2) National Security & Restriction on filing overseas Flashcards
What type of applications can be prohibited/restricted from publication/ distribution?
- GB apps
- EP apps
- PCT apps
Which are:
I) First filed at the UKIPO as rO
II) prejuducial to:
a) National Security
b) The safety of the public
What happens to EP and PCT apps which are considered prejudical to National Security or the Safety of the Public?
They are not sent to
- International Bureau; or
- International Search Authority.
Prosecuted up to readiness for grant within the UK
If still not received by PCT/EPO at FD+14M, Applicant can designate GB and convert the application to a GB app
How long can the Comptroller delay publication of apps that may be prejudicial to the SAFETY of the PUBLIC?
Is this extendable?
Until 3M after publication was due (i.e., PD + 18M + 3M = PD+ 21M)
Extendable until they see fit, under instruction of Secretary of State to Comptroller
If there is a prohibition of disclosure of an app, how often is this reviewed?
Is this communicated to the Applicant
FD+9M and every 12M after that
No, but the Applicant can enquire at any time about reconsideration
What would happen if the Applicant breaches:
- s22 provisions and publicised his invention without the consent from Secretary of State?
- s23 provision and files overseas first without clearance from UKIPO
- Up to £1000 fine
- 2Y in prison
NB. for s23, there is limitation on liability:
If a UK-resident acting in good faith mistakenly believes that the s23 restrictions do not apply to a patent app, the he will not be guilty of a criminal offence
What remedies exist for the Applicant whose application is prohibited from being:
1. Disclosure to regional, international or other national offices
2. be published
due to the National Security/ Safety of the Public
Applicant can seek “Hardship” payments from the Government
Does the Applicant have to pay renewal fees; whilst his patent is still under s22 restrictions?
No. Whilst the prohibition directions remain in force, the app does not proceed to publication and grant
When is the first renewal fee due for s22 app?
The latest of:
1. The 1st anniversary of the filing date, following reversal of s22 prohibition
2. Grant date + 3M
When is the UKIPO allowed to inspect s22 apps?
Has to wait PD/FD+18M (whilst the Secretary of State is reviewing)
Unless:
1. The tech relates to Atomic energy, then can inspect at any time; or
2. The Applicant has consented to ‘early inspection’
If the prohibition on publication is lifted mid-way through substantive examination, which version of the spec is published?
Both the application as filed and the pending amended claims on file at the time
Who must obtain an authorisation from the Comptroller to file overseas?
What SM does the app relate to?
People who reside in the UK
SM =
1. Military tech, or any other National Security
2. Safety of the public
When may a UK resident file abroad on SM relating to military tech, other NS or matter which might be prejudicial to the safety of the public?
- SM must not be under s22 prohibition of public disclosure
- A first filed GB app has been filed at least 6 week prior
What must a UK resident seek if he wants to file/ publish military invention abroad?
He must seek clearance from UKIPO (i.e., prior written approval)
Scenario 1:
Non-UK citizen who resides in the UK moves abroad for several months and makes a military tech invention. Where should they first file?
Because of recent move, person is no longer bound by s23 provisions
Scenario 2:
A non-UK national normally resident abroad but temporarily in the UK invents a grenade. Where should they first file?
If they become residents in the UK, they are bound by s23 and must file at UKIPO.
Then in 6 weeks, if green light can file abroad
