5) Deadlines & Extensions Flashcards by Lucy Sharples

Can a DL be extended because of an “irregularity of procedure” from UKIPO? r107

Comptroller may:
- Correct irregularities
- only extend DL if the UKIPO contributed (wholly or partly) to irregularity

eg. if UKIPO does not send out a communication on which a DL depends (UKSR?)

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What is the DL(s) for paying the (a) application fee, (b) search fee and (c) providing claims (all the same)?

(i) for a direct GB
(ii) for priority-claiming GB

What is the effect if any or all are not provided/paid

(i) FD + 12M

(ii) The later of:
- 12M from from priority
- 2M from filing

Effect = application is deemed withdrawn

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What are the minimal requirement for UK application

Request for grant (PF1)
Applicant’s name and address
Spec (not necessary to include claims to get a FD) or ref to an earlier app

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If Applicant does not provide his name and/or address when filing the application, - what is the DL for doing so?
- what is the effect if not done?

DL = 2M from the request to comply
Effect = Application is refused

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i) What are the language requirements of the Application?
ii) What happens if Spec provided in Japanese (without a translation)?
iii) What is the DL for providing a translation?
iv) What is the effect if not done?

i) App must be in English or Welsh
ii) Comptroller request a translation
iii) DL = 2M from request
iv) Effect = Application is refused

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If Applicant does not provide the “ref to an earlier app” when filing the application?
-what is the DL for doing so when a translation is needed
- what is the effect if not done?

-what is the DL for doing so, when a translation is not needed?
- what is the effect if not done?

DL = 4M from the request to comply
NB. This DL is not extendable
Effect = Application is refused

DL = Latest of PD(Priority-claiming)/FD(Direct GB) +12M or FD (Priority-claiming)+2M
Effect = Application is deemed withdrawn

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In what scenario does can an initial filing date be re-dated to a later filing date?
Can you reverse the re-dating?

If [before prelim. exam or within 2M of notif. by prelim examiner] Applicant files:
1. An extra drawing
2. Some extra text

Reverse the re-dating by withdrawing the missing part

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What are 2 negative possible consequences of a later re-dated FD?

Intervening Publications
May lose priority claim (if >12M)

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When are “formal” drawings typically filed?
What is prelim. examiner requests them, what is the DL?

Around 15M
DL = Request +1M

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Does an abstract form part of the state of the art?

Can you use the Abstract as basis for an amendment

Abstract is not part of the spec, so:
1) Not citable as novelty-only [s2(3)/A54(3] art
2) Can’t use as basis

When published, it is of course citable (as contents available publically)

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Complete the UK requirement for Unity of Invention:

Two or more inventions are unified when they share a […1] based on […2] or […3] special […4] that when considered together as a whole, define a […5]

Technical relationship
Matching
Complementary
Technical features
Contribution over the prior art

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In what situation are TMs to be used in specs?

Do not use if TM is an indication of the origin rather than the composition or content of goods, and where a generic term can be used instead.

TMs are only permitted in claims where it can be shown that their use is unavoidable and does not introduce ambiguity.

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Does the Doctrine of equivalence (Actavis) apply to ranges?

How would the range “1-25%” and “about 10%” be interpreted?

No, departure from a claimed range, however small, is not a variant.

1%-25% is understood by a skilled person to include all values
- greater than or equal to 0.5% and
- less than 25.5%

Remember: Range include all values which would fall within the claimed range, once the values are rounded up/down to the nearest whole number.

About 10% –> claim extends to 9-11%
Because “about” suggests that something wider was meant than if the word was omitted

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Can s2(3) are be used to demonstrate that common subject-matter is not new (i.e., lack of Unity)?

No, only s2(2) art can be used!

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Can you raise lack of unity as a ground for revocation of granted claims?

What about for post-grant amended claims?

Still no

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By when must you positively withdraw a GB application, to stop it from publishing?

Before the tech preps for publication have been completed
~5 weeks before PD+18M (=PD+16M3w)

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If a app is published despite a request to withdraw it (eg because withdrawal was received too late to prevent publication), does it count as the state of the art?

Counts as s2(2) art [because available to the public] but not as s2(3) art [no risk of DP]

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By when must you positively withdraw a GB application, to stop it from proceeding to grant?

Before the issue of the letter informing Applicant of grant

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What condition(s) does a withdrawal of a UK application have to meet to be acted on by the UKIPO?

Must be:
1. Clear
2. Unqualified
3. In writing (paper or electronic)
4. From a person with the authority to make the withdrawal

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What is the actual date of the deemed withdrawal?

Date on which the withdrawal is filed

NB. Deemed filed when the email enters the UKIPO internal email system (not when it’s sent)

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Can a co-owner solely withdraw an application?

No, unless it is clear that other Applicants have given their express authority to do so

What are the conditions (time period) for filing a divisional application?

The parent must still be pending
It is not yet the last 3M of the Compliance Period (i.e., 4Y3M from PD)

Applicant has a window of:
- 1M from s18(4)
- 2M from s18(4) - if that’s the first sub. exam report
to file a divisional

What is the DL for putting the Application in order for Grant (R30 - Compliance Period)?

Is it different for divisional apps?
What about “fresh” applications?

TRADITIONAL
The latest of:
- PD+4Y6M
- First s18(3)+12M

Divisional apps have the same CP as the parent
NB. the 12M period starting from s18(3) of the parent, not the divisional’s!

FRESH
The latest of:
- same as above
- FD (fresh app) + 18M

If the last day of the CP fall on a weekend or another non-working day, does it it roll over to the next working day?

No because it is not of itself a deadline for doing anything under the Act

What is meant by “in order for grant” in the Compliance Period

4Y6M is the DL by which any successful argument /amendment must be made (not necessarily that the app actually grants)

NB. the final amendments to the app can be made AFTER the end of CP. The opportunity to amend an application is only terminated by the issue of the letter informing the applicant that a patent has been granted.

If the Examiner raises TPOs within the last 3M of the CP (ie from 4Y+3M to 4Y+6M), how long does Applicant have to respond?

DL = Examiner’s letter + 3M

What is the DL for filing a “fresh” application (not a divisional) following a dispute (e.g., Entitlement of App; Entitlement of Patent)?

File the new app within 3M of Decision or End of Appeal

For “fresh” applications and divisionals, what is DL for filing Inventorship Declaration (PF7), Priority docs (usually PD/FD+16 in parent/preceding application), Search (usually PD/FD+12M), requesting Examination (usually Pub date +6M)

Was the divisional filed in the last 6M of CP? If so, all acts must be completed on filing
For fresh apps or “early” divs, does the OG DL still apply?
If not, DL = FD+2M

What actions must be completed for prelim. exam to take place

App has an FD
App has not been (deemed) withdrawn
Application fee has been paid

What is the DL for correcting an erroneous PD in the declaration?

2M from notif. of prelim. examiner

What is the DL for requesting Substantive Examination by UKIPO of:
(i) a direct GB app
(ii) a PCT(GB) app
What if the application is under the Secrecy act (s22)?

Are these extendable?

(i) 6M from the Publication date
(ii) Later of:
- PD+33M
- NPE+2M

For s22 (no publication) so DL = PD+2Y

Yes, extendable via R108(2) - 2M AOR

If you receive a lack of unity, can you request for the 2nd invention to be searched?
What is the DL for doing so?

File another Search request (PF9A) and pay search fee
DL = no later than 3M from the end of the CP
But in Practice, this is very late… request ASAP

Can you accelerate/ request an early search at UKIPO?

Yes, but must provide a reason

Eg. we wish to use the results before foreign filing

In what scenerio would a application require payment of a “Grant fee” to UKIPO?
What is the DL?

If, through prosecution, claims or description pages have increased above the XS fee limit and not paid during search/exam request

DL = s18(4) + 2M

A) What is the DL for responding to s18(3) sub. exam reports?

B) What if the first s18(3) was issued very late by the UKIPO, so that the CP now = 12M from s18(3)

A) Longer period that EPO’s 4M (may be up to 1Y)

B) To accelerate response time, DL = 2M from s18(3) [extendable for up to 4M]

Can you accelerate prosecution at UKIPO?

Yes, request it but must demonstrate “hardship”
For example:
- Likely infringement
- Grant need to secure investment
- Green channel - if invention has a environmental benefit

What happens to an application if it fails to comply with the requirement s for grant within the r30 CP?

Application gets refused

Refusal is advertised in the Journal.

What are the 3 ways that a R30 CP gets passively extended? How long is the extension?

When an Appeal is pending or the window to file an Appeal (28 days) is still pending
a) If Appeal pending, extension is determined by the Court
b) If no Appeal filed, extension = the end of the 28 days
Due to a s22 prohibition of publication (3M from usual PD+18M)
TPOs received in that last 3M of CP. Applicant has 3M to respond to Examiner’s s18(3)

How can the Applicant proactively extend the CP? How long is the extension?

R108(2) retroactive 2M AOR extension within 2M of Lapse of CP
Further R108(3) discretionary extension

What is the DL for requesting an Appeal of a Decision?

clue = difference between Decision re: procedural vs substantive matter

Substantive Matter –> DL = Decision + 28 days
Procedural Matter —> DL = Decision + 14 days

Situation:
A substantive decision (appealable) is given PD + 4Y 5M 7 days (ie 21 days before the end of R30 CP). No appeal is filed.
What effect does this Decision have on the CP?

CP gets extended until the end of the Appeal period

PD + 4Y 5M 7 days + 28 days = 7 days after the end of CP

What are the differences/commonalities between extending a DL set by:
1. the Comptroller (eg DL for filing a response to an OA);
2. Statute (eg Compliance period)

Use s117B to extend (no form, no fee)
Use R108(2) to extend (form & fee)

Both are 2M AOR retroactive and further discretionary extension(s)

Can request for a s117B extension after R30 CP?

No, periods set by the Comptroller are no longer extendable

If you miss a DL set by the Comptroller, and the 2M DL to request s117B extension, what is the effect on the app?

App is dormant (not withdrawn)

Only deemed withdrawn once the R30 period has lapsed

For the Comptroller to extend the R108(2) using R108(3), what must be submitted? And by when?

Same form (PF52 as for AOR 2M)
Evidence as to why the extension should be granted
Fee must be paid only if further discretionary ext. is granted

Name 3 common periods where R108(2) and (3) extensions are often used

Filing inventorship PF7
Filing the request for Sub exam
Compliance Period
Entering NPE

Under what 2 conditions will the Comptroller authorise rectification of any irregularity in procedure by extending a period?

Irregularity is partly or wholly attributable to a default, omission or other error by the UKIPO
Comptroller deems that the irregularity should be rectified

Once the R108(2) and R108(3) options have ended, the app is deemed withdrawn/dormant - how do you get it back? What is the DL?

You have 12M to re-instate

When a Priority-claiming application is filed within the 12M period (i.e., on time), what is the DL for making the Declaration?

Either at:
1. Time of filing the Priority-claiming app; or
2. PD + 16M (provided no request to publish early!)
3. If PCT(GB), NPE+1M

When a Priority-claiming application is filed btw 12-14M from Priority app (i.e., late), what is the DL for making the Declaration?

Make the declaration upon filing the application

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5) Deadlines & Extensions Flashcards

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