Flashcards in PROSECUTION Deck (56)
When must search be requested and paid for
12 months from priority or 2 months from filling
What must have occurred for a search to commence
The Preliminary Examination under Section 15A
The Application has not been refused or withdrawn
The Search has been requested using PF9A and the Search Fee has been paid £150/170
The application includes a description and claims that comply with the language requirements
What form is used to request search
What fees are due before Search carried out
The application fee£60/75, The search fee £150/180, Any Excess Claims fees
Publication starts what period
The six month period to request substantive examination and pay the examination fee £100/£130
From receipt of the search report the applicant can amend the claims of their own volition until receipt of the first examination report
Why might an Examiner not conduct a search
They do not think it would serve a purpose given the clarity of the description of the description or the claims
How many claims are allowed in a UK application
any number of claims are allowed but more than £25 claims will attract a fee of £20 per claim for the 26th claim and upwards
When are excess claims fees paid
With the search fee. The search will not go ahead until the excess claims fees are paid.
What does a search consist of
The Examiner will attempt to identify relevant prior art
The Examiner will asses the claims for unity
IF unity of invention is found to be lacking the Examiner will only search the claims relating to the first invention.
What occurs If the examiner deems that there is a lack of unity
The Examiner will report to the comptroller and the Comptroller will duely inform the applicant
Only the first invention will be searched
the Examiner will inform the applicant in the search report
the applicant will have to pay a further search fee for each further invention to be searched £150/170 if he wishes for the invention to be searched at any point up until three months before the compliance period
When will a search fee be refunded
If after payment of the search fee AND before the search has commenced the application is withdrawn the fee MAY be refunded R106 (3)
If a supplementary search fee is paid on a second invention which is subsequently filed as a divisional, the search fee MAY be refunded for the divisional
When can a supplementary search fee be paid?
Any time after the search report is issued until 3 months before the compliance deadline.
How can you speed up a search report
An applicant can request an early/accelerated search with a reason (e.g. to see results before a foreign filing) Different to requesting acceleration due to infringement
When do amendments have to be filed to be included in the published application?
Any amendments filed before preparations for publication are complete (approx 5 weeks before publication)
When will Preliminary Examination commence?
When there is a date of filing
The application has not been withdrawn or treated as such
The application fee has been paid £60/75
What section deals with Preliminary Examination
What does section 15A deal with?
What is preliminary examination under S15A
The Examiner confirms that the Application complies with the formal requirements of the act R25
Notes if there are any missing parts
And if appropriate the formal requirements of claiming priority S5 R6-9 (R23)
If S13 naming of inventor
claims/abstract/search fee/declaration of priority doc/certification/translation/payment of search fee.
What are the formal requirements of The Act for S15A
R12(1) Application for a patent on PF1
R14(1) language in English or Welsh
R14(2)(3) form of docs and drawings
only R14(1) if filed in electronic form or by electronic communication
What section deals with Substantive Examination
What does S18 deal with
What is the deadline for requesting Examination? What also has to be completed to make the request complete?
Six months from the date of publication of the application R28 if not already done on filing and payment of the examination fees and the excess page fees
Pay the Examination Fee £100/130
If a NEW application (divisional, litigation) the later of the above or 2 months from filing
within 6 months of the compliance date in which case it is on filing
What is required for Examination to commence
Examination must be requested and the examination fee paid
Any Excess page fees paid 36th page of description and up is £10
Any objection to non-unity must be addressed by argument, amendment or payment of additional search fee.
When can an applicant amend the application?
As many time as they like between issue of the search report and receipt of the first examination report
At the discretion of the comptroller. Likely once in response to each examination report.
What form do you use to request Substantive Examination
What is the deadline to request examination under S22
2 years from filing (equivalent to 18m publication + 6m)
How many pages can a UK patent application have?
Any number of pages. However, if the DESCRIPTION is more than 35 pages a fee of £10 per page is due - drawings, claims and abstract are not included
What is the R30 compliance period?
This is the deadline for putting the applcation in order for grant (last chance to amend or argue)
This period is 4.5 years from filing
12 months from receipt of the first Examination report (for example if delayed, divisional or litigation NEW filing)
UNLESS a new application is filed following a dispute in which case it is 18 months
(divisional apps are the same as the parent app and must be filed 3 months before comp period ends. Eaarlier is better as this gives time for amendment)
Can you extend the deadline for requesting Examination and paying Examination fee?
Yes Section 2 of Schedule 4
Therefore R108(2) 2 months retrospective as of right extension available PF52 £135
PLUS further discretionary extension R108(3) extension can be requested from the examiner with reason PF53 £135
Reinstatement if UNINTENTIONAL under S20A