PA 14 - Making an application; PR 12, 14, 16, 103, 104, 113, 114, 115 Flashcards
How should UK applications be made S14
S14(1)
Every patent application
a) shall be made in the prescribed form and filed at the UKIPO in the prescribed manner
What is the prescribed form/manner for a UK application to be made
Using PF1 for request of grant (R12)
When do application fees need to be paid S14
S14(1A)
When an application for a patent is made, pay the application fee WITHIN THE LATER OF 12 MONTHS FROM PRIORITY OR TWO MONTHS FROM FILING
What happens if the application fee is not paid
S15(10)c)
The application will be deemed WITHDRAWN
What must all UK applications comprise
S14(2)
The application must comprise:
a) a request for grant of a patent;
b) a specification containing a description of the invention, one or more claims and any drawing referenced therein
c) an abstract
BUT at filing not all these have to be done
What must the specification be S14(3)
S14(3)
The specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art
i.e. clear enough to be enabling
What should the claims do S14(5)
S14(5)
The claim(s) shall
(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.
Is there any restrictions on “supported by the description” S14(5)c)
Yes
CANNOT rely on support in priority documents see S5
What does the abstract provide
S14(7)
The abstract gives technical infromation and does NOT from part of the state of the art for S2(3)
Can you withdraw an application
S14(9)
The application may be withdrawn by the applicant at any time before grant, and this cannot be reversed
Are there any exceptions to S14(9)
YES
S14(9) it DOES NOT affect the power of the Comptroller under S117(1) to correct and ERROR OR MISTAKE in the withdrawal of an application by the applicant (and thus potentially reversing a withdrawal)
What happens if the applicant’s name and address are not provided on making an application
R12
2) If they are not provided, the Comptroller will request these
What is the time limit for providing applicants details
R12
3) the applicant has TWO MONTHS from the request of the Comptroller
What happens if you don’t provide the applicants details by the deadline
R12
3) the Comptroller may refuse the application (the application is treated as withdrawn R104)
What should the title be
R12
6) The application must provide a title which is short and indicative
What can the claims not refer to
R12
6) The claims MUST NOT rely on references to technical features of the invention disclosed in the description or figures UNLESS these can NOT be clearly and concisely defined in writing or using a mathematical or chemical formula.
Can applications be filed in any language
YES
When does a translation of the application need to be provided
R12 8)
If the application is in a foreign language (not English or Welsh), and no translation is provided, the the Comptroller will request a translation (R113)
What must the description do re drawings or photographs
R12
7)
The description must list any included drawings or photographs
What is the time limit for providing a translation
R12
9)
Two months after the notification of the requirement of a translation
What is the consequence of not filing a translation
R12 9)
The comptroller may refuse the application
What must an application contain if it discloses a sequence (Bio)
R13 2)
It must include a sequence listing
What is the time limit for providing a sequence listing
R13 3)
The comptroller will request it and set the period for a response
What happens if you do not provide a sequence listing
R13 3)
The Comptroller may refuse the application
What must a late filed sequence listing include
R13 4)
A late filed sequence listing must be accompanied by a declaration that it does not contain matter extending beyond the sequence disclosed in the application
What should the abstract include
R15
Start with the title of the specification
Contain a concise summary of the matter contained in the specification
including
an indication of the technical field to which the invention belongs
a technical explanation of the invention
the principal use of the invention
identifies the main figure if there are more than one in the application
Reference numbers should be included as applicable
What should the abstract not include
R15
It MUST not include any statement on the merits or value of the invention or its speculative application
What in the abstract can the Comptroller change
Which figure is included with the abstract
What makes two inventions unified
R16
Two or more inventions are linked so as to form a single inventive concept where there exists between them a technical relationship which involves one or more of the same or corresponding SPECIAL TECHNICAL FEATURES
What does Special technical Features mean
R16
Those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. ( e.g. new plug and socket)
What occurs if the application fee is not paid on filing
The cost increases
What should the format of drawings be
black and white, but greyscale phots have been permitted as is shading in drawings where it assists in representing a shape and does not obscure other elements of the drawings
What does a PF1 require
Title of application
Name and address of each applicant
country of incorporation if a company
name of agent,
address for service
Priority details, if any
statement of inventorship (use PF7 within 16 months if applicant is not the inventor)
signature of applicant or appointed agent
What makes a claim clear
Must be clear to a person skilled in the art
But no need to list non-essential or “expected” features
EPO also requires claims to be clear on their own merit
What should a product by process claim define
a product according to the process by which it is or can be obtained
What must a function claim include
it must list elements to be arranged and the disclosure must describe how to arrange them
i.e. there must be no inventive step required to achieve the result by working out how to arrange the elements
When are onmibus claims allowed
OMNIBUS CLAIMS ARE NO LONGER ALLOWED
unless the technical features of the invention cannot otherwise be clearly and concisely be defined using words, a mathematical or chemical formula or any other written means (i.e. very unlikely)
Do the claims have to include anything else
No - reference numbers and two-part from (EPO) are allowed but not required
What is an enabling disclosure
An enabling description provides enough infromation for the skilled person to work the invention across the whole scope of the claim.
What can happen if a disclosure is not enabling
It can be a ground for revocation
What does sufficiency mean
Sufficiency is a test of whether the full scope of the invention as defined by the claims is clearly, completely disclosed by the description (different to enabling).
So for something to be insufficient the claim scope encompasses something that the description does not disclose enough for the skilled person to replicate
What can happen if a claims are insufficient
Insufficiency is a ground for revocation (lack of support is not)
What does support mean?
Support is a pre-grant question of whether there is enough technical infromation in the application to support (provide basis) for the text of the claims
What can the abstract not be used for
The abstract is not part of the specification itself, so cannot be used as basis for amending the claims (also true at the EPO)
What should an enabling description be for a selection invention
The desired effect must be obtainable for ALL examples selected.
It is also bad if the effect can be obtained from those things not selected.
What is different about enablement in the US
the US requires a “best mode” i.e. a preferred embodiment, as the invention is “reduced to practice”. It is no longer necessary to isolate this within the description, and EP/UK requirements for enablement are adequate for US purposes
What happens if ANY document is provided not in English or Welsh
The Comptroller may request a translation be filed within TWO MONTHS
R113/114
What happens if the Comptroller has reasonable doubts as the the accuracy of a transaltion
R115
He shall notify that persons of the reasons for his doubts and
may require that person to file evidence to establish that the translation is accurate
And if they fail to do so, the comptroller may take no further action to that document.
