Prosecution Process

Question 1

According to Section 17(1) PA77, what things need to be done for the examiner to refer an application for search?

5 things

Answer 1

• Preliminary examination has occurred
• The application is not withdrawn/deemed withdrawn
• A request for search has been made on Patent form 9A before the later of 12 months or 2 months from filing (r. 22(7))
• The search fee is paid before the later of 12 months or 2 months from filing
• The application includes a description and claims(s) complying with the language rules

Question 2

What payments need to be made as part of the search fees?

Answer 2

• Fee for search
• Fee for excess claims (£20 for each claim over claim 25)

Question 3

What does section 17(5 ) say about useful searches?

Answer 3

• The examine must determine whether or not a search on an application would “serve any useful purpose”
• If it would be useful for the whole or part of the application, then the examiner will proceed with the search for those parts
• If it would not be useful to search the application, the examiner reports this finding to the comptroller and the applicant is informed of this

Question 4

Under what circumstances would the examiner determine that a search on an application would not “serve any useful purpose”

Answer 4

• The specification is so unclear that a meaningful search is simply impossible.
• No prospect of obtaining a valid patent due to classically insufficient under s.14(3),
• No prospect of obtaining a valid patent because the invention is not capable of industrial application or it is excluded subject matter

Question 5

What is an Action Before Search (ABS) communication and how can the applicant respond to it?

Answer 5

• ABS states that there is no likelihood of a patent being granted, and clearly and simply set out the reasons why
• The applicant will usually get a chance to respond and can do the following:
  • Withdraw the application and get a refund of the search fees
  • Request that the application proceeds

Question 6

Under section 17(6), What will the examiner do if the application relates to one or more inventions?

Answer 6

• If before or during the search, the examiner determines non-unity then they will search the first invention only
• The applicant must pay a respective fee for each further invention to be searched

Question 7

What does Section 17(7) and 17(8) say about supplementary searches?

Answer 7

• The comptroller can request an updated search from the examiner at any time if thought applicable
• If a supplementary search is necessitated by an amendment or correction in respect of an application, an extra fee is payable
• The supplementary fee should be accompanied by Form 9A

Question 8

If there is a non-unit objection, what is the time limit for paying an additional fee?

Answer 8

To search for a second or additional invention, one must pay the additional search fee no later than the three month period ending with the compliance date of the application. it should be done on Form 9A.

Rule 27(5)

Question 9

Under what circumstances is the search fee likely to be refunded?

Answer 9

• The search fee may be refunded if the application is withdrawn before the search starts (Rule 106(3))
• The search fee may be refunded ff a search fee was paid for claims in a parent that were then divided out

Question 10

When should the search fee for a divisional be paid?

Answer 10

Divisionals have at least two months to file a search request, except in the last six months of the R30 compliance period (see Study Guide p37)

Question 11

What needs to be done before the Comptroller will refer an application for substantive examination under Section 18(1)?

Answer 11

• The request for substantive examination must be made on Patents Form 10
• Pay the examination fees
• These things should be done within 6 months from the date of publication of the application (r.28(2)) otherwise the application is deemed withdrawn

Question 12

If an application claims an earlier date of filing under s.8(3), 12(6), 15(9) or 37(4) (i.e. application by truly entitled person), when can the request for examination be filed?

Answer 12

Form 10 and the fees must be paid

• within two months of filing the application or,
• if it expires later, within two years of the declared priority date, or,
• where there is no declared priority date within two years of the date treated as the date of filing;

Question 13

When can a request for substantive examination be done if publication under s.16 has been prohibited or delayed because of a direction made under s.22(1) or (2)?

Answer 13

Form 10 and the fee must be filed

• within two years of the declared priority date, or,
• where there is no declared priority date, of the date of filing;

Question 14

What is the time limit for requesting a substantive examination for a converted application?

Answer 14

• Patents Form 10 with fee should be done within two years
• This time limit is extensible under r.108 (2) or (3) and Parts 2 & 3 (4) to (7),
• See 81.17 of MoPP for caveat

Question 15

What payments need to be made as part of the examination fees?

Answer 15

• The exam fee
• The fee for excess pages (£10 for each page after page 35)

Question 16

When will a combined search & examination report be drawn up?

Answer 16

When form 9A (request for search) and form 10 (request for sub. exam) are filed together at the time as making the application with all of the relevant fees paid.

MoPP 18.03

Question 17

When will the examiner say if a supplementary examination is necessary due to an amendment or correction?

Answer 17

• The applicant may be informed in a letter giving a specified period to pay the fee or amend the application so as to remove the need for the search or submit observations
• The applicant will be warned that the application may otherwise be refused.

Question 18

How many times can the applicant amend an application once the examination report has been issued?

Answer 18

According to 18(3), the applicant is entitled to one opportunity to comply with any defects highlighted by the examination report or to ague against them.

Question 19

What does Section 18(5) say about an invention with more than one applicant?

Answer 19

If two or more applications for the same invention coexist with the same priority date and owner, the Comptroller may limit grant to just one of them.

Question 20

What pages to excess page fees apply to?

Answer 20

• It applies to the description
• It does not apply to the claims, abstract or drawings

Question 21

What is the compliance period?

Answer 21

• The period for putting the application in order for grant is the compliance period. (Rule 30(1))
• The compliance period is four years and six months beginning with the date of filing or priority
• If it expires later, 12 months from the time of the first substantive exam report

Question 22

What is the compliance period for a new application filed following a dispute

Answer 22

• 4 years and 6 months from filing or priority in relation to the earlier application
• If it expires later, the period of twelve months beginning with the date on which the first substantive examination report is sent to the applicant.
• If it expires later, the period of eighteen months beginning with the initiation date of the new application

Question 23

According to Rule 30(4), what is the compliance period when the first observations report is sent to the applicant during the last three months of the usual period.

Answer 23

Where the first observations report is sent to the applicant during the last three months of the period specified in paragraphs (2) or (3), the compliance period is three months beginning with the date on which that report is sent.

Question 24

When can pre-grant amendments be made for a UK application?

Answer 24

• Between filing and the issuance of a search report - no amendments are allowed
• Between the issuance of the search report and the issuance of the exam report - amend as often as you like
• After the issuance of the exam report - amendment once in response to the exam report

Question 25

What does Section 18(4) and MoPP 18.84 say about grant?

Answer 25

• The applicant must be informed, in a report, of the fact that the application complies with the Act and Rules
• In the report, they are informed that voluntary amendments and/or a divisional application may be made within two months of the date of the letter.
• This report acts as a notification of intention to grant and indicates that the application will be sent for grant shortly after the two-month period has expired.

Question 26

How can grant be expedited according to MoPP 18.81?

Answer 26

In response to the report of the intention to grant, the applicant confirms in writing that they wish to waive the opportunity to file any divisional applications or amendments.

It is not possible for the applicant to request a delay to grant.

Question 27

If an intention to grant is issued and the applicant filed amendments, what happens next?

Answer 27

• If amendments are filed within the prescribed two-month period the amended specification should be re-examined in the same way as a specification amended after a report under s.18(3).
• If as a result of the amendments the specification no longer complies with the Act and Rules a report under s.18(3) should be issued, specifying four months for reply provided sufficient of the compliance period remains.

Question 28

Can the 2 month period from the notification of grant mentioned in Rule 31(4)(a) be extended?

Answer 28

Sometimes - at the discretion of the Comptroller (MoPP 18.84)

• Cannot be automatically extended by two months under s.117B(3),
• However, a request for a discretionary extension may be made under r.108(1) and should be allowed if accompanied by an adequate reason.
• This request may be filed retrospectively.
• Where a convincing reason is not provided, or the reason relates to the applicant’s desire for more time to file a divisional application, the extension should be refused.

Question 29

At what point does the examiner mark an application in order for grant?

Answer 29

MoPP 18.85

• No application should be marked in order for grant until three months after s.16 publication so as to allow the opportunity for s.21 observations and a top-up search.

Question 30

What fees are associated with the grant of a patent according to Rule 30A?

Answer 30

• A fee must be paid if the number of claims have increased since search and exceeds 25
• There is also a fee if the number of description pages has increased since request for examination and exceeds 35
• This fee should be accompanied by Form 34
• Must be paid within 2 months of the notification of the intention to grant

Question 31

What happens if the grant fees are not paid in time?

6 points

Answer 31

MoPP 18.86.1

• The period for extending the grant fees can be extended by 2 months ‘as of right’ by filing a Form 52
• A reminder letter is issued to the applicant informing them of this
• This letter will remind the applicant of the need to pay the grant fee
• Further extensions are possible but are subject to the comptroller’s discretion.
• If fees remain unpaid, the application will be terminated by formalities once the compliance date has expired.
• Once terminated the applicant may apply for reinstatement in the usual way

Question 32

What is a grant letter?

Answer 32

MoPP 18.86.3

• After notification to intention to grant the next thing is a grant letter - No application should be sent to grant without first having a notification of intention to grant issued
• This informs the applicant that a patent is granted
• The date of this letter is the date of grant for all provisions of the Act prior to s.25(1);
• In the same letter, the applicant is informed of the date when notice of the grant will be published in the Journal.

Question 33

Can the period for putting the application in order be extended?

Answer 33

MoPP 20.02

• The period for putting any application in order may be extended in two-month tranches (r. 108)
• The period may also be extended by the provisions of s.20(2) (i.e. if there is a pending appeal).

Question 34

What is the time limit for appeals?

Answer 34

MoPP 20.08

• The comptroller will normally direct that notice of appeal must be filed at the court within 28 days after the date of a decision.
• However, a different period can be set where appropriate.

Question 35

What is reinstatement?

Answer 35

• Reinstatement refers to the process of getting an application back if a deadline is missed during prosecution (S. 20A(1))

Question 36

What conditions need to be met to have an application reinstated?

Answer 36

• The applicant has requests reinstatement - must be made on Patents Form 14 (Rule 32(3))
• The request complies with the relevant requirements of rules;
  
  • Rule 32(2) - must request reinstatement within 12 months from the termination of the application
• Must demonstrate that the missed deadline was unintentional. - Must provide evidence (Rule 32(5))

Question 37

According to Rule 20A(3), under what circumstances should the Comptroller not reinstate an application?

Answer 37

• an extension remains available under this Act or rules
• the missed deadline is in relation to
  • in relation to any proceedings before the comptroller;
  • late declaration of priority with late filing s.5(2A)(b)
  • reinstatement itself, or a requested extension under s.117B

Question 38

Who can request reinstatement for joint applicants?

Answer 38

According to s.22(4) PA77, where the application was made by two or more persons jointly, a request under subsection (2) above may, with the leave of the comptroller, be made by one or more of those persons without joining the others.

Question 39

According to section 20A(7), what should the applicant do if the application is reinstated?

Answer 39

If an application is reinstated, the applicant must remedy the failure that caused refusal or effective withdrawal within a period specified by the controller (which is at least two months under 20A(8)).

Question 40

What happens if an applicant does not request reinstatement properly?

Answer 40

20A.04 MoPP

If a Form 14, fee or supporting evidence is not included with a reinstatement request, the formalities manager should contact the applicant/agent and instruct them to file the omitted documents within 14 days; otherwise the application will remain withdrawn.

Question 41

What can an applicant do if their request for reinstatement was rejected?

Answer 41

According to Rule 32(8) & (9), if reinstatement is refused then the applicant is notified and they have one month to request a hearing so they can be heard before the Comptroller.

Question 42

What are the effects of reinstatement under Section 20B?

Answer 42

• Anything done under or in relation to the application during the period between termination and reinstatement shall be treated as valid.
• With regards to actions done in bad faith - if already published
  
  • infringing acts are treated as such if done during potential extension period or
  • infringing acts are treated as such if continuing or repeating an earlier infringement
• With regards to actions done in good faith - if already published, then between termination and request for reinstatement
  
  • anyone who begins in good faith to infringe or makes preparations can continue to do so

Question 43

What does s.22(1) say about applications prejudicial to national security?

Answer 43

A GB, EPC or PCT application first-filed ant the IPO is reviewed to see if it’s prejudicial to national security.

If it is, the Comptroller may prohibit or restrict publication/distribution.

Question 44

What does s.22(2) say about the restriction of certain applications?

Answer 44

If it appears to the comptroller that any application so filed contains information the publication of which might be prejudicial to the safety of the public, then…

…he may give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons until the end of a period not exceeding three months from publication.

Question 45

What does s.22(3) say about applications that fall under the security provisions?

Answer 45

• For as long as prohibition directions are in force an application, it may proceed to the stage where it is in order for the grant of a patent,
• However, it shall not be published and that information shall not be so communicated and
• Furthermore, no patent shall be granted whilst the prohibition directions remain in force

Question 46

What does s.22(2) and (3) say about EP application?

Answer 46

• EP applications filed at the Office are not forwarded to the EPO while it is the subject of prohibition directions.
• If it does not reach the EPO 14 months from the declared priority/filing, it is deemed to be withdrawn.
• The applicant may then apply for the application to be converted to one for a patent under the Act and/or, subject to the comptroller’s permission, to appropriate foreign applications.

Question 47

What does s.22 (3) say about PCT application?

Answer 47

• PCT applications filed at the Office are not forwarded to WIPO while it is the subject of prohibition directions.
• These applications are no longer treated as such and must enter the national phase early if it is to proceed. PCT fees are refunded.
• There is no provision for the application to be converted to one for a patent under the Act although as soon as the conditions of s.15(1) are complied with a filing date under the Act may be accorded.

Question 48

What does s.23 say about restrictions to overseas filings?

Answer 48

No UK resident shall, without written authority, file an application outside the UK for a patent if subsection (1A) applies to that application, unless—

• the application was filed six or more weeks ago; and
• There is no prevention order under s.22

Question 49

What does Section (1A) say about restrictions due to security provisions?

Answer 49

Restrictions to filing overseas applications apply if:

• The application relates to military technology or might be prejudicial to national security
• the application contains information the publication of which might be prejudicial to the safety of the public

(unless the exceptions in s.1 apply)

Question 50

According to s.23(3) and (3A) say about the consequences of breaching the restrictions?

Answer 50

• Breaching the restrictions makes you liable to an unlimited fine and/or two years in prison if convicted
• These consequences only apply if you knew that filing would contravene s.23 or you were reckless with the possibility that it would

Question 51

Summarise what Section 117B says about the extension of time limits specified by the Comptroller?

Answer 51

• Subsection (2) below applies for time limits specified by the Comptroller
• Subject to subsections (4) and (5) below, the comptroller shall extend a period to which this subsection applies if—
  
  • the applicant or the proprietor of the patent requests him to do so; and
  • the request is made in writing, within 2 months of the expiry of the missed time limit (r.109)
• The extension lasts until the earlier of —
  
  • the prescribed extension period (2 months)
  • the period under s.20 (the compliance period)
• If a period has already been extended under subsection (2) above—
  
  • it cannot be extended again
  • but the comptroller may further extend as he thinks fit.
• Subsection (2) above does not apply to a period specified in relation to proceedings before the comptroller.

Question 52

Summary of Rule 108 regarding extensions

Answer 52

• Rule 108 provides a means of extending some statutory deadlines (as opposed to the Comptroller) - see Schedule 4
• The comptroller may, if he thinks fit, extend or further extend periods other than those in Parts 1 and 2 of Schedule 4, upon written request
• The comptroller shall extend once by a period of two months, any period of time prescribed by the provisions listed in Part 2 of Schedule 4 if the request is filed (using PF52 and paying the fee of £135) before the expiry of the two-month period
• See R.108 for full Rule

Question 53

• The comptroller decides the hours and days of opening at the UKIPO (inc. days such as bank holidays and interrupted days). Such opening times may vary for different classes of business conducted.
• Any business under the Act which is done when the Office is closed (i.e. after the hour of closure or on an excluded day) for the class of business in question is treated as done on the next non-excluded day.