| You told us, "I am writing to request the return of my application fee, which I paid to have my company name registered as a Trade Mark. I had a lengthy discussion with your help line, and was advised, that as I had been trading for 15 years, it may be
granted. I am now in receipt of your letter dated 20th January and find that my application has been rejected under the trade mark act section 3(1) (b) and c. I would
have expected that when I enquired on your help line the assistant would have been suitably trained and be aware of the “acts”, and advised me accordingly, thus preventing
me from making the application. Your letter states that I can discuss the matter with the examiner, and if I wish to proceed should pay a further hundred pounds within
14 days. I have since spoken to him and it would appear that if I meet certain criteria it could be granted, but again all very vague. In my opinion, this pay upfront,
sent rejection letter, then advised it may still be possible, but to actually find that out, more money is required, and if rejected again, there is always the appeals
procedure, which no doubt carries an additional fee, is extracting monies under false pretences. May I suggest, that as a Government Department, and taking into consideration
the current financial constraints that your procedures are simplified, your advice improved, and your staff trained with full knowledge of “the product”. There are
many reasons, as to why I am requesting a refund, mis-sold, not fit for purpose, the list is endless, suffice to say I would like a refund at your earliest convenience." |
We explained that we have listened to the telephone calls made to the Information Centre and have reviewed the calls made to it. We have concluded that the advice given was appropriate. The application file has been reviewed and the objection raised under Section 3(1) (b) and (c) of the 1994 Trade Marks Act is valid. We did give you the option to attempt to overcome the objections raised, but I understand that you declined that option. It was clear in our literature and the information given by our Information Centre that the fees are non-refundable. The Right Start service, which you utilised on this occasion, is a split-fee option which was introduced to be more accessible to our core customers (SMES). We fully appreciate your frustrations not be able to protect the trade mark you applied for. However we have to apply the legislation and resulting case law in assessing applications. In this instance, I think we did that and am therefore unable to provide the refund you requested. |
| You were unhappy with the response that you had received from the private applicants unit in relation to your application. |
We wrote to you to explain, "I am sorry that you are unhappy with the service we provided. Patent applications filed by unrepresented applicants are initially assessed in our Private Applicant Unit (PAU) before they are passed on to the relevant technical examiner. This is to assist the approximately 30% of patent applicants who choose to file an application themselves without the assistance of patent attorneys. You will understand that not all applicants are as experienced in patent matters as you clearly are and do appreciate this sort of guidance. If the PAU examiner believes that the application may not meet certain key requirements, such as sufficient technical disclosure, they will often contact applicants to discuss the matter with a view to assisting them quickly and efficiently. It is a service we provide to help applicants from potentially wasting time and money (This is not binding). If the applicant is happy and wishes to proceed, the application will be forwarded to the appropriate technically expert examiner. I can see you feel strongly that the PAU examiner in this case spoke inappropriately to you about your application. The examiner was not aware of your experience in this matter. I regret that his use of the words "would be parked" caused you offence. I believe he intended to say your application would not proceed until the application fee paid. I am sorry that this was not made clear. I take your point about security implications in discussing non-published patent applications, but on balance I do not consider the risk any greater than using other communications
such as postal service. My staff choose the most appropriate means of communication based on efficiency, effectiveness and security. I think your letter serves as
a useful reminder that we should stay vigilant on these matters and we will refresh our guidance to staff on this point. Thank you for drawing it to my attention." |
| You said, "Hi I have been wait for patent review for months. My examination was meant to be no later than the 21st August 2010, then I e-mail you a little after asking where what's going on, you say you had a back log. Now been long time since then for you going to examine my Patent or do just like take my money for nothing. I could bring millions of pounds in the UK with this and boy! We need and I do!!!!!!! E-mail back as soon you can." |
We explained your examination was delayed due to back logs and that we generally examine applications in order of their priority date, and there are quite a few ahead of yours in the queue. We then explained how you could accelerate your examination. |
| You complained about the handling of your PCT application. The application had been captured twice by the International department, which meant that two numbers had been generated and two sets of fees had been taken from your deposit account. You had to then request to withdraw one application and request a refund. Only the search fee has been refunded so your firm has lost 822 Euros. |
We explained that our system does detect duplicate submissions but that there was a slight difference between the 2 applications. We arranged for a full refund to the deposit account as requested after contacting the ISA for clarification. |
| You were unable to renew your European Patent in France and Germany and asked us for advice. |
We provided you with the necessary information as required. |
| You told us, "You were unhappy about the lack of action regarding unsolicited mail." |
We replied, "Thank you for your e-mail of 24 February 2011. I would like to reassure you that the Intellectual Property Office takes the issue of protecting business from receiving any potentially misleading documentation extremely seriously. We are vigorously pursuing the concerns raised by yourself and other customers in relation to unsolicited mail with the department's lawyers, Trading Standards Institute and Companies Investigation Branch within the Insolvency Service. I expect decisions to be made as to what action might be taken fairly shortly. In addition, we will continue to issue the warnings you mention to our customers that
they may receive unsolicited mail and are making progress in our work to be able to identify and deter third parties who use automated systems to extract data, such
as your client's trade mark details, from our website. I hope you find this response helpful." |
| You told us, "I refilled Patent application. On 19 April 2010 I refilled, with further amendments 18 October 2010; I sent amendments and an illustration of an innovative glow bike to the patent office with the relevant forms. I haven't had a chance to follow-up procedures, because I was busy with two other patent applications, now the examiners are saying that they received the amendments on 19 October, but the patent office has provided no acknowledgement for the amendments. I know I sent the correct forms for all 3 of my latest applications roughly the same time including this application forms. I'm already stressed out overwhelmed with the effort the processes are taking from and I don't want to become anymore ill over further patenting issues and no appropriate assistance. I have had several phone conversations with the Private Applicant Unit relating to my latest 3 applications and not once was the question raised about refilling this application. I knew
I'd done so months ago. But with the amount of new fillings I had to produce the filling receipt was overlooked. I'm in the process of filling appropriate submitted
refilled amendments before the end of the month. I'm desperate now! I don't want to lose any more good Patent applications over disbelief technicalities. Please provide
assistance ASAP." On the 23 March 2011 you e-mailed to advise that inventors need more help with the main claim in their applications and sought further assistance
with regard to your application. |
We responded with regards to re-filing your application and issuing receipts. We also advised on what you should do now and gave advice on seeking professional help. On the 8 April 2011 we further replied that we recognise that not all applicants are able to use the services provided by patent attorneys and thus we endeavour to provide as much support as we can to all of our private applicants. We provided the contact details of the two examiners who were dealing with your case and encouraged you to contact them directly. |
| You were unhappy with the decision regarding your application. On the 14 March 2011 you wrote again to discuss an issue with a telephone conversation with a Patent examiner regarding your original application and now a further application. |
We responded to inform you that the decision has been passed to an experienced hearing officer. We assured you that the Hearing Officer for your case will have had no involvement so far with your application and will consider the objections afresh and in light of the arguments you put forward at the Hearing. The Hearing Officer will take into account that you are representing yourself and that you are dyslexic and will fully explain the procedure and what he expects from you at the Hearing. We cannot comment on whether the objections to your application are right or wrong because to do so would pre-empt any decision made by the Hearing Officer. Should you disagree with the outcome of your hearing you would have the opportunity to appeal to the High Court. |
| You were unhappy with the decision of the opinions officer with regards to your application. |
We responded by explaining how the opinions officer came to his decision regarding your request for an infringement opinion. The scope of protection afforded by any patent is, in accordance with the law, defined in the claims of that patent. The most important claim is usually claim 1 since this sets out the invention in its broadest form. Hence if claim 1 states that the invention includes features A, B and C then the protection provided by that Patent would extend to cover anything having all of those features. In your case the opinion examiner will have carefully looked at the words used in your patent. We then went on to explain the option to have a review of the opinion. |
