Prosecution, Amendment and Reinstatement

Question 1

When can an applicant amend an application under s19(1)?

Section 19: General power to amend application before grant

Answer 1

Prior to grant provided they do not add matter (and subject to the conditions of R31)

Refers to general power to amend. However CONDITIONS are:

• request in writing
• wait until notice of search report under 17(5), or ISR under PCT GB. Then can keep amending until first sub examination report
  After:
• one amendment if first report is s18(4) . Straight to grant. But within 2 months
• one to 18(3) in addition to reply. Except if 18(3) is before publication, in which case it’s unlimited

Question 2

What restrictions does Rule 31(3) place on the general power to amend under s19(1)?

I.E, when can you first voluntarily amend an application

Section 19: General power to amend application before grant

Answer 2

To voluntarily amend, you must wait for the notice of the search report under s17(5) (unless its a PCT(UK) that has received an ISR) - then can keep on amending until the first substantive examination report issues

Section 17: Search

Question 3

When can an application be amended if the first report is a s18(4) report?

Answer 3

s18(4) = grant report

Then one voluntary amendment is allowed if done within 2 months as-of-right (typical 18(4) has a 1 month deadline).

Section 18: Substantive examination and grant or refusal of patent

Question 4

When can an application be amended if the first report is a s18(3) examination report?

Section 18: Substantive examination and grant or refusal of patent

Answer 4

(i) if the first report is a s18(3), one voluntary amendment is allowed if it is done within the response period (typically 2-4 months)
(ii) if the first 18(3) issues prior to publication, then can keep on voluntarily amending before replying to the report

Section 18: Substantive examination and grant or refusal of patent

Question 5

What is the deadline to respond to a s18(3) examination report?

Section 18: Substantive examination and grant or refusal of patent

Answer 5

It is set by the Comptroller, but is typically 2-4 months.

Near the end of the compliance period, the deadlines will be shortened (and the maximum end date is the compliance date)

Request compliance extension if approaching deadline

Question 6

When won’t the Rule 31 restrictions apply?

Rule 31: Amendment of application before grant

Answer 6

Rule 31 subsections (3) and (4) do not apply where:

• the Comptroller consents to an amendment, or
• where the amendment concerns the actual request for grant

for using these exceptions, the applicant must provide reasons for the amendment

Question 7

What is reinstatement?

Answer 7

Reinstatement allows an application that has been refused or treated as withdrawn due to missing a deadline set by the Comptroller or the Act to continue in prosecution.

Question 8

What are the requirements for reinstatement?

Answer 8

The Comptroller will only reinstate an application if:

• Requested by the applicant (FORM)
• According to the rules (evidence of unintentional, within specified period)
• the Comptroller is satisfied that the failure to adhere to the deadline was unintentional

Question 9

Under s20A(3), when can’t an application be reinstated?

Section 20A: Reinstatement of applications

Answer 9

Cannot get reinstatement if:

• an extension is still available (e.g. R108(2))
• the missed deadline relates to:
  
  • proceedings before the Comptroller
  • late declaration of prority with late filing
  • reinstatement itself, or a requested extension under s117B (since application will be dormant)

Section 117B: Extension of time limits specified by comptroller

Question 10

Who can apply for reinstatement when there are multiple applicants?

Answer 10

Any one of joint applicants can request reinstatement unilaterally with the permission of the Comptroller

Question 11

If reinstatement is allowed, when must the applicant have remedied the failure by?

Answer 11

Within a period specified by the Comptroller, which will be at least 2 months.

(in practice do this on filing the request)

Question 12

What is the deadline for requesting reinstatement?

Answer 12

Reinstatement must be requested within 12 months beginning immediately after the date of termination of the application

Question 13

What happens if evidence isn’t supplied along with a request for reinstatement?

Answer 13

The Comptroller will specify a period of time to provide it

Question 14

What happens if reinstatement is refused?

Answer 14

If reinstatment is refused:

• The applicant is notified
• There is a 1 month period to request a hearing before the Comptroller

Question 15

What is the effect of reinstatement on a patent application?

Answer 15

Anything done with or to the patent application between loss and reinstatement is treated as valid

Question 16

When will acts be treated as infringing for an application that has been reinstated?

Answer 16

If the application is published:

• the act was done during a potential extension period (meaning as-of-right extensions)
• the act is a continuance or repetition of an earlier infringement

Question 17

When will third party rights arise for an application that has been reinstated?

Answer 17

If the application is published, then between termination and notice of a request for reinstatement, any third party who:

• begins in good faith to do an act which would otherwise be an infringement; or
• makes in good faith serious and effective preperations to do such an act

they may continue to do those acts even if application is reinstated, but cannot licence others

BUT this right cannot be excercised until after any period to request an extension

Question 18

Scenario:

Application was refused after the normal compliance period due to not responding to the s18(3) letter and is then reinstated

Section 18: Substantive examination and grant or refusal of patent

Answer 18

Both the response deadline AND the compliance period will be extended by reinstatement - in these circumstances the applicant will only have a single opportunity to get the application in order for grant.

Question 19

What is resuscitation?

Answer 19

Refers to bringing an erroneously withdrawn application back to life via s117 correction of errors.

File form + provide evidence of the error

Section 117: Correction of errors in patents and applications

Question 20

When will the Comptroller publish a request for resuscitation of an application?

Answer 20

If a request for correction relates to erroneous withdrawal of an application, and;

• the application has been published, and
• withdrawal was published

then the Comptroller will also publish the request for correction.

Question 21

What is the effect of successful resuscitation?

Answer 21

If an application is resuscitated, then anything done in relation to the application between publication of withdrawal and publication of reinstatement is valid

Question 22

When can an act carried out between publication of withdrawal and resuscitation be infringing?

Answer 22

If the act is a continuation or repetition then it will still be an infringement

Question 23

When will actions carried out between publication of withdrawal and resuscitation give rise to third party rights?

Answer 23

If between the notice of withdrawal and the date of notice of resuscitation a person:

• began in good faith an otherwise infringing act; or
• made in good faith serious and effective preperations to do such an act

then they may continue to do the act (but cannot licence this right - they can however authorise business partners or transfer the right as part of a business).

Question 24

What limitations do s76(1) and s76(1A) place on adding matter?

Section 76: Amendment of applications and patents not to include added matter

Answer 24

Section 76(1)

An application which is made in respect of a prior patent/application and discloses additional matter extending beyond that previously disclosed may be filed under s8(3), 12 or 37(4)

BUT it won’t grant until amended to exclude the additional subject matter.

Section 76(1A)

A description filed under s15(10)(b) that adds matter beyond a reference (i.e. priority) filed under s15(1)(c) to a prior application, then the application will not proceed unless it is amended to exclude the additional matter.

Section 76: Amendment of applications and patents not to include added matter
S8,12 - Entitlement to GB, Foreign/Convention applications
S37 - Entitlement to granted GB patent

Question 25

What limitations do s76(2) and s76(3) place on adding matter?

Section 76: Amendment of applications and patents not to include added matter

Answer 25

s76(2) - no amendment of an application is allowed if it results in disclosing matter beyond that disclosed in the application as filed.

s76(3) - no amemdment of a patent is allowed (under s27(1), s73 or s75) if it discloses additional matter or extends the scope of protection.

Section 76: Amendment of applications and patents not to include added matter

Question 26

What are the conditions to amend a patent post-grant under s27?

Section 27: General power to amend specification after grant

Answer 26

Subject to s76 (no added matter/claim broadening), the Comptroller may allow amendments of a patent on request, UNLESS any proceedings are pending that may affect validity (use correspdonding s75 if in infringement/revocation proceedings)

Section 75: Amendment of patent in infringement or revocation proceedings
Section 76: Amendment of applications and patents not to include added matter

Question 27

When do post-grant amendments under s27(3) take effect?

Section 27: General power to amend specification after grant

Answer 27

They are retroactive to the date of grant

Question 28

Can requests for amendment of a patent under s27 be opposed? On what grounds?

Section 27: General power to amend specification after grant

Answer 28

Section 27(5) - yes, by a third party.

Applications to amend will be published in the OJ.

Acceptable grounds of opposition include:

• Amendment adds matter under s76
• Amendments would (still) leave the patent invalid

NB non-unity is not a grounds for opposing amendment.

NB use s75 during revocation/infringement proceedings

Section 27: General power to amend specification after grant

Question 29

How are amendments under s27 (and s75) requested?

Section 27: General power to amend specification after grant
Section 75: Amendment of patent in infringement or revocation proceedings

Answer 29

Proprietor must:

• request amendment in writing;
• identify the proposed amendment; and
• give the reason for the amendment

best practice is to provide marked-up versions of the text - which the Comptroller can require.

Question 30

What additional requirements for post-grant amendment might need to be met for an EP(GB)?

Answer 30

If the EP(GB) was originally published in another language, need to provide a translation of the original and amended portions of the text.

The Comptroller can require a full translation to be filed if he sees fit.

Question 31

Can granted EPs be centrally amended?

Answer 31

Yes - this may be more cost effective where new prior art comes to light post-grant

Question 32

When can third party observations be filed?

Answer 32

Between publication of the application and the published grant date (not administrative grant), any person may write to the Comptroller questioning the application’s patentability (but no TPOs are allowed for entitlement questions - use s8).

NB filing TPOs will not make you a party to proceedings, but any outcome will be public

Question 33

Scenario:

Third party observations are filed within the last 3 months of the compliance period

Answer 33

If TPOs are filed in the last 3 months of the R30 period and result in a s18(3) exam report, then the applicant has a total of 3 months in which to put the application in order for grant (i.e. will extend the R30 compliance period).

Question 34

Scenario:

Third party observations filed after s18(4) report is issued (or after compliance period ends but before s18(4) report issues)

Section 18: Substantive examination and grant or refusal of patent

Answer 34

TPOs issued after the s18(4) will not be sent to the examiner and will not result in a new s18(3) - however grant will be delayed by 2 months to allow the applicant to make voluntary amendments (applicant can waive this).

Similarly, TPOs filed after the end of the compliance period, but before the s18(4) issues will not be considered (they may be considered if the compliance period is extended).

Question 35

What happens re grant and publication after the s18(4) communication is issued?

Section 18: Substantive examination and grant or refusal of patent

Answer 35

s24(1) - notice of grant is given in the OJ as soon as possible.

s24(2)-(3) - a grant certificate, the ‘B’ spec and the inventor and applicant details are sent as soon as practicable after notice.

The date of notice in the OJ is when the monopoly rights actually begin, and is also the day from which post-grant procedures can begin.

The date provided by the s18(4) communication is the ‘administrative’ grant date - at which point the pre-grant procedures end.

There is a limbo period between administrative grant and actual grant in which voluntary amendments are not permitted and divisionals cannot be filed

Section 24: Publication and certificate of grant

Question 36

Can granted patents be opposed on the grounds of unity?

Answer 36

No - see s26

Section 26: Patent not to be impugned for lack of unity