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 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.

3.  Schedule for Determining Retention and Disposal Periods for Patent‑Related Records

Class of documents	Period after which documents may be destroyed	Storage and Destruction Schedule for all records	
1	Patent case‑files bearing GB or EP application and/or specification numbers (includes data stored on Prose for such applications):‑			
	(a)	Case‑files of applications under the 1949 or 1977 Patents Acts, either published or unpublished, which have been irrevocably abandoned, withdrawn, deemed to be withdrawn, refused, voided or otherwise terminated before acceptance (Patents Act 1949) or grant (Patents Act 1977)	7 years from the date of termination	Secure storage.  

Immediate secure destruction by shredding.	
	(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)	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.  

Immediate secure destruction by shredding.  
	
	(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	7 years from the date on which the patent ceased	Secure storage.  

Immediate secure destruction by shredding.  	
	(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	As advised by the Ministry Of Defence.	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.  	
	(e)	Case‑files of patents (including EP(UK)s) in respect of which a Supplementary Protection Certificate has been issued	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)	Secure storage.  

Immediate secure destruction by shredding.  	
	(f)	Any case‑file deemed to be worthy of permanent preservation (e.g. providing a legal precedent)	Preserve (either within this office with the Lord Chancellor's approval  renewable every 5 years; or by transfer to the National Archives)	Retained in accordance with document retention procedure	
2	Files not bearing application or specification numbers, i.e. those concerning policy matters, board (meeting) papers, legal matters, and litigation under the Patents Acts where no United Kingdom application has been made	These files will be registered in Policy Section, Legal Section, Tribunal Section, Litigation Section or the Office of the Deputy Chief Excutive Officer  and disposed of in accordance with the review procedures for such files.  	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.  	
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	

To be retained	Not to be disposed of	
4	Miscellaneous correspondence and requests for information received under the Freedom of Information Act	5 years	Secure storage.  

Immediate secure destruction by shredding. 	
5	(a)	Renewal fee payments (Forms 12)	3 years from the date of payment 	 Secure storage.  

Immediate secure destruction by shredding. 	
	(b)	Fee sheets connected with renewal fee payments	7 years from the date of payment	Secure storage.  

Immediate secure destruction by shredding. 	
	(c)	Notifications of appointment or change of agent (Forms 51) in respect of EP(UK) patents	3 years from the date of receipt	Secure storage.  

Immediate secure destruction by shredding. 	
	(d)	E-mails held in formalities group e-mail accounts (e.g. Pateot, withdrawal, and S21 observations accounts)	7 years from the date of receipt	Secure storage

Immediate secure destruction	
	(e)	Requests for certified office copies of granted EP(UK) patents	7 years from the date of receipt	Secure storage

Immediate secure destruction by shredding.	
	(f)	EP1001 forms the Office receives in its role as a receiving office for the EPO	7 years from the date of receipt	Secure Storage

Immediate secure destruction by shredding	
6	Patent Registers	For preservation at the National Archives 29 years from the date of publication of last entered application	Not to be disposed of.	
7	Assignees etc card index
(no longer in use but archive copies remain)	29 years from the date of registration of the last action entered on the card 	Secure storage.  

Immediate secure destruction by shredding.  	
8	(a)	Classification files	(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)		
	(b)	Search and Advisory Service (SAS) files	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)	Secure storage.  

Immediate secure destruction by shredding.  	
9	Patent Cooperation Treaty (PCT) patent applications received by this Office as PCT Receiving Office 	10 years from the filing date	Secure storage.  

Immediate secure destruction by shredding.  	
10	Files relating to applications for Supplementary Protection Certificates (SPC) or extensions to the duration of Supplementary Protection Certificates	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.  	
Immediate secure destruction by shredding.  	
11	Audit records	10 years	Secure storage.  

Immediate secure destruction by shredding.  	
12	Form 49 caveat requests	To be retained until they are ’actioned’.  Actioned Form 49s are to be retained for 7 years after date of action.	Secure storage.  

Immediate secure destruction by shredding.  	
13	Internal IDQA assessment forms, annual spreadsheet records and panel summary tables	2 years from the date of the relevant quality panel	Secure storage

Immediate secure destruction	
				
.

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.

8.	The Director of People, Places and Services 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	Period after which documents may be destroyed	
1	Drawings 	 8   years from the date of scanning	
2	Litigation documents (any documents relating to matters dealt with by Tribunal  Section)	10 years from the date of scanning	
3	Patent Cooperation Treaty (PCT) patent applications received by this Office as PCT Receiving Office	5 years from the filing date	
4	Documents relating to applications for Supplementary Protection Certificates or extensions to the duration of Supplementary Protection Certificates	10 years from the date of scanning	
5	Other documents including SAS files sent on paper and scanned SPC case-files (those not falling within classes 1-4)	 8 years from the date of scanning	

4.1	Notes on the above schedule

1.	The Head of Buisiness  Operations Support Services is responsible for ensuring that the periods after which documents in classes 1 and 5 may be destroyed are reviewed on an annual basis.

2.	The -5 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 Tribunal  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 Tribunal  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 Determining Retention and Disposal Periods for Tribunal, Trade Mark and Design Records

Class of documents	Period in which document can be destroyed Location of storage and mode of destruction	
1.	1	Copies of IPOB papers, key performance indicators, office policy documents	Review after 3 years,
TTMD Division SharePoint site. 	
2.	2	Internal division information relating to members of staff (mainly EUIPO secondees) and personally held customer contact details. 	Review annually 
Delete files/docs when no longer needed.	
3.	3	Trade 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)	Paper files at NMP 7 years after the death of the trade mark.and electronic files on UKTM and DEPS Do not dispose of whilst Designs and Trade Marks are still live. Electronic files are currently retained indefinitely	
4.	4	Madrid 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	Paper files at NMP and electronic files on TM10 (retained indefinitely) – 
3 Years
3 years
5 years	
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	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	
6.	6	Audit Records	Paper files at NMP and electronic files on SharePoint Review after 7 years and then destroy or declare as a record.	
7.	7	Tribunal Section Files and related evidence/exhibits
(Withdrawn/surrended/lapsed/revoked/invalidated/opposed/rectified after the death of the mark)
Designs – Third-party cancellations	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.                               	
8.	7	Forms (Boxed by Reg Admin before despatch to NMP
Caveats,TM31C/CertifiedCopies TM31R/DF23?Sales/Refund Schedules.	
2 Years 	
9.	8	Designs Search Reports (DF21)	1 Year	
10.	9	Trademark forms TM11, TM13, TM31R (renewal and CoC)	Immediate	
11.	10	Trade Mark and Design Policy Files	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.	
12.		Any case-file deemed to be worthy of permanent (eg providing a legal precedent)	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.	

7.	Schedule for disposal of paper forms/documents scanned into UKTM/MPS/DEPS

Class of Forms/documents	Period after which documents/forms may be destroyed	
1	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	1 year from the date of scanning	
2	TM3 (Those filed for pure colour marks), TM25	Do not destroy, always keep	

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  Divisional Director of the Buisiness Operations Division following approval by the Joint Directorate Board.       

The policy will be reviewed on an annual basis by the Head of Business Operations Support Services or whenever changes are agreed to the schedule in section 4. 

Approved by:
           
Name:     Andrew Bartlett
Signature:   Andrew Bartlett
Position:        Divisional Director of the Business Operations Division
Date             22 May 2019

9. Revision History

Version	Revision Date	Owner	
V1.0	March 2009	Richard Baines	
V1.1	December 2009	Lyndon Davies	
V1.2	July 2010	Lyndon Davies	
V1.3	January2011	Lyndon Davies	
V1.4 	June 2012	Lyndon Davies	
V1.5	December 2013	Lyndon Davies	
V1.6	December  2014	Graham Feeney, Val Waters, Lyndon Davies	
V1.7	December 2015	Andrew Bushell, Val Waters, Lyndon Davies	
V1.8	December 2016	Andrew Bushell, Val Waters, Lyndon Davies	
V1.9	December 2017	Andrew Bushell, Val Waters, Lyndon Davies	
V1.10	 May 2019	Nicola Davies, Val Waters, Lyndon Davies