Deadlines

Question 1

Unlawful disclosures/breach of confidence, extendable?

Answer 1

6m in UK/EP - must file all applications within 6m, it is the filing date that is important, not a priority date. The filing date must be within 6m of the publication to benefit.
12m Grace Period in US

6m period not extendable

Question 2

Can the priority period be extended in the UK? Consequences?

Answer 2

Yes, extendable by 2 months if unintentional - must request late declaration and requires evidence.

Consequences: other countries may not accept the priority claim.

Question 3

Certified copy of priority application, extendable?

Answer 3

16m from earliest priority date, not 16m from each, extendable (form and fee) as of right, further extendable at discretion of Comptroller/UKIPO (form and fee).

Question 4

Making a declaration of priority after filing, extendable?

Answer 4

14m if outside original 12m period, 16m if within.
Not extendable.

Question 5

Requesting reinstatement, extendable?

Answer 5

A reinstatement request must be filed within 12 months beginning immediately after the date on which the application was terminated. This period may not be altered.

Question 6

time limits set by the Comptroller

Answer 6

always 2m as of right extension (form and fee)
further discretionary extension (2m or otherwise) if requested within first 2m extended period

Question 7

Requesting permission to make a late declaration of Priority in respect of an international application for a Patent (UK), extendable?

Answer 7

1m of entry into UK National Phase (still needs to be filed within 14 month of earliest priority date claimed)

not extendable

Question 8

Inventorship, extendable?

Answer 8

16 months from earliest priority date, extendable once as of right by 2m (form and fee).
Discretionary extension may be available.
Reinstatement if unintended may be possible if extension missed.

Question 9

Applicant details, if missing on originally filed Form 1, extendable?

Answer 9

within 2m from notice to file missing parts, extendable once only as of right by 2m (form and fee).

Question 10

Translation of application, if required, extendable?

Answer 10

within 2m from notice to file missing parts, extendable once only as of right by 2m (form and fee).

Question 11

Divisional filing, extendable?

Answer 11

Before publication of grant in OJ, within 3m of compliance end period (compliance end period can be extended as of right by 2m and by a further period at discretion of Comptroller if evidence provided) - divisional filing deadline is not of itself extendable.

Question 12

Inventorship for divisional application, extendable?

Answer 12

within 2 months of filing divisional or if it expires later, 16months from priority.

Extendable once as of right by 2m (form and fee)

Question 13

Priority documents for divisional application, extendable?

Answer 13

within 2 months of filing divisional or if it expires later, 16months from priority.

Extendable once as of right by 2m (form and fee)

Question 14

Filing a copy of the earlier application when filing by reference, when said application is not provided at time of filing. Extendable?

Answer 14

4 months from filing date, extendable once as of right (form and fee) by 2m.

Question 15

Claims and Abstract (no priority claimed)

Answer 15

12m from filing, extendable once as of right (form and fee) by 2m.
Discretionary extension may be available.
Reinstatement if unintended may be possible if extension missed.

Question 16

Search request and fee, extendable (no priority claimed)?

Answer 16

12m from filing, extendable once as of right (form and fee) by 2m.
Discretionary extension may be available.
Reinstatement if unintended may be possible if extension missed.

Question 17

Search request and fee, for a divisional application, extendable?

Answer 17

within 2 months of filing divisional or if it expires later, 12months from filing.

Extendable once as of right by 2m (form and fee)

Question 18

Exam request and fee, extendable (no priority claimed)?

Answer 18

6m from publication,
Extendable once as of right by 2m (form and fee)
Discretionary extension may be available.
Reinstatement if unintended may be possible if extension missed.

Need to pay any excess page fees at same time.

Question 19

Exam request and fee, for a divisional, extendable?

Answer 19

2m from filing of divisional or 24m from earliest date of parent, whichever is later.

Extendable once as of right by 2m (form and fee)

Question 20

Compliance, extendable?

Answer 20

4.5 yrs from earliest date or 12m from first substantive exam report, whichever is later.

Extendable as of right by 2m (form and fee), further at discretion of Comptroller.

Question 21

Compliance for divisional, extendable?

Answer 21

4.5 yrs from earliest date
12m from first substantive
exam report of parent, whichever is later.

Extendable as of right by 2m (form and fee), further at discretion of Comptroller.

Question 22

Compliance for divisional/new application filed by correctly entitled person? Extendable?

Answer 22

4.5 yrs from earliest date
12m from first substantive
exam report of parent, or
18 months from filing of new application,
whichever is later.

Extendable as of right by 2m (form and fee), further at discretion of Comptroller.

Question 23

Restoration of a lapsed patent, extendable?

Answer 23

End of the period ending with the thirteenth month after the month in which the period missed ends.

No extendable.

Question 24

UKIPO: Comptroller must send notification of lapsed patent within how long from end of the extended period for paying renewals?

Answer 24

6 weeks

Question 25

Requesting a withdrawn EP application is converted into UK application, extendable?

Answer 25

3 months from notification of withdrawn status, not extendable.

Question 26

What happens if 3rd party observations are filed within 3 months of the compliance deadline, how long does the applicant have to respond?

Answer 26

3m to respond to observations.

Question 27

Exam request and fee, extendable (priority claimed)?

Answer 27

Same as if no priority claimed, 6m from publication.
2m as of right extension, discretionary extension may be possible.
Possible to reinstate if unintended and miss extension deadline.

Question 28

Claims and abstract (priority claimed)

Answer 28

12m from priority or within 2m of filing
2m as of right extension, discretionary extension may be possible.
Possible to reinstate if unintended and miss extension deadline.