Prosecution under PA 1977 Flashcards
Who can apply for a patent? Articles?
Anyone may apply for a patent (and be granted one)
- Paris Convention art 3
- TRIPS art 3
Date of filing section?
section 15
Date of filing requirement
Earliest Date on which documents filed at PO satisfy:
- Documents indicate a patent is sought
- Documents identify the person applying for a patent, so they can be contacted
- Documents contain something which appears to be a description
- Reference, complying with the relevant requirements of rules, to an earlier relevant application made by the applicant or a precedessor in title of his.
Missing Parts
A person can include a missing part in the application once it has been accorded a date of filing.
If not included in priority application, it could affect the date of filing.
Common where a page was not faxed properly or lost.
National security s23
If an application contains information which relates to military technology or might be prejudicial to the safety of the public.
Restrictions on national security
Must always be filed nationally first (criminal offence if not).
If filed internationally, at EPO or PCT, problem.
Application for a patent s14
An application (doesn’t need to be filed at date of filing, usually it is though) must contain:
- Request for the grant of a patent
- Specification containing a description of the invention
- A claim or claims
- Any drawings
- An abstract
Deadline to file application from date of filing
12 months
Preliminary examination s15A, under the PA 1977
Check for formalities. Must be in, and include:
- Right form
- Statement of inventorship
- Claims of priority are checked and substantiated
Search s17 involves
Request for a search report through form 9A. Produced within 4 months. An accelerated search can be requested too.
Will not do futile searches.
Might be involved in plurality objections - too many inventions (Re Hollister’s Inc’s Application 1983) and may involved supplementary searches for a cost (only first invention is searched)
Code for searches
X - document which in itself is relevant
Y- document which is only relevant in combination
A - document indicating background material
P - document published on or after priority date but before filing date of application
E- UK patent app, or international, designating the UK, which has a filing or priority date earlier than, but publication the same or later than the filing date of the application in suit.
Substantive examination
Request must be made within 6 months of publication of the application.
Examiner reports whether the application meets patentability requirements and issues either:
- S. 18 (3) Report - it does not comply with the act and rules
- S. 18 (4) Report - it complies with the act
If 18(3), then an exchange of observations and amendments with the examiner until accepted or rejected.
Excess Claims and Pages
Over 25 claims - fee for each additional
Over 35 pages of description - fee for each
Amendment
A patent may be amended before and after grant.
Renewal
Need to renew every year after the 4th year (provided it has granted after 4, if not if granted later, pay lump sum since 4th).
Failure to renew Article 5bis of Paris Convention
A period of grace of not less than 6 months shall be allowed for the payment of fees prescribed for the maintenance of industrial property rights. Subject if the domestic legislation so provides, to the payment of a surcharge.
Renewal dates timeline
Cannot pay fees 3 months earlier.
Pay by the end of calendar month of due date - same as on date
Grace period - as if the patent had never lapsed (6 months)
- Have to pay additional fees from that.
Also can apply for restauration for until 13 months.
- If someone uses patent before restoration after 6 months, but before application for resoration, prior user rights apply.
Reinstatement can occur as long as its unintentional
Termination S. 20B(7)
Refusal of the application or the application is being treated as having been refused or withdrawn
Reinstatement Section 20A
Comptroller can reinstate application only if the applicant requests him to do so, the request complies with requirement of rules, AND
He is satisfied that the failure to comply was “unintentional”
Prior use in reinstatement
If anyone from when the patent had lapsed, and its reinstatement had began making use of the patented product or process, he should be able to keep using it, yet without expanding its rights.
Withdrawal
Applicant can withdraw his application at any time. Either to re-apply, if prior to publication and get a new priority date.
If accidental, can resuscitate under section 117 (correction of errors) and third party rights in section 11/a
Right to a Hearing
Comptroller must give any party to a proceeding an opportunity of being heard before exercising adversely.
Hearings
Fundamental right to be heard
If patent is to be refused. You can have a hearing before the final decision.
○ Before hearing officers. Used to be before comptroller - not anymore (75y).
§ Through delegates of controller. Give you a written judgement.
□ You can appeal that to the high court
® Can only overturn if:
◊ Rationally insupportable, or the law was applied wrong
} Really high standard. Major problem.
○ Can get to Court of Appeal or Supreme Court, but same standard applies.
- Videolink hearing now - teams meeting. Very formal.
Any person may request an opinion on:
- Whether a particular act constitutes or would constitute infringement
- To what extent a patent as granted would be a patentable invention
- Sufficiency
- Added matter
Drawbacks pros & cons
Pros: cheaper.
Not legally binding
Cons: These are advertised
