| The customer was unhappy with the response he had received from the office in respect of allegations about another person's website and the claims made on it in relation to patent protection. It was suggested that the office should take legal action. |
We explained that the office does not have the power to prosecute, this being within the jurisdiction of the relevant Trading Standards authority. We apologised that our previous communication had not made this point clear. We were, however, able to contact the party concerned and draw their attention
to the provisions of the patent legislation. This resulted in the removal of certain references from
the website. We also provided guidance concerning patent infringement. |
| The customer was unhappy with the examination process of his patent application. |
We explained that we considered the error made on the examination report to be so minor that it did not interfere with the application. We stated that we would not change the examiner. The customer was informed that if agreement could not be reached then he could request a hearing. |
| The customer’s complaint related to the actions of another jurisdiction in its capacity as International Search Authority. In particular, a search using the priority documents which originated from the UK as receiving office. |
We explained that the office had fulfilled its obligations in sending the priority documents to the International Bureau. We pointed out that the priority documents are not required for the purposes of the search. They are only required to prove that an application is entitled to its priority
date, should the need arise. However, we apologised as we had not fulfilled our obligation in sending
the results of the searches carried out on each of the earlier applications. We also pointed out that
it is not mandatory that the ISA takes into account the results of the earlier search. |
| The customer was concerned as the patent examination report under section 15A contained errors. It was issued to an incorrect address for service and the applicant's name and the reference number had been omitted. |
We apologised that the level of service fell short in this instance. The examination has been amended and reissued to the correct address. We explained that procedures have since been modified to automatically input data and staff have been reminded of the correct procedures. |
| The customer was unhappy that his patent had been published with an abstract title that he considered to be fundamentally different from the original title. He complained that the novelty of his invention was being undermined by this misleading abstract. |
We explained that the abstract is used to help examiners find the application when considering whether subsequent applications are new and inventive. The examiner considered his wording more suitable for these purposes. The customer's application remains unaffected by the addition of the abstract title. |
| The customer complained as a combined search and examination was performed, despite the customer’s stated wishes. The decision was then taken that the examination report could not be rescinded. This surprised the customer, especially as the report had not been published. |
We apologised for the oversight. A reminder has been sent out to the appropriate staff. We explained that the client could withdraw and re-file and this would not entail any loss of rights. The office would also be prepared to issue a refund on the earlier application. |
| The customer was unhappy because he could not find an old patent on the website. |
We explained that the patent was available via our website and guided the customer through the process. |
| The customer was unhappy as their patent search reports were incomplete, they had omitted a document that would have made claims obvious. If the customer had been aware of this they would have halted the application and not paid a further fee |
We apologised for not having found the document in the first instance. However, in the circumstances, it was felt that a goodwill payment was not justified. |
| The customer was confused by the advice he had received from a Trade Mark examiner. The customer requested an explanation of how his £200 had been used as he had not received the service expected. |
We explained the examination process which the application fee mainly related to and why the earlier marks had been raised. Advice was also provided on the options of deciding whether to proceed or not. |
| The customer explained that they wished to set up a website but had discovered that another company had registered their domain names. The customer asked whether the office could help release the domain names through Nominet. |
We explained that we have no statutory powers to deal with disputes over the ownership of internet domain names. We directed the customer to Nominet UK, The Uniform Domain Name Dispute Resolution Policy and the World Intellectual Property Organisation. We also gave the option of discussing the matter further with the Head of Policy and Practice at the office. |
| The customer was unhappy as his trade mark had been duplicated in the European Union through the Community Trade Mark system |
We explained that a Community Trade Mark registration grants rights extending to all 27 member states of the EU. They are registered by the Office for Harmonisation in the Internal Market (OHIM). The jurisdictions of the UK and OHIM are separate, we have no powers to act on behalf of rights holders to prevent registration of CTMs which are identical or similar to existing national registrations. The onus is on rights owners to protect and defend their own Trade Marks. |
| The customer contacted the office following our response to a previous complaint. The concern was that the Trade Mark examiner had relied only on a dictionary definition which would not have given the wider, cultural meaning of the word. The customer asked if the earlier decision to register the mark could be overturned by the office. |
We explained that there is a legal presumption that a registered Trade Mark is valid and as a matter of law, once registered, only a third party can apply for it to be invalidated. The IPO has no revocation power and we know of no other registries that do. However, we are conscious that some third parties may disagree with the registration of a mark on absolute grounds. In the case of absolute grounds only we are considering whether the fee for bringing an application for invalidation could be made freely or for more minimal cost. In the mean time a fee will still be charged. |
| The customer was unhappy with the objections raised against their Trade Mark application and requested a re-examination. |
We acknowledged that the examiner should have provided more information in order to progress the application. The objection for some goods was appropriate, but the objection against some others was waived. A fresh examination report was issued. |
| The customer was unhappy as the office had advised that the Trade Mark specification was incorrectly worded. |
We explained that decisions around the precise wording of Trade Mark specifications are normally left to applicants as they are best placed to define what they do. On occasion, however, clarification is needed where terms are considered vague. We proposed some wording that would enable the application to proceed. |
| The customer asked for clarification of an objection to their Trade Mark. The office's customer charter states that customers can expect a "fair and efficient" service. In this case the customer felt that they had not received this. |
We explained that although the objection raised may be described as brief, we do not accept that it was vague. We also explained that we believe the customer has been given sufficient time and opportunity to respond to the objections. We apologised that the process has taken longer than the customer would have wished for, but we hope that the customer can recognise why this has happened. |
| The customer was not satisfied with the response received following an earlier complaint and asked for further clarification and information. |
We apologised that the first response did not fully satisfy the customer and provided further clarification. |
| The customer had received incorrect advice on renewing and merging two Trade Marks. They were now in a position where two marks had lapsed and a payment of £350 is required to reverse the situation. |
We apologised. An extension of the period for filing a request for restoration was granted and an ex gratia payment of £350 made to cover the costs. |
| The customer filed for a Trade Mark and was surprised to hear about later distinctiveness objections. The examiner saw no lack of distinctiveness at the outset, and the customer does not believe that they should have had to pay again. |
We replied to advise the customer that the case will be reviewed. Given the circumstances, an ex gratia payment of £300 was agreed. |
| The customer filed a Trade Mark using the fast track system. On the basis of the examination report, undertakings were entered into. The customer was then notified of another conflicting mark. The customer wishes to be reimbursed for the official fees paid. |
An apology was issued for our failure to advise the customer of the earlier mark. The return of the official fees is being arranged as soon as possible. |
| The customer is unhappy with the way he was treated when possibly infringing another Trade Mark. The customer would like some answers on how and why they were able to do this. |
We gave the customer more general information on Trade Marks but advised that we cannot intervene directly in this particular case. The customer will need to consider taking legal advice on their options in the matter. |
| The customer was unhappy with the early termination of a contract with the office. |
We explained that this decision was taken following an expenditure review and as a consequence of budget constraints this financial year. We explained our view that there was no dispute over the termination of the contract. We had been satisfied with the performance of the company and that issue was not in question. |
| We received complaints regarding the IPInsight article relating to IP advisors. |
We explained that the article was submitted by a respected business writer. The article conveyed the writer’s opinion and was not intended to portray an official view. We regret that we did not make this clear when the article first appeared and this was not corrected until the following day. The article was removed when it became apparent that is caused offense. Measures are being introduced to assure the integrity and accuracy of all future articles. |
| The customer was unhappy that he was made to make an early payment for his patent renewal due to a back log of office work. The customer is not happy as the backlog is not his concern and customers should not suffer because of it. A full investigation into this case was requested. |
We explained that little can be added to what has already been communicated by our renewals department. Rule 37 (3) of the Patent rules 2007 sets out a legal schedule for the payment of renewal fees which we cannot depart from. |
