PA 118 – Information about patent applications and patents, and inspection of documents; PR 54

Question 1

what does S118 concern

Answer 1

information about patents and applications, and inspection of documents

Question 2

Who can request information/inspect documents relating to a patent application, and when

Answer 2

S118
AFTER publication of a patent application, ANYONE can, subject to any prescribed restrictions

Question 3

In what circumstances are documents available to be inspected before publication

Answer 3

S118
(2) Information / documents are NOT available BEFORE publication of the patent application WITHOUT CONSENT of the applicant, EXCEPT for:
(3)
a) providing relevant information to the EPO
aa) sharing information needed for inter-office work sharing schemes to commence prior to publication
b) providing bibliographic information about the application,
‘c’) allowing the Secretary of State to review an application under a secrecy order
BUT
(3A) inter-office stuff only relates to agreed patent office workshare schemes
(3B) the provided information must be kept confidential

Question 4

When can a potential infringer inspect documents / request information of an unpublished application

Answer 4

S118(4)
If a person is notified that an applicant will in due course bring proceedings for infringement of an as yet unpublished patent application, then they can request information / inspect documents as per S118(1)

Question 5

When can a person inspect an unpublished withdrawn application

Answer 5

S118(5)
Where a first, unpublished application is wholly or partially replaced by a second application, then once the second application is published any person can also request to inspect the first application

Question 6

When is inspection of the register free

Answer 6

when done via the online register

Question 7

Are there any restrictions on inspection of documents

Answer 7

R51-55
no inspection of a document until 14 days after it is filed with the UKIPO
no inspection of purely internal UKIPO documents
no inspection of requests to inspect

Question 8

What can the Comptroller determine if they are confidential or not

Answer 8

-applications for employee compensation
-a document that, within 14 days of submitting, the submitter requests to be treated as confidential
- disparaging, offensive, or immoral material, and
- anything the Comptroller considers should be confidential (e.g. where an applicant submits medical reasons for unintentionally missing a deadline)

Question 9

What must a potential infringer’s request to inspect an unpublished application contain

Answer 9

evidence of the circumstances, which is sent to the applicant for confirmation before the information is provided.

Question 10

What does R54 allow for

Answer 10

a person to request notification of an event , a “caveat” by filing FORM 49

Question 11

When can a “caveat” be used to inspect a file

Answer 11

to be informed of any of the following:
- a request for examination has been filed,
- the prescribed period has expired without the request being filed,
- a patent application has been published,
- notice of grant of a patent has been published
- an application has been withdrawn, or terminated,
- a renewal fee has been paid within the grace period,
- a patent has ceased to have effect
- an application for restoration of a patent has been filed,
- an opinion has been requested under Rule 93
- an entry has been made in the register
- an application has been made to register a transaction, instrument, or event
- publication in the journal of subject matter specified on the form,
- when any document may be inspected in accordance with R51 or 52