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CIPA INFORMALS - Advanced IP Law and Practice (FD1) - REVISION PACK > Filing Requirements/Search + Timelines > Flashcards

Filing Requirements/Search + Timelines Flashcards

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1
Q

How is a patent filed at the Patent Office?

A

s14(1) - using the prescribed form (PF1) in the prescribed manner

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2
Q

What is the deadline to pay the application fee for a patent application?

A

Within the later of:

  • 12 months from priority
  • 2 months from filing
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3
Q

What comprises a full patent application?

A
  • a request for grant of a patent
  • a specification:
    • a description of the invention
    • one or more claims (optional at filing)
    • drawings, if referred to
  • an abstract (optional at filing)
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4
Q

Section 14(3) - fill the blanks:

The specification of an application shall disclose the invention in a manner which is __(1)__ enough and __(2)__ enough for the invention to be __(3)__

Section 14 - Making of application

A

(1) Clear
(2) Complete
(3) Performed by a person skilled in the art

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5
Q

What are the requirements of the claims provided by Section 14(5)?

Section 14 - Making of application

A

The claims shall:

(a) define the matter for which the applicant seeks protection
(b) be clear and concise
(c) be supported by the description (cannot rely on support in priority docs)
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept (i.e. unity)

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6
Q

When are two or more inventions considered to be unified?

A

Section 14(6) - other unity rules may apply to link two inventions together

Rule 16 - two or more inventions are unified when they share a technical relationship based on one or more matching or complementary special technical features (e.g. plug and socket)

UNITY = SINGLE INVENTIVE CONCEPT

“special technical features” means those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art

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7
Q

What is the purpose of the abstract? What should and shouldn’t the abstract contain?

A

Abstract is for technical information only and does not form part of the state of the art for the purposes of s2(3)

R15:

  • includes title
  • concise
  • contains the field, an explanation and main use of the invention
  • identifies main figure (but Comptroller may choose)
  • must not contain any statement on the merits or value of the invention or its speculative application

Section 2 - Novelty

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8
Q

When can a patent application be withdrawn and can it be reversed?

A

Applicant can withdraw at any time before grant and this cannot be reversed, BUT this does not affect the Comptroller’s ability to correct an error or mistake in the withdrawal under s117(1).

Consider:

  • Evidence available
  • Who made the error? UKIPO or applicant?
  • Consider whether 3rd party rights could arise from published application

Section 117 - Correction of errors in patents and applications

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9
Q

What happens if an applicant’s name or address is not provided on filing?

A

Comptroller will request that they be provided and the applicant has two months to comply

Otherwise, application will be deemed withdrawn

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10
Q

Does the applicant have to provide the title?

A

Yes, it must be short and indicative

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11
Q

When can the claims make references to the description or figures?

A

In general claims cannot refer to the description or figures unless these cannot be clearly and concisely defined in writing or using a mathematical/chemical formula (e.g. a reference to a graph)

NB the description must list any drawings or photographs

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12
Q

What happens if a patent application is filed in a language other than English or Welsh?

A

Comptroller will request that a translation is filed within 2 months from request

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13
Q

What happens if an application referring to a sequence isn’t filed with a copy of the sequence listing?

A
  • Comptroller will request it and set a period to respond, if not provided application may be refused
  • A late filed sequence must be accompanied by a declaration that it does not add matter
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14
Q

What are the limitations of a function claim (i.e. where X is arranged such that Y happens)?

A

Claims must list the elements to be arranged and the disclosure must describe how to arrange them

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15
Q

Are omnibus claims allowed?

Omnibus claims are claims that define the scope of the invention by referring generally to the description or drawings included in the patent application, rather than by reciting specific technical features

A

No, unless the technical features cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written meens (very unlikely in practice).

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16
Q

Can purpose ever be interpreted as a technical feature?

A

Yes, the EPO can now interpret the purpose of a claim as a technical feature see e.g. Mobil Oil, G2/88

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17
Q

How is “an X for purpose Y” interpreted?

A

“an X suitable for purpose Y”

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18
Q

Do the rules require reference numerals and two-part form in the claims?

A

No - note that both GB and EP(GB) claims need to be accomodated

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19
Q

What is meant by ‘enabling’?

A

Provides enough info for the skilled person to work the invention across the whole scope of the claims.

A ground for revocation.

(NB for medical use claims which are open-ended in terms of diseases, disclosure needs to make claim scope plausible).

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20
Q

What is the meaning of ‘sufficiency’?

A

(related to enablement but distinct)

Test of whether claims are defined by the description clearly and completely i.e. insufficiency arises when the claim encompasses something that the description does not describe clearly and completely enough for the skilled person to replicate.

Insufficiency is a ground for revocation.

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21
Q

What are the three types of insufficiency?

A

Classical - claimed invention can’t be performed without undue burden

Biogen - the invention cannot be performed across the whole scope of the claim without undue burden

Insufficiency by ambiguity - the skilled person would not know if they were working the invention

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22
Q

What is support?

A

Support is simply a pre-grant question - is there enough technical information in the application to support the text of the claims

You might have support for a manufacturing process but have a lack of enablement (e.g. if the starting conditions aren’t specified) that leads to insufficiency

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23
Q

What is the minimum necessary to obtain a date of filing?

A

Section 15(1)

Filing date is the earliest date when the application documents:

  • indicate that a patent is sought
  • identify the applicant or enable contact and
  • contain either:
    • something that appears to be a description of the invention
    • a reference to an earlier relevant application of the applicant or their predecessor (including filing date, Application No., country of filing)

Section 15 - Date of filing application

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24
Q

What are the criteria for an “apparent description” to be accepted as per Section 15(2)?

Section 15 - Date of filing application

A

None, it is immaterial whether:

  • it is provided in English or Welsh
  • it otherwise complies with the act or rules
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25
Q

What happens if one or more of the requirements of s15(1) is met, but not all?

15(1) = earliest date of filing

Section 15 - Date of filing application

A

Comptroller will as soon as practicable after the filing of those documents notify the applicant of what else must be filed in order for the application to have a date of filing

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26
Q

What happens if an application does meet all the requirements of Section 15(1)?

Section 15 - Fiiling date of application

A

Comptroller will alert applicant of the date of filing and any other outstanding requirements (with their time limits)

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27
Q

What are the default rules relating to filing a missing part (with no claim to priority)?

A

Under s15(5):

if an application already has a filing date but:

  • between filing and the preliminary exam or within 2 months of notification by preliminary examiner, the applicant files:
    • a drawing, or
    • some text of the description
  • and the drawing/text was missing from the application at the date of filing then, unless the applicant withdraws it again before the preliminary exam or specified period:
    • the missing part will be treated as included
    • the date of filing will be re-dated to when the missing part was filed

Section 15 - Filing date of application

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28
Q

How can the filing date be maintained when filing a missing part?

A

The application won’t be re-dated if:

  • on or before the initial filing date, a priority document is declared that identifiably contains the missing parts, and
  • a request is made not to re-date, identifying the missing parts in the priority document; and
  • the request is made before preliminary exam or within the 2 month period specified by the preliminary examiner

NB : Priority cannot be** late declared**

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29
Q

How and when can an applicant withdraw filed missing matter?

A

Withdraw in writing to Comptroller.

Between filing and preliminary exam or within 2 months of notification by preliminary examiner

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30
Q

When will a request not to re-date after filing missing parts fail?

A

If either:

  • the priority document is missing any of the added material, or
  • the certified priority document is not filed within the earlier of the normal 16-month period or 4 months from the date of request to keep the fiilng date
31
Q

Scenario:

A preliminary exam report is issued, and there is no indication of missing parts, but you recognise a missing part

A

You can still file a missing part within 2 months as if you were notified of it using R108(2)

32
Q

What power of the Comptroller is specifically reserved in Section 15?

Section 15 - Date of filing application

A

Subsections (6) and (7) don’t affect the power of the Comptroller to correct errors and mistakes under s117(1)

(e.g. if a figure is missing because of a clerical error at the UKIPO, you can fix without re-dating)

33
Q

What are the requirements to get a divisional application with the same filing date as the parent application according to Section 15(9)?

Section 15 - Date of filing application

A

After filing but before grant:

  • new application (a div or filing following a dispute) is filed by the applicant or their successor in respect of any part of the matter of the earlier application; and
  • the new application satisfies s15(1) (without adding matter)

then new application will be given the same filing date as the parent application

34
Q

What is the deadline for filing the claims/abstract?

A

No priority claim: within 12 months of filing

With priority claim: the later of 12 months from priority or two months from filing

(Extendable with R108(2))

35
Q

What is the deadline for filing a description if referring to an earlier application?

A

No priority claim: 12 months

With priority claim: Later of 12 months from priority or 2 months from filing

NB: certified copy of earlier application app should be filed within 4 months of filling. Cert copy should be translated as per R113

(Extendable with R108(2))

36
Q

What is the deadline for filing the certified copy for an applicaiton made in reference?

A

No priority claim: N/A

With priority claim: 4 months from filing (not 16 months from priority)

NB certified copy will also need to be translated at this time

(Extendable with R108(2))

37
Q

What is the deadline for filing the certified copy for an application with a normal priority claim?

A

No priority claim: N/A

With priority claim: 16 months from earliest priority date

NB a translation is only necesary if requested by the Comptroller to assess novelty/inventive step

(Extendable with R108(2))

38
Q

What is the deadline for paying the application fee?

A

No priority claim: within 12 months of filing

With priority claim: the later of 12 months from priority or two months from filing

(Extendable with R108(2))

39
Q

What is the deadline for requesting search and paying the search fee?

A

No priority claim: within 12 months of filing

With priority claim: the later of 12 months from priority or two months from filing

(Extendable with R108(2))

40
Q

What happens if you forget to pay excess claims fees with the search fee?

A

Excess claims fees for all claims over 25.

If you don’t pay them, the application will be treated as withdrawn

41
Q

What should you do if you have forgotten to pay (e.g.) the search fee?

A
  • Application will be deemed withdrawn
  • If within 2 months, request an automatic 2-month extension under R108 (FORM + FEE)
  • If beyond 2 months, consider if a further discretionary extension under R108 is likely to succeed
42
Q

What is the deadline to pay the search/application fees for a PCT application entering the GB regional phase?

A

If not paid on filing, you have until 2 months from the start of the national phase to pay

43
Q

What are the conditions to file a divisional under R19?

Rule 19 - New applications filed as mentioned in section 15(9) | Section 15 - Date of filing an application

A

Divisionals can only be filed if:

  • Parent is not terminated/withdrawn
  • Parent is still pending (not granted)
  • Not within the last 3 months of the R30 compliance period
  • Filed with a statement identifying it as a divisional under s15(9)
44
Q

What is the deadline to file a new application following a s8, s12 or s37 dispute?

Section 8 - Determination before grant of questions about entitlement to patents, etc.
Section 12 - Determination of questions about entitlement to foreign and convention patents, etc.
Section 37 - Determination of right to patent after grant

A

Within 3 months of the Comptroller’s order or within 3 months of the end of any appeal

45
Q

What is the deadline for new divisional applications or post-dispute applications to comply with s13(2) (inventorship declaration) and R8 (filing priority documents) and the deadlines under s15(10)?

Section 13 - Mention of inventor

A

later of 16 months from priority or two months from filing

Unless filing within the last 6 months of the compliance period, in which case must comply on filing

46
Q

What are the conditions of s15A(1) to get preliminary examination?

Section 15 - Date of filing application

A
  • Application has a filing date (satisfies s15(1))
  • Application has not been withdrawn or treated so
  • The application fee has been paid
47
Q

What is determined by the preliminary exam?

A
  • if the application complies with the formal requirements
  • if any acts under s13(2) (inventorship) or s15(10) need to be complied with.

NB after preliminary exam you can’t file missing pages

Section 13 - Mention of inventor
Section 15 - Date of filing application

48
Q

If deficiencies are found during preliminary exam, what happens?

A

The Comptroller will specify a period (typically two months) in which to:

  • make observations, and/or
  • amend the application to comply

If not fixed, application can be refused

49
Q

When are applications published?

A

s16(1) - as soon as possible after 18 months from the priority date, or earlier if requested by the applicant

NB a request for early publication will prevent a late priority claim - so make sure priority is in order

Section 16 - Publication of application

50
Q

When will a withdrawn application publish and what is the consequence?

A

If withdrawn after preparations to publish are complete, then the application will publish anyway (typically about 5 weeks beforehand)

but, the application will not be s2(3) art

Section 2 - Novelty

51
Q

What are the requirements for a search under s17(1)?

Section 17 - Search

A
  • Preliminary exam done
  • Application has not been refused or withdrawn
  • Before the later of 12 months from priority or two months from filing:
    • search request filed on PF9A
    • search fee (£150 - £180 on paper) + claims fees paid
  • Application includes:
    • a description
    • one or more claims
  • Description and claims comply with rules on language
52
Q

When will a lack of unity be found and what happens?

A

Examiner will determine if their is a lack of unity during search.

If a lack of unity is found, the examiner searches the first invention only.

Applicant must pay additional search fees if they want the other invention(s) searched.

53
Q

What is the deadline to pay additional search fees?

A

no later than three months before the end of the R30 compliance period (FEE + FORM)

54
Q

When will supplementary searches be carried out?

A

S17(7) - Comptroller can request an updated search at any time if thought applicable.

S17(8) - Supplementary searches due to an amendment under s18(3), 19(1) or s117 (i.e. due to applicant’s actions) require a further fee (£150) unless waived by Comptroller

NB this allows for unsearched subject-matter to later be incorporated into a claim (more lenient than EPO)

Section 17 - Search
Section 18 - Substantive examination and grant or refusal of patent
Section 19 - General power to amend application before grant
Section 117 - Correction of errors in patents and applications

55
Q

Can you request an accelerated search?

A

Yes, with a reason (e.g. wanting to see the results prior to foreign filing). This is distinct from acceleration due to infringement or general accelerated prosecution.

56
Q

Under what circumstances will a combined search and examination happen?

A

If PF9A and PF10 are filed together (if you don’t want this to happen you must specify).

except PCT(GB)’s that have already been searched

57
Q

Under what circumstances might the search fee be refunded?

A
  • If application is withdrawn before the search starts
  • If the same claims were searched in the parent application
58
Q

What is the dealine to request examination?

A

Once the requirements of s17(1) are satisfied (i.e. a search is done), the applicant should:

  • request and examination within six months of publication of the application (if not done already) and
  • pay the fee (£100 or £130 on paper) + excess description page fees (for description only; £10 per page over 35)

Otherwise application will be deemed withdrawn

Extendable by R108(2) and by the Comptroller’s discretion under R108(3) w/evidence of unintentional. If all else fails can reinstate using s20A (this goes for all examination request deadlines)

Section 17 - Search

59
Q

If the examiner requires a supplementary search, what are the applicant’s options?

A
  • Pay the search fee
  • Amend to render search unecessary
  • Successfully argue otherwise
60
Q

What is the deadline to request examination for an application subject to a secrecy order?

A

2 years from the priority date (equivalent to 18 + 6)

(Extendable by R108(2))

61
Q

What is the deadline to request examination for new applications (divisionals/entitlement)?

A

The latter of the parent deadline (i.e 6 months from publication) or two months from filing;

unless within 6 months of the R30 compliance period, in which case must be done on filing.

Extendable by R108(2).

62
Q

How many opportunities is the applicant entitled to have to bring the application in order for grant following an examination report?

A

S18(3) - Applicant entitled to one opportunity to comply with any defects highlighed by the exam report or argue against them

Section 18 - Substantive examination and grant or refusal of patent

63
Q

What is a s18(4) communication?

Section 18 - Substantive examination and grant or refusal of patent

A

If the applicant complies within the R30 compliance period, the Comptroller will grant the application upon payment of the grant fee (free - unless pages/claims added). The s18(4) communication is an indication on intention to grant - it sets the grant date (1 or 2 months)

If a s18(4) is the first communication (i.e. a s18(3) examination report was not previously issueed) then the applicant has two months to make voluntary amendments to the application (and file divisionals).

If a s18(3) has been issued before the s18(4) then at least a one month window is provided to make voluntary amendments and/or file divisionals.

Section 18 - Substantive examination and grant or refusal of patent

64
Q

How much is the grant fee?

A

No grant fee is payable for GB applications/patents.

BUT if claims or description pages were added during prosecution (after search/exam fees paid), the difference will need to be paid within 2 months of the s18(4). Failure to pay will lead the application to be deemed withdrawn.

Extendable by R108(2)

Section 18 - Substantive examination and grant or refusal of patent

65
Q

What happens if two or more applications for the same invention have the same priority date and same owner?

A

Double Patenting

The Comptroller will only grant one of them.

Typical case is a GB and an EP(GB):

  • Amend the cases to be different
  • Withdraw the GB designation of the EP
  • Surrender the EP(GB)
  • Let the EP(GB) supplant the GB patent (UKIPO examiner will wait until end of opposition period)

(bare in mind any licences)

66
Q

What is the compliance period for a normal application and divisionals?

A

The time limit to bring the application in order for grant (i.e. all successful arguments by this point).

The later of:

  • four years and six months from the earliest priority date; or
  • 12 months from the first s18(3) examination report

Divisional applications inherit the original compliance period of the parent application, even if the compliance period of the parent application has been extended under R108 at the time of filing the divisional application.

Section 18 - Substantive examination and grant or refusal of patent
Divisional applications filed on or before Friday 28 April 2023 inherit the extended compliance period of the parent application

67
Q

What is the compliance period for new applications following a dispute?

A

The later of:

  • the compliance period for the originating application; or
  • 18 months from the filing of the new application
68
Q

Can the compliance period be extended?

A

Yes, the period can be extended as of right under R108(2) and under R108(3) (discretionary - need evidence).

69
Q

What happens if the first s18(3) issues after the end of the default compliance period?

Section 18 - Substantive examination and grant or refusal of patent

A

The Compliance period extends up until issue of the first 18(3) and then + 12 months

Section 18 - Substantive examination and grant or refusal of patent

70
Q

What is the deadline to request examination for a PCT application entering the GB national phase?

A

later of 33 months from priority (31 + 2 months) or two months from national phase entry.

Extendable under R108(2).

(Also when the search fee is due, but often refunded if UKIPO can use the ISR)

71
Q

What happens if no objections are raised during search and examination?

A

Comptroller will wait at least 3 months from publication to wait for third party observations. In this case consider requesting early publication.

72
Q

What voluntary amendments can be made after receipt of the s18(4) communication?

Section 18 - Substantive examination and grant or refusal of patent

A

(After 1st October 2016)

If s18(4) is first communication - two months to make voluntary amendments or file divisionals

If s18(4) is not the first communication - at least one month in which is make voluntary amendments and file divisionals

After this there may be a limbo period before actual grant

Section 18 - Substantive examination and grant or refusal of patent

73
Q

What are the requirements to record a patent in Hong Kong?

A

Can record a patent in HK based on a granted GB, EP(GB) or CN within 6 months of grant, provided the application was recorded in HK within 6 months of publication

74
Q

What are the requirements to request accelerated examination/prosecution?

A

Accelerated examination is different from early publication or accelerated search.

Minimum 3-month window between publication and grant (to allow for third party observations)

Must show:

  • Hardship (e.g. potential infringement or investment concerns)
  • ‘Green’ inventions

CIPA INFORMALS - Advanced IP Law and Practice (FD1) - REVISION PACK (19 decks)

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