanted to know why the Fee Sheets were not available in Word Format. |
We advised you these forms were being revised. This has been completed and the Fee Sheets are now on our website in Word Format. |
| You said you could not understand why specification objections were raised against your application, when you had copied and pasted the classification information from the IPO website. |
We reviewed this issue and The Head of the Classification Team is looking at this issue along with a number of other classification issues to see if improvements can be made to the information on our website. |
| You said you tried to file an application electronically from abroad in March 2007. For various technical reasons, you were not able to file a mark with a logo this way. |
We contacted you to inform you we were aware of some of the shortcomings of our e-filing system and this feedback would be considered as part of e-filing review. |
| You said when running a trade mark search which produces no hits, it would be useful if the message which tells you the search was unsuccessful could also show the searched term. That way, a record of the search and results can easily be printed off. |
We are carrying out a review of our website and this feedback will be covered as part of that review. |
| You said the new designs Form 2A was very complex, even after reading the notes it was still difficult to fill in. |
We talked you through the form, explaining the various sections. |
| You said you were unhappy about the way that WIPO had dealt with your designation. WIPO felt some of the services in class 37 were proper to class 40 and they automatically took the fee for this additional class without your agreement. |
We informed you in June 2003 the IPO had reviewed its arrangements concerning the payment of fees to WIPO via a UK deposit account. Customers that operated deposit accounts were sent a letter detailing these changes; this issue was also highlighted on our website. It was standard
practice for WIPO to deduct fees for the addition of classes
they felt were necessary. |
| You said you he did not think that you should be put to the expense of defending your trade mark in invalidity proceedings. |
We explained how the invalidity process worked. The Chief Executive also explained he could not comment any further on the case as it was the subject of legal proceedings. However, once the proceedings had been concluded he would be prepared to consider any concerns that were raised. |
| You said you were unhappy about the delay in the issuing of a hearing officer’s decision. |
We investigated your case and agreed there had been a totally unacceptable delay in the issuing of the Hearing Officer’s decision. The Chief Executive apologized for the inconvenience that this delay had caused. |
| You said you were unhappy because the Registry had accepted a similar trade mark to your unregistered trade mark. |
We explained that Section 5 of the Trade Marks Act 1994 provides the grounds on which objections are taken on the basis of earlier trade marks. The meaning of an “earlier trade mark” mainly relates to applications and registrations for UK, International, Community (or International Community) trade marks which have an earlier/registration date than that of
the trade mark applied for.
There was no provision under the Act to cover unregistered trade marks. If the rights of an unregistered
trade mark are to be defended, then this will have to be
done through the
Courts or through opposition
proceedings. The contact for the Head of Head of Law Section was given in case any further opposition
information was required. |
| You said you were unhappy about the time it was taking for a hearing officer to issue a written decision. |
We apologized for the delay in issuing this decision. Decisions are usually issued no more than six weeks from the date that the request for written grounds was received by the UK-IPO. Unfortunately, the hearing was complex and lengthy and dealt with a number of issues, which the hearing officer wanted to fully explain in their decision. This combined with the fact that the hearing officer was also engaged in other time critical duties, meant on this occasion, it was not possible for the 6 week target to be met. |
| You said you were unhappy the international trade mark that you filed, had met with a number of specification objections, which might involve adding additional classes to the application. The international trade mark covered the same services as the specification listed on the earlier UK registered trade mark and you wanted to know why the specification objections had been raised. |
We explained that there had not been any classification changes affecting this case and the correct specifications are the ones now proposed by WIPO. When the UK trade mark was applied for in January 2002 we failed to correct the specification, as there
were some elements that were proper to a different class. The Chief Executive offered his sincere apologies for these errors and any inconvenience caused. You were told if you had any further concerns on any of the above, then you should contact the Head
of Trade Mark Examination who would happy to deal with them. |
| You said you were unhappy about the slogan/ strapline that appear on the Intellectual Property Office website i.e. “….for creativity and innovation”. You felt it was misleading, overtly political and in the context of the Intellectual Property Office contrary to the public interest and should be removed. |
We explained that The Intellectual Property Office was recently mentioned in the Gowers Review of Intellectual Property and this review covered various innovation issues.To mark this new era the Patent Office has changed its name and included a strapline to recognise the importance of all forms of Intellectual Property for successful and competitive UK businesses and better reflect the breadth of services the Office provides its customers. |
| You said receipts were being sent to the wrong address for service. |
We requested further information in order to investigate this issue and if necessary make changes so that this error does not happen again. |
| You said the International Applications Unit did not contact you before your application was abandoned. |
We reviewed our practices and all the standard receipting/notification procedures were carried out by the International Applications Unit. |
| You said we had not included descriptions, claims and abstract in the receipt we issued in your patent application. |
We reviewed our practices and on this occasion we failed to tell you these items were missing from your application, we were able to give them the same filing date as the application. Staff have been reminded of the need to phone applicants ASAP if essential documents are missing from an application. |
| You said we had not replied to your requests about how you could renew your EP(UK) patent. |
We informed you that a member of the Finance Section faxed you details including the amount due, the relevant forms and recommended methods of payments including bank details. They also explained that the payment details could be found on our website. However, the Chief Executive was concerned that you telephoned our finance department to request a fax with this information but got not reply. You were asked if you could provide details of the number you called so that it could be investigated. The Chief Executive apologized to the applicant for any
difficulties he had in
contacting the office. |
