Customer feedback - January to March 2010

Compilation of informal complaints made by our customers during the period of January to March 2010. The complaint received is listed in the first column. Read across the row to find out our response and any additional measures taken.
Informal complaints Response and additional measures taken
You told us that, "A Trade Mark has been applied for and rejected by the examiner and you thought that the CEU had given registrability advice." We listened to the call and confirmed that this was incorrect but the CEU manager will speak to advisors through a one to one coaching session and remind them to cover key points when taking basic TM calls.
Commented "Just wanted to find patents in several areas of interest and found it totally confusing. No easy way for the first time user!" We asked for further information from the customer but did not receive a response.
Commented "I find the website bewildering. We asked for further comments from the customer to understand this comment further and they were received on 12/03/2010 and basically stated that the website seemed to be more aimed at advanced, professional people rather than just the day to day user looking for creative rights." I am sorry to read that you found it so unclear. I have tried to address each point you raised please let me know if anything is unclear. Comment 1 - ‘Far too much info catching your eye on each page... Well known that the simplest pages are the best... Step one; how to determine if your invention is a design or a patent easy follow on link.’ Our response – The website was redesigned last year to be a much clearer and an easy to use tool for customers. An external web company helped us with the design and consulted widely with both novice and professional users to try and build a website with clear information that was relevant to the user. This consultation also helped shape the page structure and what goes onto every page. I’m sorry that the pages seem to you to be so cluttered. My team constantly monitor customer feedback and will look to redress this issue if this is found to be a larger problem. Your comment about a first easy step to determine what type of intellectual property is your invention is a good idea and something that can be looked into. Comment 2 – ‘When it came to ordering information it was hard to find. It would have been far more convenient to have a section named beginners and step by step advice... With forms attached to each part.. It seemed a little confusing and awkward. Could have been more convenient. Searching for existing patents seemed ambiguous and bewildering...And I feel some help with search terms would have been very useful the present search terms are not for a novice they are for an educated representative...I feel that it's absurd that it's not easy enough to manoeuvre through without the assistance of a search expert...I would rather take my chances with my invention and production of said item than pay someone to do a search of the patent and design database. It should be a free service... From what I could see you have a 3 tier system to apply which is very time consuming and inconvenient... Seems like a poorly serviced area. Hope this has helped, and I hope your service is directed less at creating a job for the middle man and more at the creative people who want to apply’ Response 2 – Your idea of having a beginner step by step advice with forms attached is noted. In the initial redesign a separate area for forms etc was shown to be the best way forward. However again I will carefully monitor the feedback we receive with a view to relooking at this if this is found to be a larger problem. Your other comments seem to raise two main issues: a) The difficultly users have in searching through existing Patents - Searching through the patent prior art is certainly not an easy task and users of the Patent system are often encouraged to seek professional advice. We have a page on our website giving links to regional Business Advisors and Professional Attorneys. We also have details of PIN library locations where you can get expert help with searching. Despite offering other routes of help we do try to make it as easy for people with all forms of Intellectual Property who want to apply themselves. b) Actually doing this via our tool on the website - as far as actually using our "search patent" area you probably right in what you say, as it is not particularly intuitive unless you know what you're looking for and what the various search tools actually do. One of our Patent examiners who have seen your feedback on this area has commented that: it's very easy to get some quick results from using tools like esp@cenet but to get meaningful and reliable results takes a good understanding of patent documents, the databases they are stored in and the tools used to search through them. Getting this across in one webpage is not easy. In conjunction with the European Patent Office we provide our esp@cenet portal External Link to give the public quick and free access to the complex world of patent documentation. Our portal gives some information on searching in "Some things you should know about searching" External Link at the foot of the page. However, the European Patent Office's main esp@cenet news External Link page gives even more information including a "Patent Information Tour" External Link. In light of your comments we will look at our basic "Patent Search" page to see if we can improve it. Comment 3 - However upon finding and ordering forms they did arrive quickly. Response 3 – After the site has caused you some problems I was glad to hear when you eventually found the right forms that they arrived quickly. Again sorry for any problems you have experienced, I hope this response addresses the points that you have raised and we will look further at the issues you have raised.
Customer told us "I am a qualified engineer and I pride myself on my level of communication and understanding but I find the website to be difficult to understand in many places. It seems to have been reviewed by someone who already understood what was being written. If a lay person with no knowledge of the IP process were to review the site I feel you would be surprised how difficult it is." The site last year was split into a standard user and professional user type information with the content being adapted to suit the users better. I am sorry that this has not worked as well as I would of liked (that said I cannot recall any recent feedback highlighting this issue but I am grateful to hear about your experience). As you suggest one of the reasons may be content is being written by people who deal in Intellectual Property everyday even though it should be tailored for new users. I am in regular communication with the content writers and will raise this point to try and ensure information is reviewed (not necessarily by them) and new information is clear. I realise you cannot list all the pages you came across but in the future if you do use the site and any pages cause you particular problems please let us know and we will look to get those amended.
You informed us that, "I think the search report let me down quite badly because, although it was useful in identifying the majority of previous patents (cited documents), it appeared that the search only identified them in a general sense against my description. It clearly did not look into a detailed comparison of the ideas proposed versus the prior art, in a technical sense. The report concluded that my idea was not patentable. It was only after reviewing the cited documents in detail that I was able to conclude that my idea was different and inventive in a certain manner (in my opinion). A subsequent response from the SAS to my queries about the conclusion tended to support my view and I have proceeded to seek the support of a patent agent with the aim of making a patent application. In one sense it did help me make a decision to proceed with an application, but considering the cost of the patentability search (£940), for a retired person on a modest income, it was very expensive and it did not give me the correct answer (in my opinion). Prior to applying for the search, I had questioned various people at the SAS about the search and was given the impression that the outcome would be clear cut. Also, if the search had concluded what in my opinion is the right answer (that it is patentable), then it would have been invaluable in proceeding to the next stage after having submitted an application. That is, discussions with a manufacturer. For then there would have been only small doubt about the idea gaining patent protection. Hence a manufacturer would only have to decide if the idea was viable commercially. If it is, then I would be on a home run and the UK would have another invention to compete with the rest of the world. As you see, the search in my opinion has not been kind to me or the UK, at a time when there is a government drive on inventing and exporting technology. To further illustrate my frustration, the report had 16 cited documents and one of them was about a topic unrelated to my invention. So it seems clear the examiner has not looked at this particular patent in any kind of detail. If it was not for the fact that I have a certain amount of respect for the examiner's supervisor, and I had further communication from him, I might have pursued a formal appeal. Furthermore, the fact that there were so many cited documents suggests to me that the subject area is fertile ground, commercially. All the more disappointing. Furthermore I discovered a further eligible patent not listed in the SAS search report! I think that when there is a genuine feeling of dis-service, and on further investigation it appears to be justified, which I believe in my case it was, then there should be a further review of the submitted document (i.e. an appeal process). If justified, the decision should be reversed, since it has so much power when in commercial negotiations. What I do not understand is that if it costs £140 to process a patent application, which, over a longer timeframe, it comes up with a definitive result. And yet you can pay a lot more for this service where in fact the outcome appears to be very woolly. However, on the whole I have otherwise have enjoyed my dealings with the IPO and staff appear pleasant, helpful and professional. I thought the IPO would offer a very professional and reliable service, albeit at quite a high price. Hence my disappointment was even greater. No, I did not use any other search service, although I did find your esp@cenet site useful. I must admit a certain hesitation in making my views so clear, since I fear a certain backlash when my patent application goes through. That is, a bias to finding in favour of the conclusion of the search report." An email thanking the customer was issued on the 11.03.2010. The lead examiner for Search and Advisory Service issued a two page email to the customer discussing each point he had raised: Thank you for the response that you sent for our customer feedback request. I am sorry to hear that you were dissatisfied with the overall service that you received. I am writing to you to respond to some of the points that you raised in your feedback form. I am doing this after reviewing the case in some depth and discussing this case with the examiner who carried out this search and my comments below incorporate her observations as well. Firstly, it is probably worth me pointing out that it is true that a patentability search done by the Search & Advisory Service is more expensive than a search done as part of the statutory patent application process. However, it should be noted that the statutory search is heavily subsidised by later renewal fees that are paid on granted patents. This is to ensure that patent applicants are not dissuaded from entering the patent system in the initial stages when they will not have made any money from their invention, but they will pay renewal fees as that invention bears fruit, and they are in a better position to pay. As a result, the fee paid for a commercial (Search & Advisory Service) search must, and indeed does, reflect the true cost of the search far more than the statutory search. Please note that my estimate letter, dated 3 February 2010, did mention the differences between the two different searches, and suggested that a cheaper search could be done as part of the patent application process. There are many reasons why our customers choose to have a search done outside of the normal patent application process. This may include: speed of processing (10 days vs. about 3-4 months); wanting an idea about how patentable an idea is before spending significant amounts of time and resources on it; not needing to provide a full patent specification, including claims; provision of more information about the search, e.g. search statement, detailed field of search, discussion of documents found (none of which are provided on the statutory search report); and desire to keep their work completely confidential (when a patent application is made, limited information about that application is published, which some customers want to avoid since they do not wish this to be known to competitors). It is also worthwhile to note that when a search is done as part of the statutory application process, there is no significant dialogue between the examiner and the applicant at that time; it is only when substantive examination is requested (at a further cost) that the applicant is told exactly what the objections to their invention are, at which point the applicant is able to respond. Also, although a search on a patent application is a lot cheaper than a patentability search the actual time spent on both is roughly the same, and a patent application search will inevitably be more focused because a set of claims will have been filed. I am sorry that you were left with the impression that our search would provide you with a definitive answer about the patentability of your idea. The examiner has informed me that the reason for her relatively broad search was a result of the time that she had to carry out the search, and also because the description included several embodiments which made it difficult to determine what the essential features of the invention were. It is common in such circumstances for the examiner to carry out a broad search, and cite a large number of documents, since this will aid the customer in determining where his or her invention is likely to lie in practice. I note from the earlier responses that you sent that you appear to have used the results in this way. We agree that the examiner's final statement on patentability could have been misleading; it should have stated that the invention 'as defined by the search statement' was unlikely to be patentable, and I apologise for any confusion or distress that this has caused. However, as noted in the final paragraph of the discussion of documents found, it should also be noted that there are many patent documents (hundreds at least) detailing all manner of different designs of guitar tuning keys. Therefore there is at least a possibility, if a patent application was made, that an inventive step objection could be made by combining one of the cited documents with a document disclosing a tuning key mechanism like yours, but in a standard guitar structure. You also noted in your feedback and earlier responses that one document was not relevant. The examiner has informed me that she included this document so that you would be aware that the term 'tuning system' could apply to features other than tuning keys. She thought this would be useful to consider when drafting claims for any subsequent patent application. After considering your comments in your earlier emails and in your completed feedback form, it may also be worth noting the following: a UK patent will only protect your invention in the UK; if a document appears in a patent database it doesn't necessarily mean a patent has been granted for that invention; if a cited document is not commercially successful it does not make that document less relevant; and more than one patent can be granted for inventions whose patent specifications appear to be similar, as long as their claims are sufficiently different from each other. All of these points may be worth your consideration when deciding how to proceed now with your invention. Finally, the examiner has promised not to be biased against any patent applications that you file in the future. However, if you are concerned about this, it may be possible for the Office to find someone else to deal with your patent application. I hope that this email responds to most, if not all, of the concerns that you had about our search. We have taken these concerns very seriously, and I hope that my response has assured at least some of these. However, please do feel free to contact me if you have any other questions to ask or points to raise.
Enquired, "About the delay between search report and examination report (circa 5 years in this case), the fact that plurality, patentability and new citations were raised at exam stage which had not been identified at search stage, and that we appeared to be relying on the work of the EPO rather than carrying out the necessary work ourselves at the initial stages." We apologised for the delay and explained about our backlogs of work; pointing out that the section 20 date has been extended accordingly. We apologised that the citations and possible patentability problems had not been found at search stage, and agreed with the Agent that they should have been. We also explained that the citations raised were also cited in the WIPO report in October 2007, and had been found during the top-up search regardless of whether the WIPO report had been considered; the patentability objection would also have been raised regardless of the international report.
An, "Agent was unhappy with the wording of the EQ-NEW letter when the first exam was being chased." We agreed to forward to the head of formalities for reference.
You stated your major dissatisfaction with, "The amount of time it has taken the office to process his request for substantive examination. He believed that it was totally unacceptable for an examination to take this amount of time and was also annoyed that we are unable to give him an approximate timeline on when his application will be examined." We advised you could request accelerated examination with valid reasons but you considered this to be a waste of time as the office has no sympathy with the difficulties encountered by private applicants.
You were, "Complaining about the standard letter we issue if an examination has not yet taken place on an application." We, "Flagged the case and complaint letter to the Head of Administration Head of Department for advice on how to respond to the agent. The examiner spoke with the agent on 05/03/2010 and advised we would not change the wording of the letter but gave a better idea of when the exam is due to issue on this case and the agent was very happy with this."
An, "Agent is complaining that they have not yet rec'd their examination report." Response issued by Formalities.
An, "Agent was complaining about the length of time it is taking to receive the first substantive examination report." Response issued by Formalities.
An, "Agent is complaining about the length of time it is taking to receive the first substantive examination report." Response issued by Formalities.
You told us, "I have a letter from the Intellectual Property Agency asking for a fee of £220 for re registration of a Trade Mark. We do have a registered trademark. How did this company find out? I am sure this is a fraud, if they are using your data what are you doing about it?" We apologised that you had received unsolicited mail and made the customer aware of what we are doing to try and combat this using Trading Standards. We advised them of the renewal process also to prevent any mishaps in the future.
Customer advised "I just wanted to make you aware that we’ve received renewal notices/reminders from the following companies: Intellectual Property Agency Ltd: Jammin - £980.00, Aliza - £980.00, Chez Moi - £1280. CPA Global: Sandpiper - £424 x 2. Community Trade Mark Filing Support: Kiss It Baby - £573.40, Aliza - £573.40, Chez Moi - £573.40, Cherry Lane - £573.40, Hey Girl - £573.40, Match Club - £573.40, QD - £573.40. This amounts to £8,101.80 of requests which appear to be scams – do you have a website listing these companies/agencies to alert to any possible problems?" We responded, "We are aware of the instances of 'unsolicited mail' linked to renewal actions and applications on Trade Marks. Several warning notices/articles have been put on our website External Link relating to the issues. I will forward the details you have provided to the Officer overseeing these matters for information." Also responded on 25/03/10: We are aware that a number of companies are sending out Trade Mark/Patent renewal reminders. We would always encourage you to speak to your existing attorney before responding to such demands.
Alternatively, you can check the status of your mark/registration on our website, along with the proposed fees. Using your registration numbers on the below links will return you the desired information: Patents, Trade Marks. In addition to this, you could also raise Trading Standard's External Link awareness to the issue.
You informed us that, "This is the 2nd time this as happened, last time was about 2 years ago, same problem - same couldn't careless attitude from your office. Your www site is loaded with legal and 'ain’t we clever little sods information', but people like me [called ratepayers or taxpayers / your owners] just want a simple box to find out of if a TM name like Singer Sewing Machines is still registered. Just a simple box." We explained that a basic search is available but we had to take on board the intricacies of a Trade Mark to include goods and services.
Classification descriptions were queried. Audio cassettes for language teaching (09). Educational materials in the form of computer programmes for teaching languages (09). Educational materials in the form of pre-recorded audio tapes for teaching languages (09). Educational materials in the form of pre-recorded video tapes for teaching languages (09). This classification does not mention modern media such as DVDs, CDs, and digital audio and video files. This is not just an opinion video cassette players are no longer sold in shops. Can this classification be changed to Audio and Video media or include the modern types of media mentioned? The classification system covers all areas of goods and services but not all common terms are captured on the database. You mention the fact that DVD's, CD's are not present within class 9, they are, but not in the common abbreviation format you might expect, we have the terms: - Discs bearing video recordings (09) Discs for bearing sound (09) Discs for bearing video images (09) Audio compact discs (09) With regards to your admission that "video cassette players are no longer sold in shops" that is irrelevant for classification purposes as those goods are still proper to the class and need to be included in the list. As technology changes we update terms accordingly on our data base, but we also retain goods and services that are not so common place. We have taken your comments on board and will look to reflect these comments in future data base updates.