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Process Flashcards

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1
Q

What conditions need to be met to be accorded a date of filing - What section is this?

A

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

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2
Q

What language must the description be filed

A

any language

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3
Q

What will occur if the application does not fulfil the requirements of S15(1) - what is the deadline for response

A

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

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4
Q

What does S15(1) detail and what happens if the conditions are fulfilled

A

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

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5
Q

What happens if the applicant files an additional drawing or text missing or not contained in the application when filed

A

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

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6
Q

When can an applicant file missing parts

A

Between filing and preliminary Examination
OR
Within two months of notification by the Examiner of missing parts

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7
Q

What are the requirements if an application is made by reference to an earlier application

A

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

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8
Q

When must the applicant furnish the comptroller with a certified copy of the priority document containing the missing parts?

A

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

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9
Q

What section describes the filing of a divisional application

A

S15(9)

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10
Q

What are the requirements for filing of a divisional application

A

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

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11
Q

What are the requirements of filing a new application following a dispute?

A

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

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12
Q

What is the deadline for filing an abstract and what is the penalty for not filing in time

A

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

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13
Q

what is the deadline for filling a set of claims and what is the penalty for not filing in time

A

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

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14
Q

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

A

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

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15
Q

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?

A

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

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16
Q

What is the deadline for paying the application fee

A

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

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17
Q

What is the deadline for requesting search and paying search fee -

A

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

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18
Q

What is the deadline for filing a NEW application i.e divisional or following a dispute

A

The application must be filed before 3 months before the end of the compliance period for the earlier application

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19
Q

What does S15(10) deal with and what extension can be used for S15(10)?
What is the exception for this section?

A

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

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20
Q

What does S15(10) deal with and what extension can be used for S15(10)?
What is the exception for this section?

A

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

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21
Q

What section deals with mention of Inventor

A

S13

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22
Q

What is the deadline for providing the details of the inventor? And what form is used

A

16 months from priority

PF7

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23
Q

What details are required on PF7

A

The identity of the inventor
AND
The derivation of rights to the applicant

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24
Q

What is an extension under R108(1)

A

This is an extension at the comptroller’s discretion

for deadlines NOT listed in part 1 and 2 of Schedule 4

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25
Q

What is an extension under R108(2)

A

This is an as of right retrospective extension of 2 months for deadlines listed in Part 2 of the Schedule 4

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26
Q

What is an extension under R108(3)

A

This is a discretionary extension applicable to section 2 of Schedule 4

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27
Q

What form is used to make an application?

A

PF1

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28
Q

When must the application fee be paid?

A

the later of 12 months from priority or 2 months from filing

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29
Q

What must be included in an application for a patent

A 
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)
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30
Q

Where must the subject matter of the claims of the application be supported?

A

by the description of the application as filed.

NOT from any priority document

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31
Q

What are the requirements for the claims

A

They must define the application as filed
They must be clear and concise
They must be supported by the description

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32
Q

If an Applicants name and address are not supplied what occurs and what is the deadline for responding

A

The Comptroller will request the information with a deadline of 2 months to respond

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33
Q

What language must application documents be filed?

What is the deadline to supply translation?

A

any language

two months from the Comptroller’s request for a translation

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34
Q

What happens if application documents are filed in a language other than english or welsh

A

The comptroller will request a translation

Giving a time limit of 2 months to respond

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35
Q

What is required for multiple inventions to have “unity”

A

The Inventions must share between them a technical relationship based on matching or complementary special technical features (inventive features)

36
Q

What Does S16 of the act deal with?

A

Publication

37
Q

What section deals with Publication

A

S16

38
Q

When does publication happen

A

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

39
Q

When must an application be withdrawn to prevent publication

A

Before preparations for publication are complete - typically 5 weeks before publication

40
Q

What measures does early publication effect

A

late declaration of priority

41
Q

What occurs if an application is refused under rule 30?

A

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

42
Q

what section deals with reinstatement of an applciation?

A

S20A

43
Q

what is S20a

A

Reinstatement of an application

44
Q

What are the requirements of S20a

A

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

45
Q

What is the time limit for requesting reinstatement under S20A

A

12 months from the date of termination of the application

46
Q

If reinstated under S20Ahow long does the applicant have to remedy the cause of termination?

A

a period set by the comptroller of at least 2 months

47
Q

If a request for reinstatement under S20A is unsuccessful what are the applicants options?

A

The applicant may request a hearing within one month of refusal - the request will be granted.

48
Q

What are bad faith acts regarding reinstatement

A

bad faith acts apply IF THE APPLICATION has been PUBLSHED, are infringing acts started during the extension period or continuing from before the termination

49
Q

What 3rd party rights can arise when an application is reinstated under S20A

A

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

50
Q

Can good faith prior use rights be transfered?

A

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

51
Q

Why would an application fall fowl of S22

A

if an application that is first filed in the UK is prejudicial to national security or public safety

52
Q

If third party obvs are received after an 18(4) communication has been sent what occurs?

A

The comptroller will not send the documents to the examiner. They will not be considered.

53
Q

How long can the Comptroller restrict dissemination of information under S22

A

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.

54
Q

what are the effects of a S22 order

A

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.

55
Q

how often are S22 restrictions reviewed by the secretary of state?

A

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

56
Q

what happens if you break a S22 order?

A

An unlimited fine or max 2 years in prison

57
Q

if an EP or PCT application is relevant to S22 restrictions and is not forwarded what can the applicant do

A

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

58
Q

What does S23 relate to?

A

Restrictions on overseas filings

59
Q

Which section relates to overseas filings?

A

S23

60
Q

What are the restrictions on overseas filings?

A

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

61
Q

What is the penalites for filing an application that may be subject to S22 restrictions overseas?

A

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

62
Q

what is S24

A

Publication of Certificate of grant

63
Q

When is the publication of the certificate of grant?

A

Notice of grant is given in the OJ as soon as practical after grant publication is on a wednesday

64
Q

What does S32 deal with?

A

The register of patents

65
Q

What section details the register of patents?

A

S32

66
Q

what form is used to request a copy of a register entry?

A

PF23 with a fee

67
Q

What is PF23 used for

A

Requesting a copy of the register for a patent when accompanied by a relevant fee.

68
Q

What is recorded in the register?

A

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

69
Q

What does a record in the register consist of?

A

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

70
Q

what may any person apply to correct in the register? and how?

A

His name - File PF20
his address - in writing or
his address for service - in writing

71
Q

What request is made on form 20

A

To correct or amend a name or address in the register

72
Q

who can request a correction of an error in the register?

A

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

73
Q

What documents does R50 allow any person to request correction of?

A

documents connected with registration using PF11??

R50 says in writing

74
Q

how long is the delay before documents filed with the IPO appear on the register?

A

14 days

75
Q

who can pay renewal fees

A

anyone can pay renewal fees

76
Q

what is the time limit for registering an assignment or license with the IPO and what is the effect of doing so

A

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

77
Q

What should you think about when taking on a new client?

A

conflict check - money laundering checks

registering as address for service

78
Q

What do the S33 effects of registration apply to?

A

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

79
Q

What does S33 deal with?

A

The effect of registration of a transaction on the register

80
Q

What form is used to register transactions such as assignments and licesnse

A

PF21

81
Q

what does S36 deal with?

A

co-ownership

82
Q

what section deals with co-ownership??

A

S36

83
Q

What does co-ownership of a patent entail?

A

each party posesses an equal undivided share - unless subject to an agreement to the contrary

84
Q

What unilateral rights does co-ownership give you

A

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

85
Q

What requires agreement from both co-owners

A

Amendment of the patent or app, revolk surrender the patent or app or assignment, mortgage or license of the patent app

86
Q

If a single co-owner sues for infringement what are the effects on the other co-owners?

A

The other owners are party to the proceedings but will not be liable for costs unless they agree to it.

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