3) UK Patent Application Process Flashcards
Section 14
Making of Application
(1) Every patent application shall be made [on PF1 (R12)].
(1A) [Deadlines]
(2) Every application for a patent shall contain
(a) a request for the grant of a patent;
(b) a specification including the description, claims and any drawings referred to in the description or claims; and
(c) an abstract;
but these are not all required upon filing (see s15(1)).
(3) The specification shall disclose the invention in a manner which is clear enough and complete enough for a skilled person to perform the invention (i.e., to be enabling).
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(5) The claims shall
(a) define the matter for which protection is sought;
(b) be clear and concise;
(c) be supported by the description;
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept (i.e., unity), as defined by the rules.
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(7) The abstract gives technical information and it does not form part of the state of the art under s2(3). The Comptroller can reframe the abstract if he does not think it is adequate.
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(9) A patent application can be withdrawn any time before grant and this is irreversible.
(10) However, this does not affect the Comptroller’s power under s117 to correct an error or mistake in a withdrawal.
Rule 12 - s14
Miscellaneous rules on making an application
If the applicant’s name and address are not provided, the Comptroller will give the applicant two months to provide these, otherwise the application will be refused.
The specification must have a title which is short and which indicates what the invention relates to.
The claims must not rely on references to any drawings unless a particular feature cannot be clearly and concisely defined in writing (including formulae and other written means).
If something filed as part of the application appears to be a description of the invention but is not in English or Welsh, and a translation has not been provided, the Comptroller shall give two months for the applicant to file a translation, otherwise the application will be refused.
Rule 15 - s14
The Abstract
The abstract must have a title and must contain a concise summary of the specification which includes an indication of the technical field, a technical explanation of the invention and the main use of the invention. It cannot comment on the merits of the invention or any speculative uses of it.
If the spec contains more than one drawing, the abstract must specify the drawing to be accompany the abstract when it is published. But if the Comptroller thinks another drawing better characterises the invention he can use that one instead.
The abstract should include reference numerals if appropriate.
Rule 16 - s14
Unity
Two or more inventions have unity if they have a technical relationship which involves shared special technical features.
Special technical features are those technical features which define a contribution that the each of the claimed inventions, considered as a whole, makes over the prior art.
Section 15
Date of Filing Application
(1) The filing date is the earliest date on which the documents filed at the UKIPO
(a) indicate that a patent is sought;
(b) identify the applicant or at least contain enough information for the applicant to be contacted; and
(c) contain either something which appears to be a description or contain a reference to an earlier relevant application made by the applicant or a predecessor in title. [The reference must include the filing date, application number and country of the earlier application. (R17)]
(2) It does not matter what language the apparent description is in or whether it complies with requirements of the Act or rules.
(3) If the applicant satisfies at least one of the conditions of subsection (1) above, but not all of them, then as soon as is practicable the Comptroller will notify him of what else must be filed in order to have a filing date.
(4) If all the conditions are met then as soon as is practicable the Comptroller will notify the applicant of the filing date and inform him of any outstanding requirements (and their deadlines) which must be met to prevent withdrawal and of their deadlines.
For (5)-(8), see Rule 18 (Missing Parts).
For (9), see Rules 19 & 21 (Divisionals and New Applications).
(10) An application with a filing date will be withdrawn if
(a) the claims and abstract;
(b) (in the case where a reference was filed instead of a description) a description and a certified copy of the application referred to (and a translation if necessary);
(c) the application fee; and
(d) a request for search and the search fee;
are not all filed/paid by their respective deadlines.
(11) Earlier relevant applications can be from any convention country.
Rule 18 - s15
Missing Parts
(s18(5)-s18(8) are included implicitly)
[A missing part is a drawing or part of the description which appears to be missing from the filed documents. For example, is page 23 seems to be missing from the description.]
After the filing date and before preliminary examination (or within two months of notice from a preliminary examiner), the applicant can file missing parts. If he does not then withdraw them in writing to the Comptroller before preliminary examination (or the end of the two months), they will be included in the application and the filing date will be changed to the date of filing the missing parts.
The application does not have to be redated if the missing parts are wholly contained in priority documents, and a priority declaration in respect of those documents was made on or before the filing date. To avoid redating, the applicant must
* make a request to avoid redating in writing before preliminary examination (or within the two months);
* identify in the request where in the priority documents the missing parts can be found;
* provide certified copies of the priority documents (unless they are already available to the Comptroller) by the earlier of four months after the request was made or 16 months after priority.
Note that none of this has any effect on the power of the Comptroller to make corrections under s117.
Rules 19 & 21 - s15
Divisionals and New Applications
(s18(9) is included implicitly)
[The actual filing date of the new application is called the initiation date.]
New applications can be filed by the applicant or a successor in title in respect of any part of the subject matter of the parent whilst the parent is still pending.
They will be awarded the same filing date as the parent so long as the minimum conditions of filing under s15(1) are satisfied and so long as they do not add matter over the parent application as filed (s76).
A new application cannot be filed within the last three months of the compliance period.
The s15(10) requirements, requesting examination s18(1), filing the statement of inventorship s13(2), and filing certified copies of priority documents must be done by the later of their usual deadlines and 2 months from the initiation date. However, if the new application is filed within the last 6 months of the priority period, they must all be done on filing.
Section 15A (+ rules)
Preliminary Examination
An application will get a preliminary examination if it has a filing date, if it has not been withdrawn, and if the application fee has been paid.
The Examiner will check whether the application meets formal requirements, whether there are any missing parts, and whether the requirements of s13(2) (statement of inventorship) and s15(10) have been met.
If not all formal requirements are met, the Comptroller will give the applicant two months to respond to the Examiner’s report and to amend the application. If he is not satisfied by the applicant’s response he can refuse the application.
If any of the requirements of s13(2) or s15(10) are not met, or if there is a missing part, the Comptroller shall notify the applicant accordingly. The applicant will have 2 months to submit missing parts.
Also, if the Examiner found that a declared priority date was wrong, the Comptroller shall give the applicant two months to correct it.
Section 16
Publication
(1) Applications are published [18 months after priority (R26)], or earlier if the applicant requests it, along with any amendments made prior to publication (applications themselves are published as they were filed). An application will not be published if it was withdrawn or refused before preparations for publication have been completed. Publication is advertised in the journal.
(2) The Comptroller can omit parts of the specification which he thinks are disparaging or would encourage immoral/offensive/anti-social behaviour.
Section 17
Search
(1) The application will be searched if
(a) the preliminary exam has been done;
(b) the application has not been withdrawn;
(c) search has been requested [form and fee] by the deadline;
(d) a description and claims have been filed; and
(e) the claims comply with the rules on language.
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(4) The Examiner will make a reasonable attempt to find relevant prior art.
(5) The Examiner will conduct a search on all or part of an application, depending on what he thinks is worthwhile, and he may not conduct any search if he thinks it is not worthwhile at all. Either way, the Comptroller informs the applicant of the Examiner’s report.
(6) If the Examiner thinks the claims lack unity he will search the first invention only. The applicant must pay another fee [with form] for each further invention he wants searched. Further inventions cannot be searched in the last three months of the compliance period.
(7) The Comptroller can request a supplementary search at any time.
(8) If an amendment is made by the applicant under s18(3) or s19(1) such that a further search is needed, or similarly if a correction is made under s117 that requires another search, the further search will only be conducted upon payment of the fee [with form], unless the Comptroller directs otherwise.
Section 18
Substantive Examination
(1) The application will be examined if the conditions for search under s17(1) are satisfied and the applicant requests examination with form and fee by the deadline. If examination is not requested by the deadline or the fee is not paid then the application is treated as withdrawn.
(1A) The Examiner may require a supplementary search, in which case the applicant can either pay the fee or amend the application to obviate the search.
(2) During examination, the Examiner investigates to the extent he considers necessary in view of the preliminary examination and search, whether the application complies with the Act and rules.
(3) If the Examiner reports that the application does not so comply, the Comptroller will set a deadline for the applicant to respond to the examination report by way of arguments or amendments. If the Comptroller is not convinced he may refuse the application [although in reality the UKIPO issues several examination reports and only issues a refusal when no progress is being made].
(4) If the application complies within the compliance period, the Comptroller will grant it upon payment of the grant fee.
(5) If two or more applications for the same invention coexist with the same priority date and they were filed by the same applicant or a successor in title, the Comptroller may limit grant to just one of them.
Section 20
Failure of Application
(1) An application will be treated as refused if it does not comply within the compliance period.
(2) If an appeal is pending at the end of the compliance period, then the court shall determine an extended compliance period. If the time in which to bring an appeal has not expired by the end of the compliance period, then the compliance period will be extended until it expires.
