GB Patent questions (series 2) Flashcards
A UK application was filed on 20/05/2021 and did not claim priority. The 1st examination report was issued on 15/12/2022.
A new divisional application was on 23/3/2023. A combined search and exam report for the divisional was issued on 20/06/2023.
What is the compliance deadline for the divisional application?
For a divisional application, the compliance deadline is the same as the parent (excluding any extensions on the parent).
The compliance deadline on the parent is due the later of:
a) 4 ½ years from the filing date
b) 1 year from the 1st exam report (on the parent)
20/05/2021 + 4 ½ years = 20/11/2025
15/12/2022 + 1 year = 15/12/2023
So, the compliance deadline for the divisional will be 20/11/2025
A UK application was filed on 26/02/2006, claiming an earlier priority date of 24/02/2005. It was granted on 25/06/2010.
Assuming all renewal fees are paid, when would the patent expire?
The patent would expire 20 years from the filing date
26/02/2006 + 20 years = 26/02/2026
So, the expiry date of the patent would be 26/02/2026
A UK application was filed on 15/05/2021 and did not claim priority. A combined search and examination report was issued on 26/02/2022.
The UKIPO raised a lack of unity objection and only searched the 1st invention (there are 2 inventions according to the UKIPO). If the applicant wanted the 2nd invention searched, what is the deadline for requesting an additional search?
The deadline for requesting an additional search is 3 months before the compliance deadline (same as divisional application)
The compliance deadline is due the later of:
a) 4 ½ years from the filing date
b) 1 year from the 1st exam report
15/05/2021 + 4 ½ years = 15/11/2025
26/02/2022 + 1 year = 26/02/2023
So, the compliance deadline is 15/11/2025
The deadline for paying the additional search fees is the same as filing a divisional (3 months before the compliance deadline).
15/11/2025 – 3 months = 15/08/2025
So, the deadline for requesting an additional search in respect of the 2nd invention is 15/08/2025
A client wishes to enter the UK National phase of PCT/US2020/023842 which was filed on 14/05/2023 and claimed priority from 61/231453 which was filed on 14/05/2022.
What is the deadline for entering the UK national phase?
The deadline for entering the UK national phase is 31 months from the priority date. Therefore;
14/05/2023 + 31 months = 14/12/2024
So, the deadline for entering the UK national phase is 14/12/2024.
A UK application was filed on 15/09/2024, claiming priority from a previous UK application filed on 15/03/2024.
What is the deadline for filing Statement of Inventorship?
Statement of Inventorship is due 16 months from the earliest priority.
15/03/2024 + 16 months = 15/07/2025
So, the deadline for filing the designation of Inventor is 15/07/2025
You filed a UK patent application on 12/09/2024 with a set of 29 claims. The UK application claimed priority from a US patent application filed on 22/09/2023.
a) What is the deadline for filing a request for a search?
b) If no amendments are made to the text as filed, how many excess claims fees are payable?
A: The deadline for requesting search is the later of:
a) 2 months from filing date or
b) 12 months from the priority date
12/09/2024 + 2 months = 12/11/2024
22/09/2023 + 12 months = 22/09/2024
Therefore, the deadline for filing the request for search is 12/11/2024
B: Excess claims fees are payable for each claim in excess of 25.
29 claims – 25 = 4
So, 4 excess claims fees are to be paid
A UK application was filed on12/03/2024. A description and drawings were filed, but no other forms or fees were paid. No priority was claimed on this application.
What formalities need to be met 12 months from the filing date?
Claims
Abstract
Search Fee and Excess claims fees (if more than 25 claims)
Application Fee
How do you request combined search and examination and what official fees need to be paid?
The request for search (PF9a) and the request for examination (PF10) should be filed on the same day.
The search fee and examination fees would need to be paid. If there are more that 25 claims, excess claims fees would also need to be paid (on the PF9A). If the description contained more than 35 pages, additional page fees would also need to be paid (on the PF10).
A UK patent application is filed on 28/11/2023, with no priority claim and no application fee paid.
a) What is the deadline for paying the application
fee?
b) Can this deadline be extended? If yes, how
would you request the extension?
c) What is the latest date you can request the
extension?
a) The application fee is due 12 months from the
filing date
28/11/2023 + 12 months = 28/11/2024
So, the application fee is due 28/11/2024
b) The deadline can be extended by filing a filing
PF52 + payment of official fee
c) The extension can be requested retrospectively
within 2 months of the original deadline for paying
the application fee
28/11/2023 + 2 months = 28/01/2025
The deadline for filing a UK divisional is 24/10/2023 (3 months before compliance deadline).
Can this divisional deadline be extended?
You cannot extend the divisional deadline directly. However….
The divisional deadline is 3 months before the compliance deadline. The compliance deadline can be extended retrospectively by 2 months, by filing PF52 + paying the official fee. So, if you extend the compliance deadline, this will have the effect of giving you another 2 months to file a divisional
A UK patent application was filed on 01/09/2024 and claimed priority form an application filed on 23/11/2023. No description was filed with the UK application. Instead, reference was made to the earlier filed application on 23/11/2023.
What is the deadline for filing a description?
The deadline for filing the description is the later of:
a) 2 months from the filing date
b) 12 months from priority date.
01/09/2024 + 2 months = 01/11/2024
23/11/2023 + 12 months = 23/11/2024
So, the deadline for filing the description is 23/11/2024.
