Process Flashcards
What conditions need to be met to be accorded a date of filing - What section is this?
S15 (1) Documents filed that indicate a patent is sought - ideally PF1 but not essential
They identify the applicant or make it possible to contact them
The documents contain either a description or a reference to an earlier application of the applicant or predecessor including
-date of filing
-application no
-and country of filing R17
What language must the description be filed
any language
What will occur if the application does not fulfil the requirements of S15(1) - what is the deadline for response
The comptroller will contact the applicant if possible in a short time and alert the applicant of the short coming
Deadlines
2 months for identity of applicant
2 months verified translation of the text if not in English or welsh
4 months for a certified copy of an earlier application - including a translation if necessary
What does S15(1) detail and what happens if the conditions are fulfilled
The Section gives the requirements for according a filing date indication of application for a patent, identification of applicant, a description or ref to earlier application of applicant or predecessor
If fulfilled Comptroller will notify of date of filing and any other outstanding requirements and their deadlines to prevent withdrawal eg: lack of claims, abstract, drawings
What happens if the applicant files an additional drawing or text missing or not contained in the application when filed
The application is re-dated to when the missing part is filed.
UNLESS on or before the date of filing a priority document was declared under S5(2) that identifiable contains the missing part in its entirety
AND
subsequently a request is filed not to re-date the application and identifying the missing part
OR
the missing pat is with drawn before the end of the prescribed period - written notice is required
When can an applicant file missing parts
Between filing and preliminary Examination
OR
Within two months of notification by the Examiner of missing parts
What are the requirements if an application is made by reference to an earlier application
The previous application must be of the same applicant or his predecessor
The request must include:
The date of filing
application no
the country of filing
Must be certified by the authority with which it is filed or otherwise verified
A declaration that the description filed is a complete and accurate translation of the referenced application.
**Where a copy of the application is available to the Comptroller i.e. by DAS or if it is a UK application it will be treated as certified
When must the applicant furnish the comptroller with a certified copy of the priority document containing the missing parts?
Similar for S5 priority
A certified copy of the priority doc must be provided at the earliest of 16 months from priority or 4 months from the request from the examiner
What section describes the filing of a divisional application
S15(9)
What are the requirements for filing of a divisional application
S15(9)between filing and grant of the earlier application that has not been terminated or withdrawn R19
by the original applicant or his successor
Containing part or all of the matter of the earlier application
AND
fulfils the requirements of S15(1) identification of applicant, a description or ref to earlier application of applicant or predecessor
AND
R19 a statement that the application is filed in line with S15(9)
A NEW APPLICATION MUST BE FILED BEFORE 3 MONTHS BEFORE THE COMPLIANCE DATE
What are the requirements of filing a new application following a dispute?
between filing and grant of the earlier application
by the original applicant or his successor
Containing part or all of the matter of the earlier application
AND
fulfils the requirements of S15(1) identification of applicant, a description or ref to earlier application of applicant or predecessor
AND
a statement that the application is filed in line with S15(9)
AND IF WITHIN 6 MONTHS OF R30 COMPLIANCE PERIOD
abstract, claims, description (if filed by reference) and certified copy of the original application +translation must be supplied on filing
A NEW APPLICATION MUST BE FILED BEFORE 3 MONTHS BEFORE THE COMPLIANCE DATE
What is the deadline for filing an abstract and what is the penalty for not filing in time
R22
12 month from filling
OR
if claiming priority the later of 12 months from priority or 2 months from filing
UNLESS
The application is a new application (divisional or from a dispute S8 S12 S37) AND within 6 months of the compliance period in which case it must be on filling
what is the deadline for filling a set of claims and what is the penalty for not filing in time
R22
12 month from filling
OR
if claiming priority the later of 12 months from priority or 2 months from filing
UNLESS
The application is a new application (divisional or from a dispute S8 S12 S37) AND within 6 months of the compliance period in which case it must be on filling
When is the deadline for filing a description where an application has been filed by reference to an earlier application what is the penalty for not filing in time
R22
12 month from filling
OR
if claiming priority the later of 12 months from priority or 2 months from filing
AND
The applicant must file a certified copy (and translation if required R113(2) before 4 months from filing
UNLESS
The application is a new application (divisional or from a dispute S8 S12 S37) AND within 6 months of the compliance period in which case it must be on filling
If filed by reference to an earlier application what is the deadline for filing a copy of the application that complies with the relevant requirements of the rules?
4 months from filing
UNLESS
The application is a new application (divisional or from a dispute S8 S12 S37) AND within 6 months of the compliance period in which case it must be on filling
What is the deadline for paying the application fee
12 months from filing
OR if claiming priority
the later of 12 months from priority or 2 months from filing
UNLESS
The application is a new application (divisional or from a dispute S8 S12 S37) AND within 6 months of the compliance period in which case it must be on filling
What is the deadline for requesting search and paying search fee -
S15 (10) R22
12 month from filling
OR
if claiming priority the later of 12 months from priority or 2 months from filing
AND
The applicant must file a certified copy (and translation if required R113(2) before 4 months from filing
UNLESS
The application is a new application (divisional or from a dispute S8 S12 S37) AND within 6 months of the compliance period in which case it must be on filling
What is the deadline for filing a NEW application i.e divisional or following a dispute
The application must be filed before 3 months before the end of the compliance period for the earlier application
What does S15(10) deal with and what extension can be used for S15(10)?
What is the exception for this section?
All deadlines can be extended 2 months using an as of right retrospective extension under R108 (2)
EXCEPT
S15(10)(b)(ii) if the application is filed by reference to an earlier application the applcant must file a certified copy of the earlier application (and a translation if nescesary. Only Rule 108(1) - in line with filling priority docs
What does S15(10) deal with and what extension can be used for S15(10)?
What is the exception for this section?
All deadlines can be extended 2 months using an as of right retrospective extension under R108 (2)
EXCEPT
S15(10)(b)(ii) if the application is filed by reference to an earlier application the applcant must file a certified copy of the earlier application (and a translation if nescesary. Only Rule 108(1) - in line with filling priority docs
What section deals with mention of Inventor
S13
What is the deadline for providing the details of the inventor? And what form is used
16 months from priority
PF7
What details are required on PF7
The identity of the inventor
AND
The derivation of rights to the applicant
What is an extension under R108(1)
This is an extension at the comptroller’s discretion
for deadlines NOT listed in part 1 and 2 of Schedule 4
What is an extension under R108(2)
This is an as of right retrospective extension of 2 months for deadlines listed in Part 2 of the Schedule 4
What is an extension under R108(3)
This is a discretionary extension applicable to section 2 of Schedule 4
What form is used to make an application?
PF1
When must the application fee be paid?
the later of 12 months from priority or 2 months from filing
What must be included in an application for a patent
A request for grant A specification including -description one or more claims drawings if refered to an abstract But at filing only need to satisfy S15(1)
Where must the subject matter of the claims of the application be supported?
by the description of the application as filed.
NOT from any priority document
What are the requirements for the claims
They must define the application as filed
They must be clear and concise
They must be supported by the description
If an Applicants name and address are not supplied what occurs and what is the deadline for responding
The Comptroller will request the information with a deadline of 2 months to respond
What language must application documents be filed?
What is the deadline to supply translation?
any language
two months from the Comptroller’s request for a translation
What happens if application documents are filed in a language other than english or welsh
The comptroller will request a translation
Giving a time limit of 2 months to respond
What is required for multiple inventions to have “unity”
The Inventions must share between them a technical relationship based on matching or complementary special technical features (inventive features)
What Does S16 of the act deal with?
Publication
What section deals with Publication
S16
When does publication happen
As soon after 18 months from priority as possible
UNLESS
early publication is requested
OR
The application is deemed to be pertinent to national security in which case S22 will prevent publication
When must an application be withdrawn to prevent publication
Before preparations for publication are complete - typically 5 weeks before publication
What measures does early publication effect
late declaration of priority
What occurs if an application is refused under rule 30?
The decision can be appealed under S97 within 28 days from the decision
Note the r30 compliance period can be extended 2 months as of right and in further 2 month increments at the discression of the comptroller at his discretion
what section deals with reinstatement of an applciation?
S20A
what is S20a
Reinstatement of an application
What are the requirements of S20a
A request for reinstatement must be made by the applicant on PF 14
AND
evidence must be provided such that the comptroleer is satisfied the failuire to meet the deadline was unitentional
What is the time limit for requesting reinstatement under S20A
12 months from the date of termination of the application
If reinstated under S20Ahow long does the applicant have to remedy the cause of termination?
a period set by the comptroller of at least 2 months
If a request for reinstatement under S20A is unsuccessful what are the applicants options?
The applicant may request a hearing within one month of refusal - the request will be granted.
What are bad faith acts regarding reinstatement
bad faith acts apply IF THE APPLICATION has been PUBLSHED, are infringing acts started during the extension period or continuing from before the termination
What 3rd party rights can arise when an application is reinstated under S20A
Good faith acts apply IF THE APPLICATION has been PUBLSHED, or serious and effective preparations for acts that would other wise infringe the claims of the granted patent will be permitted to continue
Can good faith prior use rights be transfered?
only as part of the legal entity within which they resided. i.e. you would have to buy a company to gain the rights you can’t just transfer
Why would an application fall fowl of S22
if an application that is first filed in the UK is prejudicial to national security or public safety
If third party obvs are received after an 18(4) communication has been sent what occurs?
The comptroller will not send the documents to the examiner. They will not be considered.
How long can the Comptroller restrict dissemination of information under S22
for upto 3 months after publication was due (21 months from prioirty).
NOTE
Under S22(5) the Secretary of state has the power to extend this period until he sees fit.
what are the effects of a S22 order
The application can not be diseminated or made public
THEREFORE
if it is a UK filing of a PCT it will not be sent to the IB
If it is a Uk filling of a EP it will not be forwarded to the EPO
AND
the application will not grant
THEREFORE no renewal fees are due
HOWEVER
if in order for grant the government may make hardship payments if hardship can be shown.
how often are S22 restrictions reviewed by the secretary of state?
within 9 months of filing and every 12 months thereafter - restrictions will be lifted if the secretary of state views the content of the application to be non longer relevant to national security or public safety
what happens if you break a S22 order?
An unlimited fine or max 2 years in prison
if an EP or PCT application is relevant to S22 restrictions and is not forwarded what can the applicant do
If after 14 months the application has not been forwarded by the comptroller to the relevant office - the application may be converted to a UK application
What does S23 relate to?
Restrictions on overseas filings
Which section relates to overseas filings?
S23
What are the restrictions on overseas filings?
No person resident in the UK shall file an application that relates to military technology, may compromise national security or public safety outside the UK unless it has previously been filed with the UK IPO for a period of at least 6 weeks.
UNLESS
The application has previously been filed by a non uk resident overseas
What is the penalites for filing an application that may be subject to S22 restrictions overseas?
unlimited fine and up to two years in prison but only if you were aware your filing would be against S23 or you were reckless with the filing
what is S24
Publication of Certificate of grant
When is the publication of the certificate of grant?
Notice of grant is given in the OJ as soon as practical after grant publication is on a wednesday
What does S32 deal with?
The register of patents
What section details the register of patents?
S32
what form is used to request a copy of a register entry?
PF23 with a fee
What is PF23 used for
Requesting a copy of the register for a patent when accompanied by a relevant fee.
What is recorded in the register?
Published applications and Patents
Transactions, instruments, ro events affecting patent rights
Opinions on validity and infringement S74A
Provision of evidence/documentation
corrections of errors in registration and
publicising changes in the register
What does a record in the register consist of?
The applicant’s name and address and address for service
the inventors’ names and addresses
the title, filing date and number of the application
date of publication
priority information - filing date number and country of each document
what may any person apply to correct in the register? and how?
His name - File PF20
his address - in writing or
his address for service - in writing
What request is made on form 20
To correct or amend a name or address in the register
who can request a correction of an error in the register?
Any person using PF11?? Rule 50 says in writing
the request must be in writing and give sufficient information to identify the error and the correction
the comptroller will act if it is obvious an error is present other wise will request explanation and evidence R50
What documents does R50 allow any person to request correction of?
documents connected with registration using PF11??
R50 says in writing
how long is the delay before documents filed with the IPO appear on the register?
14 days
who can pay renewal fees
anyone can pay renewal fees
what is the time limit for registering an assignment or license with the IPO and what is the effect of doing so
six months or as soon as practicable
If not registered costs in infringement proceedings will not be awarded to the assignees or exclusive licensees
AND
registration will ensure an earlier transaction will have entitlement over a later transaction
What should you think about when taking on a new client?
conflict check - money laundering checks
registering as address for service
What do the S33 effects of registration apply to?
Assingment of patents or applications and rights in it
mortgage of a patent or license
grant/assignment of a license
death/dissolution of a proprietor and transfer of vested interests
court orders - transfering rights to another person
changing the name of the proporietor
What does S33 deal with?
The effect of registration of a transaction on the register
What form is used to register transactions such as assignments and licesnse
PF21
what does S36 deal with?
co-ownership
what section deals with co-ownership??
S36
What does co-ownership of a patent entail?
each party posesses an equal undivided share - unless subject to an agreement to the contrary
What unilateral rights does co-ownership give you
The right to carry out the full extent of the invention.
work the patent independently without infringing each other’s rights
AND
to enforce the rights in the patent
What requires agreement from both co-owners
Amendment of the patent or app, revolk surrender the patent or app or assignment, mortgage or license of the patent app
If a single co-owner sues for infringement what are the effects on the other co-owners?
The other owners are party to the proceedings but will not be liable for costs unless they agree to it.
