All units Flashcards
What is meant by search?
Patent examiner searches the invention for prior art. The prior art indicates the patentability of the invention and is then reviewed to determine if the applicant wishes to proceed with the application.
What are the required contents of a patent application?
- Any necessary forms
- Specification made up of:
- Description
- Claims
- Abstract
- Drawings
What is meant by publication?
The content of the application is disclosed to the public.
What is a patent?
A monopoly granted to an inventor by a state for a fixed period of time in exchange for devising and disclosing the invention.
What is examination?
The examiner reviews the prior art, comments on the patentability of the invention, raises objections and provides the application opportunity to respond to their objections.
What is meant by maintenance?
Renewal fees must be paid to keep the patent in force. These are usually due annually and increase in cost each year.
What is meant by filing a patent application?
The application is filed at a patent office in the name of the inventor or applicant and given and application number and filing date.
What is a patent term?
The patent term refers to the fixed period of time for which the patent can be enforced (usually 20 years). Once this period ends the monopoly ceases and the invention can be used freely.
Explain ‘Duty of Care’
The reasonable person in the situation should act with watchfulness, attention, caution and prudence towards others and the general public.
What are the advantages of the patent system?
- Encourages technological advancement and growth of wealth.
- Gives inventors incentive to innovate.
- Allows inventors to recover research and development costs.
- Has created a vast library of technical information.
- inventions must be disclosed to the public.
Define priority period.
The 12 month period within which overseas applications must be field inf the filing date of the first filing is to be relied upon for patentability.
What is prior art?
Anything published prior the filing date or earliest priority date of the application disclosing similar or existing inventions. Prior art usually consists of patent specifications or sometimes non-patent literature or journal articles.
What happens when a patent is granted?
The patent specification is re-published to include any amendments made during examination and the patent can now be enforced.
What are the minimum requirements for obtaining a filing date for a GB patent application?
- Description or reference to an earlier filed application.
- Indication a patent is sought.
- Details of the applicant sufficient for the UKIPO to contact them.
- Drawings is mention in description.
What is the deadline for requesting search on a GB patent application?
- 12 months from filing date;
OR
Late of;-
- 12 months from earliest priority
- 2 months from filing date
Can the request for search deadline be extended at the UKIPO?
Yes. By 2 months with a form 52 and a fee.
What action must be taken to request search at the UKIPO?
- File form 9A
- Pay search fee
- Pay any excess claims fees for claims over 25
When does publication take place on a GB patent application?
18 months from earliest priority.
When are additional searches due on a GB patent application?
3 months before the compliance date.
What actions must be taken to request further searches on a GB patent application?
- File form 9A for each additional invention the Applicant wants searched.
- Pay search fee for each additional invention
- Identify which claims are to be searched.
What is the deadline for requesting examination on a GB patent application?
6 months from publication date.
What actions must be taken to request examination on a GB patent application?
- File form 10
- Pay examination fee
- Pay excess page fees for any pages over 35.
Is the deadline for requesting examination on GB patent application extendable?
Yes. By 2 months with a form 52 and a fee.
What is the acceptance deadline on the GB patent application?
Later of:-
- 4 and a half years from earliest priority date
- 12 months from date of first examination report.
What happens if a GB patent application is not in order by the acceptance date?
The application is refused.
Is the acceptance deadline extendable on a GB patent application?
Yes. By 2 months with a form 52 and a fee.
When are grant fees due on a GB patent application?
2 months from grant date when any excess page or claim fees are payable.
Is the grant fee deadline extendable on a GB patent application?
Yes. By 2 months with a form 52 and a fee.
When is the first renewal fee due on a GB patent application assuming no late grant?
On the last day of the month containing the 4th anniversary of the filing date.
When is the first renewal fee due on a late grant GB patent application?
On the last day of the month three months from the date of grant.
When can renewal fees validly be paid on a GB patent application?
On a granted patent 3 months before the fee is due until the last day of the month 6 months after it is due.
What happends if an international application is filed in a non-official language of the RO?
The RO is not a competent receiving office and the application will be forwarded to the IB and the original international filiung date is maintained.
What is the latest date for requesting an extension of the acceptance deadline without relying on the discretion of the UKIPO?
2 months after the acceptance deadline.
When are formal drawings due on a GB patent application?
15 months from earliest priority date.
What could delay publication on a GB patent application?
- Late preparation of the search report by the UKIPO.
- Late filing of the formal drawings.
What are the advantagages of paying a GB renewal fee as soon as possible after the due date?
The first month after the due date is free. After this there is a 50% surcharge on top of the fee for earch month it is overdue.
What are the advantages of filing a PCT application?
- Convenience; 1 application covers 152 countries and regions.
- Postpones the major costs involved national and regional filing.
- More easily able to make corrections through a single office.
- Can save time during national and regional prosecution.
What are the minimum requirements for obtaining a filing date on a PCT?
- Right to file; at least one applicant is a resident or national of a PCT contracting state.
- Applicant details.
- Description
- Claims
- Designate at least one PCT contracting state.
- Indication that an international application is sought.
When must the international searching authority be the EPO?
When the receiving office is either the UKIPO, EPO or the IB and all Applicants are EPC nationals.
When is the supplementary search request due on a PCT?
22 Months from earliest priority date.
What is the benefit of completing a supplementary search of the international application?
Reduces the liklihood of new prior art being cited in the national/regional phase.
What is the due date for responding to the written opinion on a PCT?
Later of:
- 16 months from earliest priority.
- 2 months from date of the ISR & WO.
What is the deadline for filing a demand for International preliminary examination?
Later of:
- 22 months from earliest priority.
- 3 months from date of ISR
When is the fee for filing a demand due?
Later of:
- 1 month from date of demand.
- 22 months from earliest priority.
Define regional phase.
Filing the international application in a group of countries covered by a central patent office. e.g. EP.
What is the deadline for entering the GB national phase?
31 months from earliest priority of the international application.
What is the deadline for entering the EP regional phase?
31 months from earliest priority of the international application.
What is the deadline for entering the IN national phase?
31 months from earliest priority of the international application.
What is the deadline for entering the US national phase?
30 months from earliest priority of the international application.
What is the deadline for entering the CN national phase?
30 months from earliest priority of the international application.
What is the deadline for entering the JP national phase?
30 months from earliest priority of the international application.
Should both nationality and residence be filled out on PCT forms regardless of if the applicant is a company or natural person?
Yes.
How should represenatives be formatted on all forms unless stated otherwise?
Name of agent
Name of firm
Address
When are formal drawings due on a PCT?
On filing.
What are the minimum requirements for entering the GB national phase?
- National processing fee
- Translation of application into official UKIPO language.
- Form NP1
- Form 7 (if inventor details not given on PCT)
When is the due date for requesting search on a GB nat phase application?
Later of:
- 12 months from earliest priority date of the international application.
- 2 months from nat phase entry.
Where on a form NP1 should you indicate that a fee sheet is included?
In section 8 state category as ‘other’ and identify fee sheet.
What are the minimum requirements for entering EP reg phase?
- Translation into official EPO language.
- Examination and designation request and fees.
- Filing and search fees.
- Any excess claims and page fees
- Any renewal fees due within 3 months of reg phase entry.
- Basis for any amendments filed during international phase.
What is the deadline for responding to the ESR on a EP PCT?
6 months from notification of a subsequent communication from the EPO.
What are the types of publication on an EP PCT?
- Bibliographic details are published if the PCT was published in an EPO official language.
- EPO official language translation of the PCT (provided on filing) is published by the EPO.
How should countries be stated on EPO forms?
Using the country code.
What are the minimum requirements for obtaining a filing date on a European patent application?
- Indication a patent is sought.
- Details of the applicant.
- Desctiption or reference to an earlier filed application.
- Any drawings mentioned in the description.
What are the requirements for a representative on a European patent application?
- Must be a European professional representative.
- Must be identified on the request for grant form.
What deadlines are set by the publication of the European search report?
- Examination and designation fees
- Selection of extension and validation states and fees
- Response to objections in ESR
- Confirm applicant’s intention to proceed to examination
What is the deadline for responding to the ESR on a direct/divisional filing?
6 months from date of publication.
What is an A1 spec on an EP?
Publication of the specification with the ESR.
What is an A2 spec on an EP?
Publication of the specification without the ESR.
What is an A3 spec on an EP?
Publication of the ESR only.
What deadlines are set by a summons to oral proceedings?
- Date of oral proceedings
- Date for written submissions
What are the deadlines set by a decision to refuse?
- File notice of appeal and pay appeal fee within 2 months of notification of the decision to refuse.
- File grounds for appeal including substantive comments and/or amendments within 4 months of notification of the decision to refuse.
What deadlines are set by the R71(3)?
Approve text for grant by:
- Paying grant and printing fees
- Paying any excess page/claim fees
- Filing claims translations into other 2 EPO official languages
OR
Dissapprove text for grant by:
- Not paying grant and printing fees
- Not filing claim translations
- Filing amendments
Due within 4 months of notification of intention to grant.
When are renewal fees payable to the EPO?
- 3 months before due date until last day of the month 6 months after the due date
- Annually thereafter until the EP grants and enters the national stages
Where are renewal fees payable to after an EP patent is granted?
To the individual patent offices in each validated state.
What is the deadline for filing an opposition and what action must be taken?
Within 9 months of the date of grant the opposing party must:
- Pay opposition fee
- File notice of opposition
- File grounds for opposition
When are formal drawings due on an EP?
On filing.
What is the relevant form for filing a GB design application?
DF2A
What are the minimum requirements for obtaining a filing date on a GB design application?
- Applicant details
- Registration fee
- Representation of design(s) e.g. photos or drawings
How long can publication be deferred for on a GB design?
Up to 12 months if requested on filing.
If deferred, when must publication be requested on a GB design?
Within 12 months of the filing date with a publication fee.
Can GB designs claim priority from earlier GB designs?
No.
When are certified copies of the priority application due on GB design?
Within 3 months of the filing date.
When are any translations due on a GB design?
Within 3 months of subsequent communication from the UKIPO.
What is considered when a GB design enters examination?
- Are filing formalities met.
- Is it a design. (no technical features)
- Is it moral.
- Is the applicant entitled to file in the UK.
- Does is contained any authorised emblems.
What are the minimum requirements for obtaining a filing date for an RCD?
- Request for registration
- Application details
- Representation of design(s) e.g. photos/drawings
How long can publication be deferred for on an RCD?
Up to 30 months if requested on filing.
If deferred, when must publication be requested on a RCB?
At least 3 months before the end of the deferrement period with a publication fee.
How long is the priority period on design applications?
6 months from filing date.
What is the deadline for claiming priority from a previous application on an RCB?
1 month from filing date.
When are certified copies of the priority application due on an RCD?
3 months from declaration of priority.
When is the designation of inventor due on a GB patent application?
16 months from earliest priority date.
When are claims and abstract due on GB patent?
Later of:
- 12 months from earliest priority
- 2 months from flg
When is the application fee due on a GB patent?
Later of:
- 12 months from earliest priority date
- 2 months from flg
What is the latest date for paying the search/filing/transmittal/additional pages fees on a PCT?
1 month from flg
When is the abstract due on a PCT?
2 months from date of subsequent communication from RO
When is the designation of inventor due on an EP
16 months from earliest priority date.
When must priority be claimed on an EP?
On filing.
When must priority documents be submitted on an EP?
16 months from earliest priority date.
When are claims and abstract due on an EP?
2 months from subsequent communication from EPO.
When are translations due on an EP?
2 months from flg.
When are filing/search/excess page and claims fee due on an EP?
1 month from flg.
When is the request for exam due on a GB PCT?
33 months from earliest priority date.
