Patent Procedure

Question 1

What is required to obtain a date of filing under the EPC/UKPA 1977?

Answer 1

Section 15(1) states that a date of filing is the earliest date on which the UKIPO receives:

• An indication a patent is sought
• Information about the applicant sufficient to enable them to be contacted
• Something which is or appears to be a description of the invention (or an adequate reference to an earlier relevant application)

Question 2

What occurs during the formal examination?

Answer 2

Formalities

• The application is assessed to see whether it complies with certain formal requirements.
• These include that the application contains a request for grant, a description of the invention, one or more claims, any drawings referred to in the specification and an abstract.

Question 3

What happens during the substantive examination?

Answer 3

• Ascertain whether the claimed invention consists of excluded subject matter, is novel, has an inventive step and is industrially applicable.
• Also checks whether the invention is sufficiently disclosed and that claims are concise and supported by the description

Question 4

What is the term of a patent under the patents act 1977? And from what day is that term calculated?

Answer 4

Provided renewal fees are paid from the 4^th anniversary onwards, the term of a patent in the UK is 20 years from the date of filing of the application (Section 25(1)).

Question 5

When is an application published under the EPC?

Answer 5

The publication of an application under EPC takes place 18 months after the priority date unless an earlier publication is requested.

Question 6

When will the rights conferred by publication come into being in the UK?

Answer 6

• If the publication of the EP application is in English, the rights conferred by publication exist in the UK on publication.
• If not in English, must file a translation of the claims at the IPO (or provided to an “infringer”) for these rights to comes come into being.

Question 7

At what stage in the prosecution of an application does a patent applicant get rights in relation to the invention?

Answer 7

A patent applicant gets infringement of rights conferred by publication of the application, this is usually 18 months after the priority date, or earlier if requested.

PA77 s.69

Question 8

And what difference does it make if the application is accidentally published after being withdrawn by the applicant?

Answer 8

• Applications can be withdrawn and then a later application may be filed for the same subject matter in order to regenerate the priority date (as long as application not published).
• If the subject matter of the earlier withdrawn application is published, the later filing cannot give rise to a priority right (i.e. cannot claim priority to withdrawn application), but the withdrawn application would still be comprised in the state of the art for novelty purposes of the later application.
• The priority date of the subject matter of the withdrawn application is the date of accidental publication and not the date of filing.
• However, if the application is withdrawn prior to publication, but too late to prevent publication, then it is not regarded as forming part of the state of the art under S2(3) (Following the court’s decision in Woolard’s Application [2002])

Question 9

What is required to establish a date of filing under the Patent Co-operation Treaty?

Answer 9

• The applicant does not obviously lack, for reasons of residence or nationality, the right to file an international application with the receiving office
• ​The international application is in the prescribed language;
• The international application contains at least the following elements:
  
  1. An indication that it is intended as international application;
  2. The designation of at least one contracting state;
  3. The name of the applicant, as prescribed;
  4. A part which on the face of it appears to be a description,
  5. A part which on the face of it appears to be a claim or claims

Question 10

What is a divisional application?

Answer 10

• A type of patent application which contains subject matter from a previously filed (parent) application and is filed in order to claim protection for subject matter disclosed but not claimed in the parent application (i.e. where the parent application contains a plurality of inventions).
• Whilst it is filed later than the parent, a divisional application will have the same filing and priority date of the parent application provided the subject matter of the divisional application does not extend beyond that contained in the parent (Section 15(9)).
• After filing, a divisional application is treated independently than the parent application.

Question 11

When can a divisional application be filed?

Answer 11

• An applicant must file a divisional application whilst the parent application is still pending (i.e. before the grant/termination/withdrawal of the parent), or by 3 months prior to the compliance date in the (UK only), whichever is earlier (Rule 19).

Question 12

What is meant by “compliance date”

Answer 12

• UK patent applications must be ready for allowance by the end of this period or else they will be treated as refused.
• The compliance period is calculated as the latter of
  • 4.5 years from the earliest filing date, or
  • 1 year from the date on which the first Examination Report is issued.

Question 13

What are the requirements for a claim under section 14 of the patents act 1977?

Answer 13

The claim or claims shall—

• define the matter for which the applicant seeks protection;
• be clear and concise;
• be supported by the description; and
• relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

(Clarity, Unity, Scope, Support)