PA 17 - Search; PR 27

Question 1

what conditions must be met for a search to take place?

Answer 1

S17(1)
A search will only be done IF
a) A preliminary exam under S15A has been done
b) the application has not been refused, withdrawn or deemed so,
c) and before the later of 12 MONTHS FROM PRIORITY OF TWO MONTHS FROM FILING:
i) the applicant requests a search on from PF9A (R27)
ii) the search fee is paid (plus any excess claim fees), and
d) the application includes:
i) a description, and
ii) one or more claims; AND
e) the description and claims comply with the rules on language

Question 2

How do you reduce the cost of a search fee

Answer 2

Search fee is cheaper when paid online (and when you don’t have excess claim fees)

Question 3

S17(4) when will the examiner make a reasonable attempt to identify relevant prior art

Answer 3

S17
5) IF the examiner thinks it is worthwhile
a) for some or all of the application,

Question 4

What happens if the examiner does not think a search is worthwhile

Answer 4

S17(5)
(b) but if not, the examiner informs the Comptroller, and the applicant is informed accordingly

Question 5

What happens if the Examiner determines non-unity

Answer 5

S17(6)
If, before or during search, the Examiner determines non-unity they will search the first invention only, and the applicant is notified R37.

Question 6

When should additional search fees be paid

Answer 6

S17(6)
The applicant must pay respective search fee for the or each further invention to be searched (when claims are found to be non-unified)
and
(8)
Supplementary searches due to amendment under S18, 19 of 117 (i.e. due to actions of the applicant) require a further fee unless waived by the Comptroller

Question 7

When are updated searches performed

Answer 7

S17(7)
The comptroller can request an updated search from the Examiner at any time if thought applicable

Question 8

When are excess claims fees due

Answer 8

R(Fees)3b
Excess claim fees are due for each of the 26th and subsequent claims TOGETHER WITH the (first) search fee

Question 9

How and when should you request a second invention be searched

Answer 9

R27
To search a second invention, you must file a search request and pay an additional (e.g. second) search fee not later than THREE MONTHS before the end of the R30 Compliance period

Question 10

When are search and examination COMBINED

Answer 10

IF PF9A and PF10 are submitted together

unless you specify that you DON’T want this to happen

Question 11

When are searches not performed

Answer 11

If its a PCT(GB) application which has already had a search

Question 12

What is the deadline for paying the search fee of a national phase entry for a PCT(GB) application

Answer 12

The later of 12 MONTHS FROM PRIORITY, TWO MONTHS FROM FILING, or Two months from national phase entry (i.e. 33 months)

Question 13

When is the search fee refunded?

Answer 13

If the application is withdrawn after the search fee is paid but before it starts, the search fee MAY be refunded (R106)
If a search fee was paid for claims in a parent that were then divided out, then for the divisional the search fee MAY be refunded

Question 14

When does voluntary amendment become possible

Answer 14

After the search report is issued

Question 15

What is the time limit for filing a search request for a divisional

Answer 15

At least TWO MONTHS, except in the last six months of the R30 Compliance period, when it must be requested ON FILING

Question 16

When can accelerated / early search be requested?

Answer 16

WITH A REASON (e.g. wishing to see results before foreign filing) - This is distinct from acceleration due to likely infringement, accelerated prosecution, or PACE etc

Question 17

Are unsearched claims allowed to be used as part of amendments

Answer 17

Yes, unsearched claims can be reconsidered during examination (more lenient than EPC)