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FD1 > Filing Requirements/Search + Timelines > Flashcards

Filing Requirements/Search + Timelines Flashcards

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 must be __(1)__ and __(2)__ enough to be __(3)__

A

(1) Clear
(2) Complete
(3) Enabling (to be able to be perfomed by the person skilled in the art)

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5
Q

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

A

The claims shall:

(a) define the matter to be protected
(b) be clear and concise
(c) be supported by the description (cannot rely on support in priority docs)
(d) relate to one invention or a group linked by one 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 matching or complementary special technical features that, when considered as a whole, define a contribution over the prior art (e.g. plug and socket)

UNITY = SINGLE INVENTIVE CONCEPT

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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)
  • does not extol virtues or speculative uses
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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When can a patent application be withdrawn and can it be reversed?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
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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

How much is the application fee and how is it paid?

A

Pay either with PF1, PF9A or AF1.

£60 at filing (or £75 if paid later)

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15
Q

Since when have black-and-white photographs and shading in drawings been allowed?

A

1st October 2016

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16
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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17
Q

Are omnibus claims allowed?

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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18
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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19
Q

How is “an X for purpose Y” interpreted?

A

“an X suitable for purpose Y”

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20
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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21
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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22
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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23
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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24
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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25
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)
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26
Q

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

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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27
Q

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

A

Comptroller quickly alerts applicant

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28
Q

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

A

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

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29
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 missingn part was filed
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30
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
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31
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

32
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
33
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)

34
Q

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

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)

35
Q

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

A

After filing but before grant:

  • new application (a div or filing following a dispute) is filed by the applicant of 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 earlier application

36
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))

37
Q

What is the deadline for filing a description?

A

No priority claim: N/A needed on filing (but if translation needed examiner will request within 2 months)

With priority claim: only necessary if application made in reference to an earlier application. Later of 12 months from priority or 2 months from filing

NB R113 - must be translated on filing

(Extendable with R108(2))

38
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))

39
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: 4 months from filing(?)

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

(Extendable with R108(2))

40
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))

41
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))

42
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

43
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)
44
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

45
Q

What are the conditions to file a divisional under R19?

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
46
Q

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

A

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

47
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)?

A

s13(2) andn R8 - Two months from filing

s15(10) - later of the deadlines in s15(10) or two months

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

48
Q

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

A
  • Applicatoon has a filing date (satisfies s15(1))
  • Application has not been withdrawn or treated so
  • The application fee has been paid
49
Q

What is determined by the preliminary exam?

A
  • if the applicaiton 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

50
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

51
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

52
Q

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

A

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

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

53
Q

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

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
54
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.

55
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)

56
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 (correction of errors) (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)

57
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.

58
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

59
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
60
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)

61
Q

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

A
  • Pay the search fee
  • Amend to render search unecessary
  • Successfully argue otherwise
62
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))

63
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 period, in which case must be done on filing.

Extendable by R108(2).

64
Q

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

A

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

65
Q

What is a s18(4) communication?

A

If the applicant complies within the R30 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 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.

66
Q

How much is the grant fee?

A

Grant fee is free.

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)

67
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)

68
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 effective priority date; or
  • 12 months from the first s18(3) report

Divisional applications inherent the compliance period of the parent application (including if based on s18(3) issue)

69
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
70
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).

71
Q

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

A

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

72
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)

73
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.

74
Q

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

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

75
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

76
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

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