Processing an opinion request
Introduction
Arrival in the examining group
Enquiries
Refused and withdrawn requests
Drafting the opinion
Producing the final documents
Recording time spent
Previous section - Part I, Contesting an opinion
Introduction
1.This part outlines the procedures taken in examining groups to book in an opinion request in the group, to monitor its progress and the time spent on it while it is being processed, to produce and issue the opinion report and covering letter and to book out the request.2.After an opinion request on a GB or EP(UK) granted patent has been made to the Office, it is checked in Litigation Section for suitability and if acceptable recorded and either a pink file made up or the request is entered into PECS under the GB patent number. At present only opinion requests relating to GB patents will be put on PECS. All documents relating to opinions will be placed in a "Litigation " procedure on the dossier (see below)
3.If all is in order, the request is sent to the Deputy Director in charge of the opinion service for allocating.
Arrival in the examining group
4.On receiving the request, the opinions examiner who is to process the opinion instructs the group ESO to book the opinion into the group for action.
5.The ESO books the opinion into the group on PAFS using the following information:
- - Number: GBnnnnnnn.n or EPnnnnnnn from the case or opinion file cover (note there should be no space between the country code and the numerical digits, the GB application number with check digit has to be used and (UK) is removed from the EP number on the file cover)
- - Action Type: Opinion (preselected for EP numbers) Date: F17/77
- - Date: from the opinion file cover
- - Group:
- - Officer: Examiner
- - Heading (or Subclass after reorganisation): as instructed by the examiner
Example:
6.The target period for Opinion actions is 3 months from the F17/77 date.
7.Once this information is recorded the examiner should then put his or her details into the Patent Opinions database so that a) Litigation Section will know who to contact and b) at the appropriate time, letters and the opinion itself can be produced in the desired format with the examiner's name at the end.
8.To do this, launch the opinions document production system from the NAL window on the desktop by double-clicking on this icon.
9.The following user interface will appear:
[Button 'Maintain Documents' will be greyed out. It is only used by management of Litigation Section when creating new or editing existing document templates.]
10.To view or edit existing opinion records, press 'Maintain Opinions'. The first opinion record on the database will be displayed:
11.To display other opinion records, use the navigation bar at the bottom left to scroll through them:
12.Alternatively, use the 'Find Opinion' button by which you can search for an opinion record by Opinion No., Patent Number or Examiner Name:
13.To change the order in which the opinion records are sorted, press 'Sort Order' and select the desired order.
14.When the right opinion record has been found, press 'Edit Opinion' and enter the examiner details:
- - Examiner Name
- - Examiner Tel No ie the 4 digit internal number, eg 3509
- - Examiner Room No
15.Pressing 'Cancel' while editing clears and does not save the changes.
16.To save the details, press the 'Save Opinion' button. When you have finished entering details for the opinion, press 'Close Screen' and the display will return to the initial user interface.
17.To leave the database, select 'Close Access'.
18.If at any time you wish to see the details that have been recorded on the system for the opinion request, select 'Maintain Opinions' on the initial screen:
19.Different opinion records can be selected for display as explained in paragraphs 9 & 10 above. As well as the examiner details and Litigation Section Case Officer details, various dates are displayed. Date F17/77 filed, Date Refused and Date Withdrawn and Date of Opinion are self-explanatory. Date of Advert is the date the opinion request was advertised on the website, inviting observations. Date of Advert + 4 wks is the date the period for filing observations ends and Date of Advert + 6 wks is the date the period for filing observations in reply ends.
20.On the right hand side of the display are the details for one of the parties interested in this request.
21.To scroll through the Interested Parties on an existing Opinion record, use the navigation bar at the bottom left of the Interested Parties section:
22.To view all the existing parties on the opinion, press 'List All' and they will be listed:
Refused and Withdrawn Requests
23.If a request is refused or withdrawn before it is booked into the examining group, there is no action for the group to take. If a request is refused or withdrawn after it has been booked into the group, the Opinion action on PAFS should be Stopped by the ESO. If for whatever reason the opinion file is still within the examining group it should be booked out and returned to Litigation Section.
24.The examiner can start assessing the issues as soon as the case arrives. However, because observations on the request may be filed over a period of 4 weeks from when the request was advertised on our web site and potentially observations in reply can be filed over a period of a further 2 weeks, the examiner cannot complete the opinion until it is known that all the observations of both kinds, if any, have been filed.
25.There is a template for use in drafting the opinion and this is kept on the directory for opinions:
- - H:\Opinions\live\Letter Templates\Opinion Template.doc
26.This is 'read-only' and examiners should copy this template into their own private directory for their own use. It contains headings for the different aspects of the opinion. There is a heading Application for review followed by
Under section 74B and rule 98, the proprietor may, within three months of the date of issue of this opinion, apply to the comptroller for a review of the opinion.27.This only applies if the opinion goes against the patent holder and should be removed if not applicable.
28.Note that this will not be the final document as it has to be inserted in a further template, provided by the database, which includes relevant dates and details of the interested parties. The draft document should be saved as:
- - H:\Opinions\live\Draft Opinions\nnyy
29.Where nnyy is the opinion number nn/yy without the forward slash, eg 0105.
30.If the opinion is to be revised while in draft form, the reviser, eg Deputy Director and/or Hearing Officer can access this file directly.
31.When the opinion is complete, the examiner should insert the file into the database template as follows.
32.Launch the Patent Opinions database. At the initial interface: press 'Merge Documents' and the Merge Standard Documents form will be displayed
33.Enter the Opinion Number, and select the Document Name from a drop-down list. There are 33 documents to choose from, but the one you want first is at the top of the list:
34.Click on Examiner's Opinion Document. [None of the €˜Mandatory fields if checked' fields will be checked for this document, so ignore them.]
35.Click in the white box alongside €˜Default recipients for selected letter [document]' and the default recipients will be highlighted:
36.This means, for this document, that if there are interested parties with these roles recorded by Litigation Section on the database for this opinion, a document will be created for each. For example if there are two Proprietors, one Requester and four Observers, 7 copies of the opinion will be generated. If you want only one copied to be generated, for example if you would prefer to print one and photocopy it for all the rest, de-select all the highlighted roles except one that has the correct type of requester. You may need to go back to the opinion record to find which type it is: Requester. Requester/Exclusive Licensee or Requester/Proprietor for this opinion.
37.If no recipients are selected, you will get a message to select at least one:
38.To quit without creating the document, press 'Close'.
39.To create the document, press 'Create letter' and the following message will be displayed:
40.This is telling you that the document, when created, will contain today's date as the date of the opinion. If you press 'No', the display will return to the Merge Standard Documents form. If you press 'Yes', the template for the opinion document will be opened in Word:
41.This is the bare template, with no merged data at present. The content of your completed opinion should now be inserted as a file.
42.Place the cursor in the area before the Examiner Name at the point where you want to insert the file. Select the tab in the Word ribbon and, in the 'Text' group, click on the down arrow next to 'Object'. Select 'Text from File':
43.Browse through the directory structure until you find H:\Opinions\live\Draft Opinions\nnyy for the opinion you have been working on. Highlight it and press the 'Insert' button in the directory window.
44.The document should now be in the correct format with the right heading etc. To merge with the data on the database, select the 'Mailings' tab in the Word ribbon and, in the 'Finish' group, click on the down arrow next to 'Finish and Merge'. Select 'Edit Individual Documents':
45.You will be prompted to identify the records to merge:
46.Leave it as the default "All' and press 'OK'. Copies of the final opinion document for all the selected recipients will then be created:
47.The documents will all be created as one file, so care should be taken when printing out. Some printers allow double-sided printing, but this should be used with great care as the front page for one document may be printed on the back side of the last page of the previous document.
48.Close and save this file as H:\Opinions\live\Completed Documents\Opinion No\Opinion, where Opinion No is the actual Opinion Number with the forward slash removed, eg 0105.
49.The template for the opinion document, which is a read-only document, will still be open in Word and should be closed without attempting to save it.
50.The database application will still be open. To leave the Merge Standard Documents form and clear the settings, press 'Close'.
51.Return to the Merge Standard Documents form to create the covering letter.
52.As before, enter the Opinion Number, and select the Document Name from a drop-down list. This time there is a choice of two letters: OL20 and OL21. OL20 is for opinions that have not gone against the patent holder (proprietor or exclusive licensee) and therefore a review of the opinion cannot be applied for. OL21 is for opinions that have gone against the patent holder and invites them to apply for a review (rule 98).
53.Again, none of the "Mandatory fields if checked' fields will be checked for this document, so ignore them. Click in the 'Default recipients for selected letter [document]' and the default recipients will be highlighted. These should normally be left as they are because each letter that is created will have a different address on it. It is possible to change them by selecting and de-selecting if there is a good reason to do so.
54.To create the letter, press 'Create Letter' and the template for the opinion letter will be opened in Word:
55.There should be no need to amend this document, but if you do you must not change the letter heading, or delete any of data variables shown in grey highlight, eg in this example «Date_F1777_Filed ».
56.When you are satisfied, select the 'Mailings' tab in the Word ribbon and, in the 'Finish' group, click on the down arrow next to 'Finish and Merge'. Select 'Edit Individual Documents':
57.You will be prompted to identify the records to merge:
58.Leave it as the default "All' and press 'OK'.
59.The letters for all the recipients will then be created:
60.Satisfy yourself that the details are correct before printing. If some of the data is incorrect, you may need to contact Litigation Section to get it corrected. If a letter is being sent to the wrong person, this can be discarded. If there is no letter for a recipient who should receive one, you may have to repeat the exercise and click on the role for that person in the Default recipients' box on the Merge Standard Document form. Other errors in the database fields should be dealt with by contacting Litigation Section.
61.The letters will all be created as one file, so care should be taken when printing out. Some printers allow double-sided printing, but this should not be used as the front page for one letter may be printed on the back side of the previous letter. If the request is not on PECS then print two copies of everything, one for issue, one for the file and sign them both. Otherwise print one copy of everything for issue. Alternatively, photocopies after signing could be taken for the file copies.
62.Save this file as H:\Opinions\live\Completed Documents\Opinion No\OL20 (or OL21), where Opinion No is the actual Opinion Number with the forward slash removed, eg 0105.
63.The template for the letter, which is a read-only document will still be open in Word and should be closed without attempting to save it.
64.The database application will still be open. To leave the Merge Standard Documents form, press 'Close'. To leave the database, select 'Close Access'.
65.You may find other instances of Word open after performing these operations. These should be closed also, if applicable.
66.The copies of the opinion and their respective covering letters should be put in envelopes and sent off. Import a copy of the opinion into to PECS Dossier using Document Code "Opinion-LIT ". For requests not on PECS the file copy should be placed in the pink opinion file.
67.For PECS cases an entry should be made in the History Action Log, Type = Opinion; Action = Completed. A message should be sent to Litigation section as Team = OPINIONS; User = [Case Officer Name on the Opinions database]; Text = OPINION COMPLETED & ISSUED.
68.For non-PECS cases, the opinion file should be sent via the ESO to Litigation Section, Room 3.Y31, with a note to say that the opinion has been completed and issued.
69.The ESO should book the case out on PAFS, using the case number, completing the Opinion action at the same time.
70.Any time spent by the opinions examiner, or any other examiner who has helped the opinions examiner in drafting the opinion or advising on subject matter, should be recorded on ROTA under 'Opinions' activity.
Back to: Part I, User's Guide - Contesting an opinion
Next section: Drafting opinions