Extensions of Time, Reinstatement etc.

Question 1

Can an incorrectly withdrawn application be saved?

Answer 1

Yes, s117A and s117.

s117(3) where the request is related to an erroneous withdrawal if an application, and:
a) the application has been published, and
b) withdrawal was published, then
c) the Comptroller will also publish the request for correction.

The Comptroller cannot fix an erroneously withdrawn application of their own volition, they require an order from the proprietor, representative, Examiner etc.

Question 2

Can the Comptroller correct errors in patents and applications of their choice?

Answer 2

s117(1) Subject to the rules, the Comptroller may correct errors in translation or copying, or other clerical errors or mistakes in the patent specification or any associated documents.

s117(2) Any person may oppose a requested corrected.

Question 3

How should an applicant/proprietor go about requesting to correct an error in a patent? (3)

Answer 3

r105
1) in writing
2) clearly specify the corrections to make,
3) the correction should be obvious to make (unless it is due to corruption during electronic transmission)

point 3) only applies to the specification, non-obvious errors in other application documents and forms can be corrected.

Question 4

How can correction of irregularities of procedure before the UKIPO be corrected?

Answer 4

r107
The Comptroller may correct for any irregularity of procedure before the UKIPO if he thinks fit, and subject to any conditions if he considers appropriate but extensions of due dates can only be allowed if the UKIPO contributed wholly or in part to the irregularity.

Question 5

Who can oppose a requested correction to a patent/application?

Answer 5

anyone

Question 6

When can the Comptroller grant any length of extension to a deadline?

Answer 6

Only when the irregularity given rise to the missing deadline was wholly or partially the UKIPOs fault (without prejudice to the discretionary extensons available in r108)

Question 7

Do third party rights arise in the situation wherein an application has been incorrectly withdrawn?

Answer 7

Yes - if someone began in good faith an otherwise infringing act in the period between advertisement of the withdrawal and advertisement of the request to correct, they gain these rights.

Does not apply if someone only begins/prepares to infringe in the period after the request to correct has been advertised.

Of course, only applies if the application ever actually grants.

Question 8

How can extensions of time w.r.t deadlines specified by the Comptroller be obtained?

Answer 8

s117B
Does not apply to proceedings before the Comptroller.

A request in writing within two months of missing a deadline set by the Comptroller will be granted. There is no form and no fee.

If an extension under s117B(2) has already been used to extend a period, it cannot be used to extend the period again. However, the Comptroller has discretion to extend further (subject to any conditions he thinks fit).

Question 9

Can s117B be used for the same period twice?

Answer 9

No. If an extension under s117B(2) has already been used to extend a period, it cannot be used to extend the period again. However, the Comptroller has discretion to extend further (subject to any conditions he thinks fit).

Question 10

If an applicant fails to respond to a UKIPO Examiner’s report, is the application deemed withdrawn?

Answer 10

No. It is deemed ‘dormant’.

Question 11

Can reinstatement be used for errors in the s117B process?

Answer 11

No. Reinstatement excludes the s117B process. This becuase the failure to reply to the Examiner’s report renders the application ‘dormant’ not ‘withdrawn’.

One still has the R30 period to get it in order, but this will now be discretionary if both the reply and the subsequent r117B deadline were missed.

Therefore, it is important to ensure the 117B request is clear and the application is properly identified, and to then meet the extended deadline.

Question 12

If you foresee that you are not going to meet an extended deadline (following request of a two month as of right extention within two months of missing a deadline set by the Comptroller), what should you do?

Answer 12

r108
Form and Fee.
Request in writing the extension befor expiry of that extended two-month period.
This is discretionary.

Question 13

If you missed the deadline for applying for an as of right extension under r108(2), will it be possible to get a discretionary extension under r108(3)?

Answer 13

No - the original deadline was therefore more than two months ago.

Question 14

s20A: The Comptroller shall reinstate an application (which has been refused or treated as withdrawn due to missing a deadline either set by the Comptroller or the Act itself.) if so requested by the Applicant according to the Rules and the Comptroller is satisfied of what?

Answer 14

That the failure was unintentional.

Question 15

In what circumstances will the Comptroller not reinstate an application under s20A? (3)

Answer 15

1) they are not satisfied the failure was unintentional;

2) an extension of time is still available;

3) the missed deadline relates to:
i. proceedings before the Comptroller;
ii. late declaration of priority with late filing;
iii. reinstatement itself or a requested extension under s117B.

Question 16

Can reinstatement be used for a deadline relating to proceedings before the Comptroller?

Answer 16

NO

Question 17

Can reinstatement be used for a deadline relating to a late declaration of priority with late filing, when the Comptroller has already under s5(2B) given permission for a late delcaration to be allowed??

Answer 17

No

Question 18

Can one of joint applicants request reinstatement unilaterally?

Answer 18

Yes, with the permission of the Comptroller.

Question 19

Following reinstatement, the applicant has how long to rectify the failure that caused refusal or effective withdrawal?

Answer 19

At least two months.

Failure to comply by this deadline will result in the application being treated as withdrawn on that deadline.

Question 20

When can reinstatement be requested until?

Answer 20

12 months beginning immediately after the date of termination of the application.

Question 21

What happens if the applicant does not provide evidence alongside their request for reinstatement?

Answer 21

The Comptroller will specify a period to provide it.

Question 22

What happens if reinstatement is refused?

Answer 22

The applicant is notified and they have one month to request a hearing at which they have the opportunity to be heard before the Comptroller decides again after the hearing.

Question 23

Are reinstatement requests published in the OJ?

Answer 23

Yes - if the application is published.

Question 24

Does unintentional cover making a bad decision and then changing ones mind?

Answer 24

No.

Question 25

Are large applicants/firms held to the same level as small applicants/firms/sole representatives w.r.t events resulting in unintentional missing of a deadline at the UKIPO?

Answer 25

small applicants may be held to lower standard as events have a larger impact on them than a larger applicant.

Question 26

What are the key effects of reinstatement (s20B)? (3)

Answer 26

1. anything done with or to the application between lose and reinstatement is treated as valid;
2. actions in bad faith - if already published as app. - then infringing acts are treated as such if done during a potential extension period, or if continuing/repeating an earlier infringement
3. actions in good faith - if already published as app. - between termination and req. of reinstatement, anyone who begins in good faith/make serious effectice prep. to do so may continute.

Question 27

Can someone who, between termination of an application and the request for reinstatement, begins in good faith to effectively infringe, or makes serious and effective preparations to do so, continue to do so? What is the caveat?

Answer 27

Yes - but this right is not exercisable until after any period in which an extension could have been requested for a deadline as per s20A(1) is missed.

Question 28

Can someone who, between termination of an application and the request for reinstatement, begins in good faith to effectively infringe, or makes serious and effective preparations to do so, assign the right to to continue to do so?

Answer 28

No - the right applies to partners in a business but can only be transferred as part of the business itself.

Question 29

How can a lapsed patent be restored?

Answer 29

s28
When a patent lapses due to a failure to pay any renewal fee, apply for restoration using PF16 within the presecribed period of 13 months after the grace period of 6 months, from the end of the calendar month of lapse.

Provide evidence.

Question 30

What is the prescribed period for the restoration of a lapsed patent?

Answer 30

13 months after the grace period of 6 months (from the end of the calendar month of lapse)

Question 31

Is notice of an application to restore a lapsed patent under s28 advertisded?

Answer 31

Yes, in the OJ

Question 32

Who can request restoration of a lapsed patent under s28?

Answer 32

proprietor, a person who would otherwise be the proprietor or (with the Comptroller’s permission) unilaterally by one of several joint proprietors

Question 33

Can one of several joint proprietors act unilaterally to request restoration of a lapsed patent under s28?

Answer 33

Yes - with the Comptrollers permission.

Question 34

If no evidence is provided alongside a request for restoration of a lapsed patent under s28 what happens?

Answer 34

The Comptroller will specifiy a period within which it must be provided.

Question 35

Can a negative decision following a request to restore a lapsed patent under s28 be appealed?

Answer 35

Yes, one month from notification of negative decision to request a hearing before the Comptroller.

Question 36

What is the time limit to comply following a decision to allow reinstatement under s28?

Answer 36

Typically two months but may be longer where circumstances require, in which to file PF12 and all the outstanding fees after the decision to allow reinstatement, before reinstatement is enacted and advertised.

Question 37

Are the effects of restoration of a patent under s28 w.r.t third party rights the same as the effects w.r.t missed deadlines etc.?

Answer 37

Yes - if after the grace period had expired and before the notice of application to restore was published, an otherwise infringing act or serious effort to do so is begun in good faith by a third party, then they may continue to do so, although this is not a transferrable licence per se.

Can only assign or bequeath the right as part of the business itself.

Question 38

What are the consequences of surrending a patent? (6)

Answer 38

1. No action for infringement, and
2. No claim in respect of crown use,
3. lies in respect of any act done before the date of advertisement of the acceptance of the offer to surrender the patent,
4. Surrender does not terminate revocation proceedings,
5. nor does it terminate entitlement proceedings,
6. Surrender of a GB patent does not allow one to avoid the double patenting provisions.

Question 39

Can a third party oppose an offer to surrender a patent?

Answer 39

Yes

Question 40

The notice of the offer to surrender a patent must contain what?

Answer 40

a statement that there is no pending action for revocation or infringement (i.e. likely to question validity, which can result in a retroactive loss of a patent) or where an action is pending, full details of the action.

Question 41

Why might someone proactively surrender a patent?

Answer 41

surrender of a patent (governed by section 29 of the Patents Act 1977) results in the patent ceasing to have effect as of the date of publication of the surrender (ex nunc). Surrendering is a quicker and more definite way for a patentee to be rid of an unwanted patent than simply allowing the patent to lapse by failing to pay renewal fees. By contrast, if a patent is revoked under section 72, the effect is retroactive and the patent is deemed never to have been granted (ex tunc).

Question 42

Is the period for paying the fee for an SPC extendable?

Answer 42

No

Question 43

Is the period for new desposits of biological material extendable?

Answer 43

No

Question 44

Is the period for making a request to the comptroller for permission to make a late declaration of priority in respect of an international application for a patent (UK)) extendable?

Answer 44

No

Question 45

Is the period to apply to cancel entry that a licence of right is available extendable?

Answer 45

No

Question 46

Is the period to apply to restore a patent extendable?

Answer 46

No

Question 47

Is the period to apply to reinstate a terminated application extendable?

Answer 47

No

Question 48

Is the period for making a request to the comptroller for permission to make a late declaration of priority extendable?

Answer 48

No

Question 49

What is the maximum length of time the deadline for filing a statement of inventorship can be extended? what is required? (6)

Answer 49

1) two month extension as of right
2) form and a fee
3) further discretionary extension available by filing form 52
4) with evidence and payment of fee
5) Further extension must be requested within the two month as of right extension and is limited to two months
6) initial deadline is 16m from priority, extendable to a maximum of 20m from priority (2m as of right, discretionary 2m).

Question 50

What is the maximum length of time the deadline for filing a certified copy of the priority document can be extended? What is required? (5)

Answer 50

1) two month extension as of right
2) form and a fee
3) further discretionary extension available by filing form 52
4) with evidence and payment of fee
- unlike inventorship, the further extension does NOT need to be requested within the two month as of right extension and is NOT limited to two months
5) The certified copy must be filed. initially by 16m from priority but even with extensions it must be provided by the time the preparations for publication are complete or priority will be lost.

Question 51

What criteria must be satisfied before the comptroller will refer an application for preliminary examination? (3)

Answer 51

The application has a date of filing (1 mark); the application has not been withdrawn (1 mark); and, the application fee has been paid (1 mark).

Question 52

The UK IPO has cited the abstract of an earlier UK patent application as prior art against your client’s application. Is the abstract valid prior art?

Answer 52

If the abstract was published before the filing/priority date of your client’s application then it is full prior art (1 mark). If the earlier application was filed before but published after the filing date of the client’s application (1 mark) then it is not novelty only prior art (1 mark).