PA 15 - Date of filing; PR 17-22 Flashcards
How is a Filing date achieved?
S15(1)
The Date of filing an application is the earliest date on which the following documents are filed:
a) an indication that a patent is sought
b) identify the applicant or enable contact with them
c) EITHER
i) something that appears to be a description OR
ii) a reference to an earlier relevant application of the applicant or their predecessor
What should a reference to another earlier application include for filing a GB application under R17
R17
It MUST include
a) the date of filing of the earlier application
b) its application numbers
c) the country it was filed in or in respect of
What doesnt matter for the description to be enough for getting a filing date
S15(2)
For an apparent description, it is IMMATERIAL whether
a) it is provided in English or Welsh
b) it otherwise complies with the acts or rules
What happens if one of the requirements under S15(1) is not fulfilled i.e. a date of filing cannot be afforded
S15(3)
If the application DOES NOT satisfy all the requirement, but satisfies at least one, the Comptroller will quickly notify the applicant as to what needs rectifying
How long does the applicant have to rectify any lack of infromation for a filing date
TWO MONTHS for identify of the applicant or translation
FOUR MONTHS for certified copy of earlier application and translation if needed
What happens if all the requirements of S15(1) are met?
S15(4)
If the application DOES satisfy the requirements of S15(1) the Comptroller will quickly notify the applicant of:
a) the date of filing and
b) any other requirements outstanding and their time limits.
When does S15(6) apply re missing parts
S15(5)
a)When the application has already got a filing date
b) but IN TIME (between filing an preliminary exam, or within two months from notification from the prelim examiner) the applicant then files:
a drawing or some text of the description (i.e. a missing part)
AND that added material was missing from the application at the date of filing
What happens if missing parts are filed later?
S15(6)
UNLESS the applicant withdraws the missing part before the prescribed period
a) the missing part shall be treated as part of the application
b) the date of filing shall be the date on which the missing part is filed i.e. RE-DATED
What is the prescribed period under S15(6) I.e. period to not have application re dated after filing missing parts
before the preliminary examination or during the two months from notification
When does the filing of missing parts not mean the date of filing is re-dated?
S15(7)
BUT S15(6) DOES NOT APPLY IF:
a) ON OR BEFORE the INITIAL filing date, a PRIORITY DOCUMENT is declared that identifiably contains the missing parts (R18), and
b) subsequently a REQUEST is made NOT THE RE-DATE,
c) in the right format and WITHIN THE PRESCRIBED TIME PERIOD (under 15(5)(b))
Does the rules about missing parts always apply
S15(8)
15(6)&(7) don’t affect the power of the Comptroller to correct errors and mistakes under S117
What is the filing date of a divisional or other new application post a dispute?
S15(9)
After filing, but BEFORE GRANT
a) a new application is filed by the applicant or their successor in accordance with the rules in respect of any part of the matter of the earlier application, and
b) the new application satisfies S15(1) without adding matter (S76)
the the new application is treated as having the same filing date as the earlier application.
When will an application be deemed withdrawn?
S15(10)
An application will be treated as WITHDRAWN IF
a) no CLAIMS/ABSTRACT
b) no DESCRIPTION of the invention or CERTIFIED COPY of the application referend to if filed with reference to an earlier application
c) the applicant fails to pay the application fee in time
d) the applicant fails to request and pay for a SEARCH under S17 in time
What is the deadline for filing claims and/or an abstract?
WITHIN 12 MONTHS, or if claiming priority then the later of 12 MONTSH FROM PRUORITY OR TWO MONTHS FROM FILING (R17)
What is the deadline for filing a description if an application is filed byreference to an earlier application
WITHIN 12 MONTHS, or if claiming priority then the later of 12 MONTSH FROM PRUORITY OR TWO MONTHS FROM FILING (R17)
When should a certified copy of an earlier application be filed if an application is filed by reference to an earlier application (and translation if needed)
WITHIN FOUR MONTHS OF FILING
What is the deadline for paying the application fee
WITHIN 12 MONTHS, or if claiming priority then the later of 12 MONTSH FROM PRUORITY OR TWO MONTHS FROM FILING (R17)
What is the deadline for requesting and paying for a SEARCH
WITHIN 12 MONTHS, or if claiming priority then the later of 12 MONTSH FROM PRUORITY OR TWO MONTHS FROM FILING (R17)
When can figures and text be added or withdrawn
R18
(1) between the date of filing of the application and the date of preliminary examination OR
(2) within TWO months of notification by the preliminary examination
How can you withdraw missing part
R18(3) An applicant may only withdraw a missing part by giving written notice to the comptroller
How should requests to keep filing dates when adding missing material that can be found in the priority document be made
R18(4)
A request must
a) be made in writing
b) include sufficient information to identify the source material in the priority document, and
c) be made before the end of the prescribed time limit (WITHIN 12 MONTHS, or if claiming priority then the later of 12 MONTSH FROM PRUORITY OR TWO MONTHS FROM FILING (R17))
When are requests to keep filing dates considered as never to have been made
R18(5)
A request fails if
a) the priority document is missing ANY of the added material
b) the CERTIFIED priority document concerned is not filed (or not verified to the satisfaction of the Comptroller),
R18(7) within the EARLIER of the normal 16-MONTH PERIOD, or FOUR MONTHS from the date of request to keep the filing date
When is a certified copy of an earlier application not required when adding missing parts
R18(6)
A certified copy is not needed if the UKIPO already has a copy
When can divisionals be filed?
R19
(2) A divisional can ONLY be filed IF
a) the parent has NOT BEEN TERMINATED OR WITHDRAWN (and has NOT YET BEEN GRANTED), and
b) it is NOT YET THE LAST THREE MONTHS of the R30 compliance period
What must be included with the filing of a divisional application
R19(3)
The divisional application must include a statement that it is filed as mentioned in S15(9) i.e. one that identifies it as a divisional application)
When can new applications be filed followeing disputes under S8(3), S12(6) and S37(4)
R20
It can be filed within THREE MONTHS of the Comptroller’s order or within THREE MONTHS of the end of any appeal of that order
BUT
the comptroller can give notice to shorten this period
What are the deadlines for the declaration of inventor (S13) and filing of priority docs (R8) for a divisional application or post dispute application?
R21
New applications have the later of TWO MONTHS from filing to comply with S13(2) and R8 OR the relevant dates therein
UNLESS they are filed in the last six months of the compliance period under R30
What are the deadlines for filing S15(10) acts for divisional applications or post dispute applications
(claims/abstract, earlier application details, application fee, search fee and request)
R22
The later of the normal deadlines and TWO MONTHS from their filing
UNLESS in turn they are filed within the LAST SIX MONTHS of the R30 compliance period, in which case they must comply ON FILING
Are extensions available for any of the S15(10) acts
YES
Two month extension under R108(2) i.e. FILE FORM 52 before the end of the two month period with the FEE
(for claims, abstract, description, filing fee, and search request/fee) unclear for certified copy…
How are Welsh texts dealt with
Welsh texts are translated by the comptroller R113(7)
What are the deadlines for search request/fee and application fee for a PCT(GB) entering a national phase
the search fee is payable by the later of the dates above, or two months from the start of the nation phase, but national fee (which replaced the application fee) must be paid on entry
When must formal drawings be filed
typically by around 15 months, or within one month of notification
What is best practice when filing a late divisional
mark correspondence with Divisional - URGENT
