7) Duration, Renewal & Surrender Flashcards
Which is the date of ‘Administrative’ grant of a patent?
What does it mark?
Date provided by the s18(4) notification
The end of the pre-grant procedures
Can the Applicant file a divisional or voluntary amendments following the issue of s18(4)?
Yes, s18(4) acts as a Notice of Intent to grant and indicates a specific date by which the end of pre-grant procedures are possible.
Normally, Applicant will have 1M from s18(4) to file div or VAs (whilst app is still pending)
What is the date of ‘Actual’ grant (where monopoly actually starts)?
What does it mark?
The date of notice in the OJ
The start of post-grant procedures
What happens to requests for:
- amendment (s19); or
- entitlement proceedings (s8)
during the Interval of several weeks (Limbo) between the date of Administrative Grant and Actual Grant
- s19 request for Pre-grant Amendment become s27 request for Post-grant Amendment
-s8 request for Entitlement proceeding of an Application become s37 request for Entitlement proceeding of a Patent
How do you caculate the end date of patent term?
FD (not PD) + 20Y
NB. The full term expires on the day before the anniversary of the filing date of the application
i.e., GB app filed on 4/11/1992 ends at midnight on 3/11/2012
Who is allowed to pay RF of a patent?
Anyone!
No requirement that payment be made by the Proprietor or with his consent
On what date would a patent cease to have effect, if the RF is not paid?
At the end of the renewal date (anniversary of filing, not the end of the month!)
Describe how you calculate the 1st RF on a GB app?
What about subsequent RFs?
RFs are pnly payable once patent is granted…
First RF
The latest of:
- FD+4Y (payable 3M [calendar] before and until the end of the [calendar] month)
- Grant date + 3M (until the end of the [calendar] month)
Subsequent RFs
- Anniversary of filing (+5, 6, 7 etc) payable 3M [calendar] before and until the end of the [calendar] month
Describe how you calculate the 1st RF on an EP (GB) app
RFs are payable to EPO whilst EP app is pending. Only payable to UKIPO once patent is granted…
Fees in respect of years up to and including the year in which mention of grant is published are paid direct to the EPO
- Was the mention of Grant within the 3M period ending on FD+4Y?
2A. Yes (early grant), so 1st RF on EP(GB) to UKIPO =
- Grant date + 3M (until the end of the [calendar] month)
2B. No (normal/later grant), EPO will pay the fee
And 1st RF on EP(GB) to UKIPO =
- Next anniversary of filing (i.e., FD + XY (payable 3M [calendar] before and until the end of the [calendar] month)
If an EP(GB) has been revoked by BoA and decision is overturned (during a Petition for Review) by EBA, what is the DL for paying the RFs that fell due whilst the patent was revoked?
Restoration decision + 2M
If RF has not been paid to UKIPO by the end of the calendar month (RF period), what happens?
Comptroller MUST issue a Renewal notice within 6 weeks of non-payment
If RF has not been paid to UKIPO by the end of the calendar month (RF grace period), what happens?
Same as for initial period, Comptroller MUST issue a Renewal notice within 6 weeks of non-payment
What happens if UKIPO does not send the Renewal Notice
Procedural Irregularity (R107) –> allows additional time to pay the RFs
What do you have to ensure to do, when your patent has a very long prosecution (i.e., late grant date)
Make sure to pay all backdated RFs (i.e., all RFs starting from FD+4Y, 5Y, 6Y etc)
How can you reduce the amount of RFs due?
Grant a Licence as of Right to obtain 50% reduction
