Patent Law (UK) - Prosecution

Question 1

What is the key requirement for establishing a patent’s filing date?

Answer 1

The documents must contain a description of the invention or refer to an earlier application.

Explanation: The filing date is determined by key criteria outlined in s. 15, including a description or reference to a prior application.

Question 2

What happens if “missing parts” are added to a patent application after its initial filing?

Answer 2

The filing date may change unless included in the priority application.

Explanation: Adding missing parts may shift the filing date unless they are covered by the priority application.

Question 3

What documents are published as part of a patent application under s. 16?

Answer 3

The search report and application content.

Explanation: Published content includes the application and the results of the initial search.

Question 4

When can a third party make observations on a patent application?

Answer 4

After publication and before grant.

Explanation: s. 21 allows third parties to provide input on patentability between publication and grant.

Question 5

What is the duration of a patent under the Patents Act 1977, assuming all renewal requirements are met?

Answer 5

20 years from the filing date.

Explanation: Patents are valid for 20 years from the filing date, provided yearly renewals occur from the 4th year onward.

Question 6

Under what section can a person request an official opinion on whether a patent’s specification is sufficient?

Answer 6

Section 74A

Explanation: Opinions under s. 74A address the clarity and sufficiency of patent specifications.

Question 7

The Paris Convention protects priority rights when applicants withdraw their initial application prior to publication.

True or False

Answer 7

True

Explanation: Article 4C(4) allows priority to be claimed on a subsequent application if the first has been withdrawn before publication.

Question 8

Applications with possible national security implications must not be filed abroad without prior clearance.

True or False

Answer 8

True

Explanation: s. 23 restricts unauthorised overseas filings of inventions with sensitive information.

Question 9

A fundamental role of substantive examination is to assess whether the application complies with patentability requirements.

True or False

Answer 9

True

Explanation: Examinations under s. 18 confirm compliance with the Patents Act and related rules.

Question 10

An application cannot be reinstated once it is deemed to have been refused due to a procedural failure.

True or False

Answer 10

False

Explanation: s. 20A allows reinstatement if the failure to comply was unintentional and relevant conditions are met.

Question 11

Revocation powers under s. 73 allow the comptroller to revoke a patent, provided proper opportunities for amendment are given to the proprietor.

True or False

Answer 11

True

Explanation: s. 73 ensures patentees can amend or respond before revocation.

Question 12

Amendments are only permitted to patents after grant.

True or False

Answer 12

False

Explanation: Amendments may occur both pre- and post-grant under sections such as 15A, 18, 19, and 72.

Question 13

What conditions must be satisfied for a patent application to receive a filing date according to s. 15?

Answer 13

A statement indicating intent to seek a patent.

Identification or contact details of the applicant.

A description of the invention or reference to an earlier application.

Question 14

Explain the purpose of the formalities examination (s. 15A). What steps does the examiner take?

Answer 14

The examiner ensures all formal requirements are met.

Checks proper formatting, inventorship statements, and verifiable claims to priority.

Question 15

What is the difference between the S. 18(3) and S. 18(4) substantive examination reports?

Answer 15

S. 18(3): Indicates non-compliance with the Act and rules.

S. 18(4): Confirms compliance and readiness for grant.

Question 16

How does the grace period under article 5bis of the Paris Convention benefit applicants who fail to renew their patents?

Answer 16

Allows late renewals within a 6-month period, subject to a surcharge, and permits restoration of lapsed patents within 13 months.

Question 17

What are the key effects of reinstatement on prior third-party actions taken in good faith during the period the application was deemed terminated?

Answer 17

Third parties can continue using the invention or preparations made in good faith.

Rights do not extend to granting licenses to others.

Question 18

Describe the role of a hearing officer during patent examination hearings and appeals.

Answer 18

Hearing officers act like judges, presiding over proceedings with evidence, skeleton arguments, and costs regimes.

Their role includes reviewing facts and legal principles to resolve disputes or appeals.