Mixed deadlines Flashcards
File statement that invention displayed at international exhibition
UK: 4 months from filing
PCT(UK): 2 months from NP entry
File new application following entitlement dispute
3 months from decision / end of any appeal
s12(6) - Where PCT(UK)/EP(UK) refused or withdrawn or UK designation withdrawn, Comptroller may he believes actually to be entitled to file new application by when
3 months of refusal/withdrawal
Search and filing fee for new application following entitlement dispute
1 month from initiation date
If old application/licensee worked/made serious and effective preps to work invention in good faith before registration of new applicant, they can file request to new applicant for licence to keep working invention by when
2 months from Comptroller’s decision
Statement of inventorship (UK, PCT(UK))
UK: 16 months from priority
PCT(UK): later of 16 months from priority and 2 months from NP
Transfer of patent to rightful owner is actionable
Up to 2 years from grant, unless registered proprietor knew at grant that they were not entitledE
Employee applies to Comptroller for compensation
From grant up to 1 year after patent ceases to have effect
Application / search fees for UK app
Application / search fees for PCT(UK) app
UK: If priority: later of 12 months from priority and 2 months from filing. No priority: 12 months from filing
PCT(UK): Later of 12 months from priority, 2 months from filing and 2 months from NP entry
File description, if earlier application referenced on filing request for patent
If priority: later of 12 months from priority and 2 months from filing. No priority: 12 months from filing
File certified copy and translation (if needed) of earlier application referenced on filing
Within 4 months of filing
File missing parts (drawing or some text of description), and request not to re-date (if desired)
Between filing and start of preliminary examination, or within 2 months from notification by preliminary examiner
File certified/verified priority doc which contains the missing parts (where request not to re-date made)
Earlier of 16 months from priority or 4 months from date of filing request not to re-date
File divisional
Before expiry of 3 month period ending with compliance date (assuming parent not terminated, withdrawn or granted)File
When must one complete formalities for new applications (divs or result of entitlement dispute) on filing
If new application filed within last 6 months of compliance period
Correct erroneous priority date in a declaration of priority
2 months from invite (preliminary examination stage)
Completion of technical preparations for publication
Around 5 weeks before expiry of 18 months from priority
Pay additional search fee(s)
On or before the start of the 3-month period ending with the compliance date
UK: Request exam and pay exam fee (inc. excess description pages fees)
PCT(UK): Request exam and pay exam fee (inc. excess description pages fees)
UK: 6 months from publication of application
PCT(UK): later of 2 months from NP entry and 33 months from priority (i.e. where enter NP early)
Request exam and pay exam fee (inc. excess description pages fees) for new application (div/dispute)
Later of 2 years from priority date and 2 months from initiation date.
But comply on filing if within last 6 months of compliance date.R
Request exam and pay exam fee (inc. excess description pages fees) for application under secrecy order
2 years from priority date
Pay grant fee (i.e. excess claims and pages fees as no grant fee)
2 months of notification from Comptroller
Earliest application can be granted (e.g. if no objections in combined search and exam report before publication)
At least 3 months after publication
Intention to grant: notice period for grant date (and therefore to file divs/voluntary amendments before grant)
At least 1 month from notification
Intention to grant: notice period for grant date (and therefore to file divs/voluntary amendments before grant), where intention to grant is the 1st exam report
2 months from notification
Response time (and extension time) if 1st exam report issued more than 3.5 years after priority date
2 months (instead of 4)
Extendable only to 4 months total (instead of 6 total)
Appeal decision to refuse
Typically 28 days from decision or 14 days if on a point of procedure
Request reinstatement
Within 12 months from termination
Period specified upon approval of request to reinstate application to remedy failure that caused termination
At least 2 months (but best to remedy on filing reinstatement request)
Where evidence to show failure was unintentional in a request for reinstatement/restoration is insufficient, the period to request hearing
1 month from notification
Comptroller can prohibit publication if application prejudicial to national security
Up to 3 months after publication typically due, so 21 months from filing
If SOS orders continuance of secrecy directions, when are directions reconsidered
Within 9 months from filing date, and at least every subsequent 12 months
Earliest overseas application can be filed if relates to military technology / prejudicial to national security/safety of public, if no prevent directions given in this period
At least 6 weeks after first filed at UKIPO
1st renewal date and renewal period, where patent grants no earlier than 3 months before 4th year anniversary of filing date
1st renewal date = last day of period of 3 months from grant date
renewal period = grant date to last day of month in which renewal date falls
1st renewal date if grant mentioned in EP Bulletin no earlier than 3 months before 4th year anniversary of filing date
Later of:
- last day of period of 3 months from mention of grant
- the next anniversary of filing date to fall after mention of grant
Comptroller notifies proprietor of unpaid renewal fee
Within 6 weeks of end of renewal period
Request restoration
Within 13 months after 6 month grace period
File address for service, if not included on filing
Within 2 months from invite
When are documents filed at UKIPO put on register
14 days after filed at UKIPO
When can licensee under LOR institute infringement proceedings in own name
If proprietor neglects/refuses to do so within 2 months of being requested
When can person apply to cancel LOR on grounds that proprietor is precluded by contract to grant LOR
Within 2 months of entry of request for LOR by proprietor
File opposition to cancellation of LOR entry
Within 2 months of application to cancel
Register assignment/exclusive licence so that can be awarded costs/expenses for an infringement carried out before registration
Within 6 months of transaction date
Deadline to put application in order if TPO made within last 3 months of compliance period and results in a first observations report
3 months
Compliance period for new application following dispute
Later of compliance period for earlier application and 18 months from initiation date
Compliance period for divisional application
Un-extended compliance period of root application
Compliance deadline if appeal pending and original compliance period expires
Comptroller decides extended compliance deadline
Compliance deadline if time to bring appeal still pending and compliance period expires
End of time to bring appeal
(Anyone) file observations on a request for an opinion (different to proprietor requesting review of opinion)
Within 4 weeks of advertisement of the request
Patent holder / requester of opinion files observations in reply to observations filed on a request for an opinion
Within a further 2 weeks (of the original 4 weeks to file the initial observations on a request for an opinion)
(Patent holder) request review of opinion
Within 3 months of issue of opinion
File notice of opposition against amendment proposed by proprietor under s75
Within 2 weeks of advertisement of proposed amendment in OJ
File notice of opposition in any scenario (inc. against amendment proposed by proprietor under s27 but NOT under s75)
Within 4 weeks of advertisement in OJ
File counter-statement to a filed opposition
Within 4 weeks of notification
Late declaration of priority for late filing for UK app
Late declaration of priority for late filing for PCT(UK) app
UK: Within 14 months from filing date of earliest relevant application
PCT(UK): 1 month after NP entry (or 1m from request to enter NP early)
Late declaration of priority for divisional/new application following dispute
On initiation date
File English translation of amendment made in international phase
On entry, or 3 months from notification by Comptroller (provided English translation of original application filed on entry)
If EP/PCT application first filed at UKIPO and has been made secret, it can be converted into a UK filing if not received by EPO/IB by end of what period
14 months from filing
File priority docs / declare statement of inventorship for new applications (div/following dispute)
Later of 2 months from initiation and 16 months from priority date (or on filing if new app filed in last 6 months of compliance period)
Respond to preliminary exam report
Typically 2 months from notification
In entitlement proceedings, where transfer of rights ordered, Comptroller may permit other (entitled) party to implement order if registered (non-entitled) proprietor doesn’t transfer by when
Within 14 days of order
File translation of spec if not filed in English or Welsh
2 months from invite
SPC fee
If this missed, SPC fee + additional fee
Within 3 months from start of SPC or, where SPC certificate granted after start date, then 3 months after date SPC granted
Within 6 months of end of above period
