PA 22 & 23 - Information prejudicial to national security and restriction

Question 1

What does section 22 concern

Answer 1

Infromation prejudicial to National Security or safety of the public

Question 2

What does the UKIPO do for all applications (GB, EP or PCT)

Answer 2

S22(1)
A GB, EP, or PCT application first filed at the UKIPO is reviewed to see if it is prejudicial to NATIONAL SECUTIRY as defined by the Secretary of State.

Question 3

What happens if the UKIPO thinks an application is prejudicial to NATIONAL SECUTIRY

Answer 3

S22(1)
The Comptroller may prohibit or restrict publication/distribution

Question 4

What happens if an application is prejudicial to the SAFETY OF THE PUBLIC

Answer 4

S22(2)
the Comptroller can prevent or restrict dissemination of the invention for up to THREE MONTHS after the application was due for publication (i.e. up to 21 MONTHS)

Question 5

What happens to an application that has been prevented or restricted dissemination

Answer 5

S22(3)
While the prevention is in force,
a) it can still be prosecuted up to readiness to grant in the UK, but it is suspended at that point and still not published
b) If it is an EPC application it is NOT sent to the EPO
c) if it is a PCT application it is NOT sent to the IB or ISA

Question 6

When will infromation be send to the EP for an application with a prevention in force

Answer 6

S22(4)
Infromation regarding an EP application may be sent to the EPO if the Comptroller has a duty to do so - although Art 77 EPC appears to relieve the Comptroller of this duty

Question 7

What does the Secretary of State do for prevented or restricted dissemination applications

Answer 7

S22(5)
For any application identified under S22(1) or (2) they
a) determine if publication of the application or invention would prejudice security / safety
b) and if prejudicial to safety, instructs the Comptroller to extend the period of S22(2) until instructed otherwise
c) and in any case will review security/ safety again within NONE MONTHS of filing and every 12 MONTHS thereafter
d) If it no longer appears prejudicial, they inform the Comptroller

Question 8

What does the Comptroller do if the Secretary of State informs them an application is no longer prejudicial

Answer 8

S22(5)
e) they lift the restrictions, notifies the applicant, and provides any necessary extensions of time to complete prosecution

Question 9

How does the Secretary of State review applications for prejudicial material

Answer 9

S22(6)
a) where the invention relates to atomic energy or related matters, the Secretary of State may at any time:
i) inspect the application and any accompanying documents, and/or
ii) authorise a competent body to do this, who reports back to them as soon as practicable
b) in any other case, inspect the application after the S16 date, or before with the applicants permission

Question 10

What happens if an application is in order for grant when a prevention is in force

Answer 10

S22(7)
a) if the Government uses the invention, sections 55-59 apply;
i) as if arranged under s55 (crown use)
ii) as if published,
iii) as if granted, and
b) if hardship due to the restriction is shown, the Government MAY make a hardship payment

Question 11

What happens to renewal fees while a prevention is in force

Answer 11

S22(8)
The renewal fee is waived

Question 12

What happens if you breach a prevention order

Answer 12

S22(9)
Breaching the prevention makes you liable to:
a) a fine of up to £1000 or
b) up to two years in prison
if convicted

Question 13

Are applications under prevention orders part of the state of the art?

Answer 13

If/when an application/patent is released, it acts like normal S2(3) novelty only art for intervening filings

Question 14

What should you do if you have an application for a relevant technology to national security or safety of the public

Answer 14

Applications like this should be filed via the UKIPO

Question 15

What can you do if your application is not passed on to the EPO

Answer 15

If it is not received by the EPO within 14 MONTHS, conversion to designated states may be possible - see S81

Question 16

What can you do if your application is not passed on to the IB/ ISA for a PCT

Answer 16

S89(3) allows for a PCT filing designating GB to be converted into a national filing under the review and excuse procedure if it is not received by the IB within 14 MONTHS

Question 17

What should you do if you have overseas inventors for application for a relevant technology to national security or safety of the public

Answer 17

check other national laws regarding first filing and foreign filing licenses requirements

Question 18

Can you ever disclose a prevention order application to someone else?

Answer 18

Yes, you can seek discretion to disclose to specified persons (can be useful for subsequent damages when released)

Question 19

What should you be aware of for applications for a relevant technology to national security or safety of the public

Answer 19

That the invention may ALSO be covered by the official secrets act or the export of goods control act, which may affect the use of the invention regardless of the patent’s status

Question 20

Do you always have to first file applications for a relevant technology to national security or safety of the public at the UKIPO

Answer 20

There is some scope for filing in other NATO countries, but permission must first be sought from the UKIPO

Question 21

What happens with fees for prevention order applications

Answer 21

Fees are paid separately to other applications in order to protect secrecy

Question 22

what is S23 concerning

Answer 22

Restrictions on Overseas filings

Question 23

When do restrictions on overseas filings apply

Answer 23

S23(1)
Restrictions apply where an application falls under S23(1A) UNLESS
a) the application was filed in the UK SIX WEEKS OR MORE AGO, AND
b) there is no prevention order under S22

Question 24

What do restrictions to overseas filings apply to

Answer 24

S23(1A)
Restrictions apply if:
a) the application relates to military technology or for any other reason may prejudice national security, OR
b) the information therein may prejudice public safety.

Question 25

When do restrictions on overseas filings NOT apply

Answer 25

S23(2)
The restrictions do NOT apply if a non-UK resident previously filed the application overseas anyway

Question 26

What happens if you breach a restriction on overseas filing

Answer 26

S23(3)
it makes you liable to
a) a fine of up to £1000 or
b) up to two years in prison
if convicted

Question 27

Are there any exceptions to the liabilities if you breach a restriction on overseas filing

Answer 27

S23(3A)
the liabilities only apply IF
a) you knew that filing would contravene S23 OR
b) you were reckless with the possibility that it would.

Question 28

Does S23 restrictions on overseas application only apply to patents

Answer 28

S23(4)
NO
The section ASLO applies to utility models or other forms of protections for inventions found either at home or abroad

Question 29

What should you do if you suspect the invention will contravene S23(1A)

Answer 29

You can either first file in the UK, or request a foreign filing clearance from the UKIPO