National Security Flashcards
What does Section 22(1) say?
A GB, EPC or PCT application filed first at the UKIPO is reviewed to see if it is prejudicial to national security. If so the Comptroller may prohibit or restrict publication
How long can the Comptroller prevent or restrict publication of a patent application for (of his own accord) under Section 22?
Up to 3 months after the application was due for publication (i.e. up to 21 months)
While a prevention order under Section 22 is in force what can and can’t happen to the application?
CAN still prosecute up to readiness to grant, but is suspended at that point (and still not published)
CAN’T be sent to the EPO (EPC application) or to the IB/ISA (PCT application)
What happens after the Secretary of State is notified of a restricted patent application?
a) SoS determines if publication would prejudice security/safety
b) if so, instructs Comptroller to extend the period of s22(2) until instructed otherwise
c) reviews the decision within 9 months of filing and then every 12 months
d) if no longer prejudicial SoS informs the Comptroller to lift the restrictions, notify the applicant and provide any necessary extensions of time to complete prosecution
When can the SoS review the decision to restrict publication?
- For atomic energy the SoS may at any time inspect the application and/or authorise a competent body to do so.
- For all else, they may inspect the application after what would have been the s16 (publication) date (i.e. at 18 months, SoS will have full access) - can inspect before with applicant’s consent
What provisions are there for if the government uses an invention in a secret patent application?
If the Government uses the invention, the crown use provisions apply as if published and granted
If hardship due to the restriction is shown, the Government may make a hardship payment
What happens to renewal fees while a publication prevention is in force under s22?
Don’t need to pay renewal fees while publication prevention is in force
What are the punishments for breaching a prevention order?
- An unlimited fine and/or
- Up to two years in prison
If eventually published how are patent applications made secret under s22 treated as prior art?
Treated as s2(3) (novelty only) applications
What happens to an EPC application filed at the UKIPO that has been made secret and which hasn’t been received by the EPO within 14 months?
Under A135 EPC, an application not received by the EPO within 14 months can be converted to a GB filing.
(Similarly s89(3)(b) allows for a PCT application to be converted to a GB application under the review and excuse procedure if not received by the international bureau by 14 months)
Scenario:
A client’s patent application has been witheld from publication but wants to disclose to investors. What can your client do?
Seek discretionary leave to disclose the patent application and invention to specific persons
If a patent application is prevented from publication under s22, can the applicant still use the invention?
Possibly not - the invention is also likely to be covered by the official secrets act or the export of goods act
What happens if you cross-reference to a secret patent application in a new filing?
The new application will become secret too
What subject-matter is restricted for overseas filing?
Restrictions apply if:
- It relates to military technology or
- May prejudice national security
- May prejudice public safety
When will a patent application that falls under Section 23(1A) not be restricted for overseas filing?
No person resident in the UK shall, without written consent from the Comptroller file (or cause to be filed) an application falling under Section 23(1A), unless:
- Application was filed in the UK six or more weeks ago; and
- there is no prevention order under s22
