PA 18 - Substantive examination and grant or refusal; PR 28-30 Flashcards
What should you do when the requirements of search (S17(1) )are completed
S18(1)
Once the requirements of S17(1) are satisfied the applicant should
a) request examination WITHIN SIX MONTHS OF PUBLICATION, if not already done,
b) pay the examination fee
What happens if examination is not requested or the fee paid
The application is deemed withdrawn
What effects the examination fee
It is cheaper when paid online
Excess description page fees are also due with the exam fee)
When us supplementary search required
If there is non unity or the claims are amended to require one following search
What are the applicants options re supplementary search
S18(1A)
a) pay the search fee, or
b) amend to render the search unnecessary (or successfully argue otherwise)
How much is done in examination
S18 (2)
Examination is to such an extent as the examiner considers necessary
What is the applicant entitled to after examination
S18(3)
The applicant is ENTITLED to ONE opportunity to comply with any defect highlighted by the exam report and/or argue against them, within a specified period.
What happens when the application complies
S18(4)
If the application complies within the R30 Compliance period, thje Comptroller will grant upon payment of the grant fee
What happens w.r.t multiple applications to the same invention
S18(5) If two or more applications for the same invention coexist with the same priority date and owner, the Comptroller may limit grant to just one of them
How should examination be requested
With FORM 10, and the payment of the examination fee R28
What is the time limit fo requesting examination
WITHIN SIX MONTHS OF PUBLICAITON OF THE SPECIFICATION (not of the search as in EPO)
What are the deadlines for examination for divisionals or S8, S12 or S37 new applications
The LATER of the relevant date for the PARENT APPLICATION OR TWO MONTHS FROM FILING, UNLESS within 6 months of the compliance period when the deadline is the FILING DATE
What is the deadline for examination to be requested for applications under a secrecy order
TWO YEARS from the priority date (as there is no publication date)
When are excess page fees sue
R(Fees)3C
IF the description (NOT including the claims, abstract or drawings) comprises more than 35 pages, a fee is paid for the 36th and each subsequent page TOGETH WITH the exam fee
What does R30 define
The Compliance period - the period for putting the application in order for grant
What is the length of the compliance period
R30
(2) a) FOUR YEARS SIX MONTHS FROM THE EFFECTIVE PRIORITY DATE, or
b) 12 MONTHS from the first report under S18(3)
Whichever is later
What is the compliance period for applications following a dispute
R30(3)
for new applications following DISPUTES the compliance period is
the compliance period for the originating application OR
18 MONTHS from filing of the new application
Whichever is later
What is the compliance period for a divisional
IT inherits the SAME compliance period as the parent application
What happens if third part observations are used witin the last three months of the R30 compliance period
The applicant has three months to repsond
When is a fee due for grant
R30A
(1) IF, when notified for the intent to grant
a)the number of claims is greater than 25, and greater than the number of claims when search was requested
b) the number of pages of the description is greater than 35 and greater than when examination was requested
(2) the corresponding further additional claims fees and/or page fees incurred must be paid WITHIN TWO MONTHS from the notification of intent to grant
Can the date for a request for examination be extended as of right
YES with FORM 52 and the FEE (R108)
Are any additional extensions avaliable
YES - at the Comptroller’s discretion under R108(3), providing good reason if given why failure to request was out of the applicant and agent’s control e.g. a disaster, or a genuine and uncharacteristic error
IF allowed, use FORM 52 and FEE
Is reinstatement available for missed request for exam
YES - IF loss was UNINTENTIONAL (FORM AND FEE)
Can the compliance period be extended
YES using R108(2) and R108(3) (Form + Fee)
What must be done by the end of the compliance period
The application must be IN ORDER FOR GRANT i.e. it is not the time to actual grant, but it is the deadline by which any successful arguments/amendments must be made
When may examination fees be refunded
They MAY be refunded if an application is withdrawn before examination commences
What happens if CSER has no objections
the examiner will wait until at least THREE MONTHS after publication before grant, to allow for third party observations
When are voluntary amendments and divisional filings not allowed
Between the administrative grant date and actual notification of grant in the journal
What is the window between notifcation to grant and grant
the S18(4) communication is now a NOTIFCATION OF INTENT TO GRANT, which indicates a later grant date. There is a window of AT LEAST ONE MONTH before actual grant to file divisional/make voluntary amendments
OR
TWO MONTHS where the first examination communication is a notification of grant
When do conflicting applications occur
If an application is withdrawn before publication but IS NOT WITHDRAWN LEAVING NO RIGHTS OUTSTANDING - refiling will not be a new application
IF an EP(GB) grants before a GB case the GB case is likely to be revoked
What should be done in case of sister EP applications with GB designations going to grant which conflict with a GB application/patent
i) amend cases to distinguish them (so different inventions)
ii) withdraw GB designation BEFORE GRANT of EP application
iii) keep EP(GB) and let it supplant GB patent (noting any licenses etc of GB patent will need new agreements )
When will a GB be revoked if there is a supplanting EP(GB) application
the Comptroller will wait until the end of the EP opposition period/procedure, if the EP(GB) survives the GB will be revoked.
When can Hong Kong patents be registered
Based on a GB, EP(GB) or CN patent, within six months of grant, providing the application was recorded in Hong Kong within six months of publication. Only formalities are examined before allowance.
To what other jurisdictions will an UK examiner look before granting a GB patent
they will check for equivalent cases in WO, EP, US, JP and KR proesecution
What happens to time limits for responding to examination reports if the first examintion report is more than 3.5 years after the priority date
The deadlines are reduced to two months, and only extendable to four months
What are you entitled to before before a loss after exmaintion report
you are entitled to a hearing, then an appeal to a patents court, then an appeal (on facts and law) to the court of appeal
How long are normal response deadlines for examination reports
It depends
Typically, they are four months, but if examination is requested early, deadlines can be up to a year or more
How can you request accelerated prosecution
If you can demonstrate hardship (e.g. infringement or to secure investment)
Using the “green channel” for inventions with environmental benefit
Can request accelerated publication to further shorten period
