GB patent questions (series 3) - Hard questions Flashcards
What are the 5 possible routes to obtain a GB patent ?
Direct GB filing (first filing)
Direct GB filing (priority-claiming)
Divisional application
National phase filing of a PCT application
Validation of an EP patent in GB
A GB patent application, GB1, was filed on 25 October 2020. The application claims priority from an earlier GB application filed on 11 September 2019. The first examination report was issued in respect of GB1 on 20 February 2024.
a) By when must the later patent application (GB1) be put in order for grant?
Show your calculations.
The compliance deadline is due the later of
a) 4 1/2 years from priority date
b) 1 year from earliest exam report
a) 11/09/2019 + 4 1/2 years = 11/03/2024
b) 20/02/2024 + 1 year = 20/02/2025
So the compliance deadline is 20/02/2025
PCT/GB2021/012942 was filed on 08/05/2021. The case was entered into the UK national phase on 10/09/2023 and published on 14/12/2023. The case was granted on 31/08/2024.
a) What date is the first renewal fee due?
b) What date is the earliest this renewal fee could be paid?
c) what is the last date the renewal fee could be paid without a surcharge?
d) what is the latest the renewal fee could be paid with a surcharge?
a)
5th year renewal = 08/05/2025
Renewal fees are payable last day of the month (08/05/2025 + EOM = 31/05/2025)
So the 5th year renewal fee is due 31/05/2025
b)
Renewal fees can be paid 3 months early
So the earliest the renewal fee can be paid is 01/03/2025 (March/April/May)
c)
The renewal fee can be paid 1 month late with a surcharge
31/05/2025 + 1 month = 30/06/2025
So the renewal fee can be paid without a surcharge up until 30/06/2025
d)
The renewal fee can be paid 6 months late with a surcharge
31/05/2025 + 6 months = 30/11/2025
So the last date for paying the renewal fee with a surcharge is 30/11/2025
A GB application was filed on 20/09/2024 and claimed priority from FR23421 which was filed on 08/11/2023. The GB application was filed in French.
On 20/09/2024 the UKIPO issue an invitation asking for translation of the French specification to be filed into an acceptable language.
a) what languages are acceptable for the translation?
b) what is the deadline for filing the translation?
a) UKIPO acceptable languages are English and Welse
b) translation must be filed within 2 months from invitation
20/09/2024 + 2 months = 20/11/2024
So, a translation must be filed by 20/11/2023
GB1 was filed on 05/09/2024 and claimed priority from US1, which was filed on 15/06/2024. When the GB1 was filed, a set of 16 claims was filed and no description was filed. Instead, reference was made to US1.
a) what is the deadline for filing the description?
The deadline for filing the description is the later of
a) 12 months from priority date
b) 2 months from filing date
a) 15/06/2024 + 12 months = 15/06/2025
b) 05/09/2024 + 2 months = 05/11/2024
So, the description must be filed by 15/06/2025
GB2415413.0 was filed on 18 September 2024 and claimed priority from US61/154153 filed on 18 September 2023
On 25 September 2024 (1 week after filing), your client contacts you and advised that a second priority should have been claimed:
US 05/02/2024 62/015433
a) Is it possible to add the second priority claim? If so, what must be done and by what date?
Priority declaration can be added up to 16 months from the earliest priority date. The declaration must be paid on Patents Form 3 and an official fee paid
18/09/2023 + 16 months = 18/01/2025
So the additional priority can be added up until 18/01/2025
A GB application was filed which claimed priority. The deadline for filing the certified copy was 17/09/2024.
Due to a delay in the postal system, you did not receive the physical certified from your client until 20/09/2024, so you have missed the certified copy deadline.
a) What would you do as a paralegal in these circumstances?
a) The deadline for filing the certified copy is extendable retrospectively, by filing PF52 + official fee
17/09/2024 + 2 months = 17/11/2024
So by 17/09/2024, you need to file the certified copy, file PF52 + official fee (extending the certified copy deadline)
