Retention and disposal policy for patent and trade mark

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Retention and Disposal Policy for Patents, Designs & Trade Marks Directorate (PDTMD)
Related Records
1. Purpose
This document sets out the retention and disposal policy for patents, trade marks and designs related records and
documents. It also ensures that we meet the requirements of the Public Records Act 1958 as amended in 1967.
2. Scope
1.
The schedule in section 3 below relates to all patent-related records, whether kept electronically or on
paper. It distinguishes between documents which may be destroyed and documents which must be
preserved. It also indicates the periods for which documents which may be destroyed must be stored prior
to disposal.
2.
Where an electronic copy of an original paper document is stored on the Patents Digital Access Exchange
(PDAX), the electronic copy is considered to be the record copy for the purposes of the schedule in section
3. The corresponding paper document must be processed in accordance with the schedule in section 4
which indicates the periods after which original paper documents that have been scanned into PDAX may
be destroyed.
3.
The schedule in section 6 relates to all trade mark and design division records and documents, whether kept
electronically or on paper. It distinguishes between documents which may be destroyed and documents
which must be preserved. It also indicates the periods for which documents which may be destroyed must
be stored prior to disposal.
4.
Documents normally selected for destruction but which are to be preserved beyond their normal disposal
date for special reasons must be identified and stored in such a manner (and/or flagged in any relevant
disposal diary) so that they cannot be inadvertently destroyed.
Intellectual Property Office is an operating name of the Patent Office
Version 1.8, L Davies, December 2016
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3. Schedule for Determining Retention and Disposal Periods for Patent-Related Records
Class of documents
1 Patent case-files bearing GB or EP application
and/or specification numbers:(a) Case-files of applications under the 1949
or 1977 Patents Acts, either published or
unpublished, which have been irrevocably
abandoned, withdrawn, deemed to be
withdrawn, refused, voided or otherwise
terminated before acceptance (Patents
Act 1949) or grant (Patents Act 1977)
(b) Case-files
containing
published
specifications
but
precluded
from
acceptance or grant by reasons other than
being irrevocably abandoned, withdrawn,
deemed to be withdrawn, refused, voided
or
otherwise
terminated
(e.g.
specifications laid open to public
inspection under Sections 91(3)(a) of the
1907 Act, or Section 91(4) of the Patents
and Designs Acts 1907-46, or Section 5 of
the Patents and Designs Act 1946)
(c) Case-files of patents (including EP(UK)s)
which have irrevocably ceased to be
effective (due, e.g. to expiry of term,
revocation, surrender, failure to renew) but
for which no Supplementary Protection
Certificate has been issued
(d) Case–files
of
patent
applications
(including European and PCT patent
applications) subject to secrecy directions
under either Section 18(1) Patents Act
1949 or Section 22 Patents Act 1977
(e)
(f)
Case-files of patents (including EP(UK)s)
in respect of which a Supplementary
Protection Certificate has been issued
Any case-file deemed to be worthy of
permanent preservation (e.g. providing a
legal precedent)
2 Files not bearing application or specification
numbers, i.e. those concerning policy matters,
legal matters, and litigation under the Patents
Acts where no United Kingdom application has
been made
3 Printed and electronic patent applications and
specifications kept for sale (by photocopying or
printing if necessary) to the public, including
amended or corrected UK applications and
specifications and EP(UK) specifications
Intellectual Property Office is an operating name of the Patent Office
Period after which documents may
be destroyed
Storage and Destruction
Schedule for all records
7 years from the date of termination
Secure storage.
Immediate
secure
destruction by shredding.
27 years from the date of publication
of the specification
(all of these documents are due for
disposal but some remain in storage
at NMP)
Secure storage.
7 years from the date on which the
patent ceased
Secure storage.
Immediate
secure
destruction by shredding.
Immediate
secure
destruction by shredding.
As advised by the Ministry Of
Defence.
Whichever is the latest of the
following periods:(a) 7 years from the date on
which the patent ceased;
(b) 7 years from the date on
which the Supplementary Protection
Certificate ceased (including any
extension if applicable)
Preserve (either within this office
with the Lord Chancellor's approval
renewable every 5 years; or by
transfer to the National Archives)
These files will be registered in
Policy Section, Legal Section,
Litigation Section or the Office of the
Director of Patents and disposed of
in accordance with the review
procedures for such files.
Stored in Security Section
at Concept House. Waste
deemed to be Secret or
Top Secret. Disposal by
high-security
shredding
within Patents Security
Section only.
Secure storage.
Immediate
secure
destruction by shredding.
Retained in accordance
with document retention
procedure
Secure storage.
Disposal
must
be
authorised in writing by
data owner (use contact
details for storage boxes at
Nine Mile Point).
Immediate
secure
destruction by shredding.
Not to be disposed of
To be retained
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4 Miscellaneous correspondence and requests for
information received under the Freedom of
Information Act
5 years
Secure storage.
5 (a)
3 years from the date of payment
Immediate
secure
destruction by shredding.
Secure storage.
7 years from the date of payment
Immediate
secure
destruction by shredding.
Secure storage.
Notifications of appointment or change of
agent (Forms 51) in respect of EP(UK)
patents
3 years from the date of receipt
Immediate
secure
destruction by shredding.
Secure storage.
E-mails held in formalities group e-mail
accounts (e.g. Pateot, withdrawal, and
S21 observations accounts)
7 years from the date of receipt
Immediate
secure
destruction by shredding.
Secure storage
Requests for certified office copies of
granted EP(UK) patents
7 years from the date of receipt
Immediate
destruction
Secure storage
(b)
(c)
(d)
(e)
Renewal fee payments (Forms 12)
Fee sheets connected with renewal fee
payments
6 Patent Registers
7 Assignees etc card index
(no longer in use but archive copies remain)
For preservation at the National
Archives 29 years from the date of
publication of last entered application
29 years from the date of registration
of the last action entered on the card
secure
Immediate
secure
destruction by shredding.
Not to be disposed of.
Secure storage.
Immediate
secure
destruction by shredding.
8 (a)
(b)
Classification files
Search and Advisory Service (SAS) files
9 Patent Cooperation Treaty (PCT) patent
applications received by this Office as PCT
Receiving Office
Intellectual Property Office is an operating name of the Patent Office
(CS series): 10 years with the
Examiner in charge of Classification
and Documentation Section having
discretion to retain for a longer period
(with Lord Chancellor's approval if
kept more than 30 years)
10 years with the head of SAS
Section having discretion to retain for
a longer period
(with Lord
Chancellor's approval if kept more
than 30 years)
10 years from the filing date
Secure storage.
Immediate
secure
destruction by shredding.
Secure storage.
Immediate
secure
destruction by shredding.
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10 Files relating to applications for Supplementary
Protection Certificates (SPC) or extensions to
the duration of Supplementary Protection
Certificates
11 Audit records
12 Form 49 caveat requests
13 Internal IDQA assessment forms, annual
spreadsheet records and panel summary tables
All
Supplementary
Protection
Certificate files are to be retained
irrespective of their age where the
examination process is still ongoing,
or where examination has been
stayed pending any court ruling
including those concerning other
applications
for
Supplementary
Protection Certificates.
Whichever is the latest of the
following periods:(a)
Where
a
UK
Supplementary Protection Certificate
has been granted, 7 years from the
date on which the patent ceased;
(b)
Where
a
UK
Supplementary Protection Certificate
has been granted, 7 years from the
date on which the Supplementary
Protection
Certificate
ceased
(including
any
extension
if
applicable).
(c)
Where
the
UK
Supplementary Protection Certificate
application has been refused: 7
years after refusal.
10 years
To be retained until they are
’actioned’. Actioned Form 49s are to
be retained for 7 years after date of
action.
2 years from the date of the relevant
quality panel
Immediate
secure
destruction by shredding.
Secure storage.
Immediate
secure
destruction by shredding.
Secure storage.
Immediate
secure
destruction by shredding.
Secure storage
Immediate
destruction
secure
.
3.1 Notes on the above schedule
1.
Families of case-files of related patents (e.g. Parents and Divisionals under Section 15, or resulting from
later applications made under Sections 8, 12 and 37) must be retained until the last member of the family
falls due for disposal.
2.
Where a number of cases are assigned, licensed or mortgaged by a single transaction, care must be taken
not to prematurely dispose of any paper file containing the documentation used to register the transaction.
Where a transaction relates only to cases kept on paper, the transaction documents must be transferred to
the last case to remain in force.
5.
Documents of classes normally selected for destruction but which are to be preserved beyond their normal
disposal date for special reasons must be identified and stored in such a manner that they cannot be
inadvertently destroyed with other records of the same kind.
6.
Documents in classes designated for preservation beyond 30 years must have the Lord Chancellor's
approval for retention within this Office (renewable every five years).
7.
The 10 year period after which documents in class 9 may be destroyed reflects Rule 93.1 of the Regulations
under the PCT.
Intellectual Property Office is an operating name of the Patent Office
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8.
The Chief Opearting Officer is responsible for making arrangements with the National Archives for any
necessary permanent preservation, and for obtaining permission for retaining records more than 30 years
old.
9.
Audit records applies to BS10008 & ISO9000 standards and includes audit records and old versions of
policies, standards and workbooks.
4. Schedule for Disposal of Paper Documents Scanned into the Patents Document Access Exchange (PDAX)
Class of documents
1
2
Drawings
Litigation documents (any documents relating to matters
dealt with by Litigation Section)
Patent Cooperation Treaty (PCT) patent applications
received by this Office as PCT Receiving Office
Documents relating to applications for Supplementary
Protection Certificates or extensions to the duration of
Supplementary Protection Certificates
Other documents including SAS files sent on paper and
scanned SPC case-files (those not falling within classes
1-4)
3
4
5
Period after which documents may be destroyed
10 years from the date of scanning
10 years from the date of scanning
10 years from the filing date
10 years from the date of scanning
10 - years from the date of scanning
4.1 Notes on the above schedule
1.
The 10 year period after which documents in classes 1 and 5 may be destroyed reflects the compliance
period, as set out by rule 30(2)(a) of the Patents Rules 2007, plus a margin of 18 months, and is intended to
ensure that documents are not destroyed until after a case has been granted or terminated. The Head of
Buisiness Support Services is responsible for ensuring that these periods are reviewed on an annual basis.
2.
The 10 year period after which documents in class 3 may be destroyed reflects Section 705bis(c) of the
Administrative Instructions under the PCT.
3.
The 10 year period after which documents in class 4 may be destroyed is the same as the period for
Litigation Documents as a significant number of SPC cases involve litigation.
4.
Where a case becomes the subject of criminal investigations or other external legal proceedings such as
non-criminal fraud investigations or judicial review, the Procedure to Prevent Shredding of Scanned
Documents in Legal Cases should be followed to prevent destruction of the paper documents for that case.
The period for which the paper documents should be kept will normally be 10 years (as for Litigation
Documents) unless otherwise determined by Legal Section.
5.
Documents may be kept beyond the period set out in the above schedule if appropriate e.g. where a
document relates to proceedings that are ongoing at the normal disposal date.
6.
Schedule for tribunal, trade mark and design division records
Class of documents
1. 1Copies of IPOB papers, key performance indicators,
office policy documents
2. 2Internal division information relating to members of staff
and personally held customer contact details
3. 3Trade Mark Register (including those files registered
under the 1875 TM Act,1938 TM Act, & the 1994 TM
Act)
Designs Register (the 1949 Design Act and the 2006
Design Rules)
Intellectual Property Office is an operating name of the Patent Office
Period in which document can be destroyed
Location of storage and mode of destruction
Review after 3 years,
TMD Division SharePoint site.
Review annually
Delete files/docs when no longer needed.
Paper files at NMP and electronic files on TM10/
DEPS Do not dispose of whilst Designs and Trade
Marks are still live
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4. 4Madrid Files
Applications refused with/without statement of grounds
Protected marks expired due to non-renewal
Madrid Office of Origin cases – from date of
international application
5. Registered
Design
files,
and
related
evidence/exhibits/samples
Expired due to non-renewal
Designs expired at end of life
Expired assignments/licensee lead files: but forms docs
from lead file must be transferred to next surviving file
6. 6Audit Records
7. 7Law Section Files and related evidence/exhibits
(Withdrawn/surrended/lapsed/revoked/invalidated/opp
osed/rectified after the death of the mark)
Designs – Third-party cancellations
8. 7Forms (Boxed by Reg Admin before despatch to NMP
Caveats,TM31C/CertifiedCopies
TM31R/DF23?Sales/Refund Schedules.
9. 8Designs Search Reports (DF21)
10. 9Trademark forms TM11, TM13, TM31R (renewal and
CoC)
11. 1Trademark and Design Policy Files
0
12. Any case-file deemed to be worthy of permanent (eg
providing a legal precedent)
7.
Paper files at NMP and electronic files on TM10 –
3 Years
3 years
5 years
Paper files at NMP and electronic files on
SharePoint
7 years from the date of termination
7 years from the date of termination
7 years from the date of termination
Paper files at NMP and electronic files on
SharePoint Review after 7 years and then destroy
or declare as a record.
7 years after the date of the decision
10 years if files are of special interest
7 years after the date the decision went out.
2 Years
1 Year
Immediate
These files will be registered in the policy section
(in either IPFS or SharePoint) and disposed of in
accordance with the review procedure for such
files.
Preserve (either within this office with the Lord
Chancellor's approval renewable every 5 years; or
by transfer to the National Archives). Documents
retained in accordance with document retention
procedure.
Schedule for disposal of paper forms/documents scanned into UKTM/MPS/DEPS
Class of Forms/documents
1
2
TM3 (other than applications for pure
colour marks), TM3A, TM3E, TM4, TM5,
TM7, TM8, TM8N, TM9, TM9C, TM9E,
TM9R, TM11, TM12, TM13, TM16,
TM16P, TM17, TM21a, TM21b, TM22,
TM23, TM24, TM24C, TM26I, TM26N,
TM26O, TM26R, TM27, TM28, TM29,
TM31A, TM31B, TM31C, TM31E,
TM31F, TM31G, TM31H, TM31I,
TM31M, TM31R, TM33, TM33P, TM35,
TM36, TM50, TM51, TM53, TM55, MM2,
MM5, General incoming correspondence
with and without a Trade Mark application
number includedDF2A (paper filed),
DF1A, DC1, DF2B, DF2C, DF5, DF12A,
DF16A, DF19A, DF19B, DF19C, DF21,
DF23, DF29, DF55, DRF55, DRF1,
DRF2, DRF3, DRF4, General incoming
correspondence with and without Design
number included
TM3 (Those filed for pure colour
marks), TM25
Intellectual Property Office is an operating name of the Patent Office
Period after which documents/forms may be
destroyed
1 year from the date of scanning
Do not destroy, always keep
Version 1.8, L Davies, December 2016
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8.
Notes For Shredding
1. IL6 paper waste to be shredded at Concept House in Security Section shredder to DIN 66399 P7 standard
(i.e. less than 5mm2 particle size).
2. Policy waste IL to be determined by file contact: paper waste IL3 and below to be disposed off according to
note 3, IL4 and above waste to be disposed according to note 4.
3. Warehouse secure storage. Impact level 3 waste: Immediate secure destruction by shredding See note 1.
10. Shredders specifications: Concept House, Abbey Orchard Street and NMP. Shred Size: 1.9x15mm Micro
cut
Approval and review process
This policy is to be approved by the Chief Operating Officer and Director of Patents, Designs and Trade Marks
following approval by the Joint Directorate Board.
The policy will be reviewed on an annual basis by the Chief Operating Officer or whenever changes are agreed to the
schedule in section 4.
Approved by:
Name:
Louise Smyth
Signature:
Louise Smyth
Position:
Chief Operating Officer
Date
Name:
3 January 2017
Steve Rowan
Signature: Steve Rowan
Position:
Date
Director of Patents, Designs and Trade Marks
4 January 2017
Intellectual Property Office is an operating name of the Patent Office
Version 1.8, L Davies, December 2016
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9. Revision History
Version
V1.0
V1.1
V1.2
V1.3
V1.4
V1.5
V1.6
Revision Date
March 2009
December 2009
July 2010
January2011
June 2012
December 2013
December 2014
V1.7
December 2015
V1.8
December 2016
Intellectual Property Office is an operating name of the Patent Office
Owner
Richard Baines
Lyndon Davies
Lyndon Davies
Lyndon Davies
Lyndon Davies
Lyndon Davies
Graham Feeney, Val Waters,
Lyndon Davies
Andrew Bushell, Val Waters,
Lyndon Davies
Andrew Bushell, Val Waters,
Lyndon Davies
Version 1.8, L Davies, December 2016
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