Destruction of patent documents filed at the Office

Introduction

By early 2009 the UK-IPO will be processing patent applications totally electronically. Systems have been implemented to ensure that all submitted information is properly captured; following which there has been no need to retain original paper documents.

Apart from one small change in the way we handle assignments the destruction of original documents will have no effect on how the Office processes applications or on the security of its information.

The purpose of this notice is to inform users of the change. There is also a short period to comment should you wish to do so.

Background

The Office routinely disposes of paper patent documents according to an approved Disposal Schedule. Following the introduction of electronic case management there has been a need to update it.

All patent applications since 2006 have been scanned and the quality and accuracy of this information is such that there is little need to retain original documents. The Office intends to introduce a Scan and Shred Policy through which original patent documents will be disposed of, with the aim being to retain paper for as long as it is needed for consultation but to dispose of it when safe.

Applications that have been granted/terminated prior to the introduction of electronic working are outside the scope of this process and these documents will be disposed of according to the original Disposal Schedule.

The intention is to introduce this policy before the end of March 2009.

Basis of the proposals

With the changeover to purely electronic processing of patent applications the accuracy and quality of electronic images is of prime importance.

The Code of Practice for Legal Admissibility and Evidential Weight of Information Stored Electronically(1) is the accepted standard in the UK for the use of electronically stored documents in legal proceedings. The Code of Practice has been recognised internationally and has been published as ISO 15801. In the UK the Code of Practice is in the process of being converted into a British Standard.

It is the Office’s intention to comply with this Code of Practice prior to the implementation of a Scan and Shred Policy and a Certificate of Compliance will be sought to confirm this. Compliance with the Code will give the Office a methodology by which it can demonstrate that the electronic copy of a document is authentic, so meeting the requirements of admissibility and evidential weight.

A consultant has undertaken a gap analysis and a number of issues have been identified. The major issues are shown below and work on resolving them is nearly complete. This work has resulted in two realistic shredding proposals, which are detailed below.

Issues

There are three main issues that need to be resolved prior to the implementation of the Scan and Shred Policy. These are duplex scanning, colour/greyscale scanning and applications where no application fee has been paid.

Duplex scanning

The vast majority of submitted paper only utilises one side of the sheet but a few documents are known to be submitted in duplex form. The reverse sides of these known problem documents will continue to be checked.

In order to ensure that other duplex pages are not missed all submitted documents will be retained for 18 months. At this time all live applications will have reached the publication stage, been scrutinised twice and any missing information captured.

Colour/greyscale

It is prudent that drawings are kept until substantive examination in case any small elements of colour or greyscale have been missed previously. Therefore paper drawings will be kept for a minimum of 3 years 6 months from priority/application date.

Applications with no application fee paid

Around 45% of new applications do not have an application fee paid at the time of filing. To allow for re-instatements, missing parts etc these documents will be retained for 2 years.

Any documents relating to litigation (whether inter-partes cases, ex-parte cases or those involving criminal proceedings) will be separated out prior to scanning and stored separately. These would be shredded 12 months after completion of final court business.

Preferred option

Taking the above issues into consideration the simplest and safest solution is to retain all documents for 5 years from the date of scanning before shredding them. This would mean that all documents would be retained for the whole of the pre-grant processing period plus a small extra margin for safety.

This solution would be easy to implement in that no new procedures would be required. Of greater advantage is that the risk of destroying any document that may need to be consulted again, for whatever reason, is virtually eliminated.

Non-preferred option

This second option is slightly more complex than the preferred option in that it involves separating out the drawings from other documents. Under this option drawings would be retained for 5 years before shredding with the remaining documents being shredded after 2 years.

This process requires an extra separation process and adds complication to a simple streamlined process.

Assignments

There are instances where original assignment documents are submitted with a Patents Form 21 ("F21" - application to register rights acquired in a patent) as evidence to establish the transaction. When the Scan and Shred Policy is implemented there is a risk that these original documents will be destroyed. The following changes will overcome this issue:

• An extra note will be added to F21 stating that original assignment documents are not required to effect the assignment, and that if it is necessary to submit documentary evidence then a copy only should be submitted.
• The notes will additionally state that any documents submitted with the form will ultimately be destroyed once they have been scanned.
• The acknowledgement letter sent by the Office to confirm that a transaction has been registered will contain an extra paragraph warning that submitted documents will be destroyed, and that if you wish them to be returned then you must request it within one month of the date of the letter.

The change to F21 will be implemented by directions given by the Comptroller under s.123(2A) of the Patents Act. In this way a notice will appear in the Notices section of the Website so that the changes will be widely disseminated.

How to comment

If you wish to comment, please respond by Friday 5 December 2008 to:

Richard Baines
1B12 Concept House
UK-IPO
Cardiff Road
Newport
NP10 8QQ

Tel: +44 (0) 1633 814664
Fax: +44 (0) 1633 814410
e-mail: Consultation@ipo.gov.uk

If you are commenting on behalf of a group, please ensure that you give a brief summary of the people and organisations that you represent.

(1) British Standards Institution, BIP 0008, ISBN 0 580 42774 9