Applications Flashcards
Learn sections 14-16
1
Q
What must every application for a patent contain?
A
a) Request for grant
b) Specification (description, claims, drawings referred to) c) abstract
2
Q
What is the Application Fee?
A
£60 if paid upon filing, £75 if paid within 12m
3
Q
Deadline for filing abstract (and claims if not done at filing)?
A
Later of
a) 12 months from priority date or
b) 2 months from filing (if claiming priority)
4
Q
Deadline for Search Request and Search Fee?
A
Later of
a) 12 months from priority date or
b) 2 months from filing (if claiming priority)
5
Q
What is the Fee for Requesting a search?
A
UK - £150
International - £120
Supp/Further - £150
6
Q
Which form should you use to request search if not done at filing?
A
PF9A or AF1
7
Q
Deadline for paying excess claims fees (>25)
A
12 months from priority date or 2 months from filing (if claiming priority)
8
Q
What is the excess claim fee?
A
£20 per claim over 25
9
Q
Deadline for paying Application Fee?
A
Later of
a) 12 months from priority date or
b) 2 months from filing (if claiming priority)
10
Q
What is the deadline for filing the declaration of inventorship?
A
16 months
11
Q
Form for filing the declaration of inventorship?
A
PF7
12
Q
When does publication of the application occur?
A
18 months (or soon after)
13
Q
When does provisional protection begin during the prosecution process?
A
Upon publication
14
Q
Deadline for filing request for substantive examination?
A
6 months after publication of spec
15
Q
Deadline for paying examination fee?
A
6 months after publication of spec
16
Q
What is the examination fee?
A
£100
17
Q
Deadline for paying excess description page fees (>35 pages)?
A
6 months after examination.
18
Q
What is the excess page fee?
A
£10 for each page over 35
19
Q
Deadline for responding to Examination Report?
A
date set by examiner
20
Q
What is the extension permitted as of right under R108(2)?
A
2 months
21
Q
Patents Form and Fee for requesting an extension under R108(2)?
A
PF52 and £135
22
Q
What can you do if you require a further extension after R108(2)?
A
R108(3) - request further discretionary extension
S20A - Reinstatement of applications
23
Q
What is required for a further request for extension of time under R108(3)?
A
PF52, evidence supporting grounds of the request.
24
Q
Deadline for withdrawing application in time to prevent publication?
A
Request before preparations for publications complete.
25
Which time limits are excluded from extension under R108?
Those in Parts 1 and 2 of Schedule 4
26
What is the requirement of the specification for enablement under s14(3)?
Specification must be clear and complete enough to be enabling
27
Requirement for the claims?
Define matter
Clear and concise
Supported by Description
Single inventive concept
28
Is the abstract part of the specification for amendment purposes?
No
29
Application withdrawal cannot be reversed unless...
Error or mistake - Comptroller can correct withdrawal under s117(1)
30
What is the deadline for responding to the Comptroller's request for applicant name and details?
2 months (or deemed withdrawn)
31
What are the requirements for the title under Rule 12?
Title must be short and indicative.
32
What are the requirements for the description under Rule 12?
List any Figures
33
Deadline for responding to the Comptroller's request for translation under rule 12?
2 months
34
Deadline for responding to the Comptroller's request for a sequence listing under rule 13?
Comptroller sets period
35
What must accompany a late-filed sequence?
Declaration of no added matter.
36
What are the requirements for the abstract under Rule 15?
Title
Concise
Technical Field
Explanation
Main use
Reference Numbers
37
Which Figure is used in the abstract?
One identified as the main Figure unless Comptroller decides otherwise.
38
When do two or more inventions have unity under Rule 16?
when they share one or more special technical features.
39
"X arranged such that Y happens"
What is the requirement for functional claims?
Must list the elements to be arranged and describe how to arrange them.
40
Deadline for Declaring Priority on an application filed within 12 month period.
16 months from declared priority.
41
Deadline for filing a priority application?
12 months from declared priority.
42
Deadline for Late Filing a Priority-claiming Application
2 months after the normal 12-month priority period
43
Deadline for declaring priority for a late-filed application?
date of filing
44
What might you consider conducting before filing a patent application?
Prior art search to determine prospects for grant.
45
What are the mandatory forms comprising a new filing?
PF1
46
What other forms might make up the application?
7 - Inventorship
9A - Search
10 - Examination
A1 - Application fee if not paid on filing
47
What can you do to remedy a description that is not enabling?
Limit the claims to what is enabled
48
What can you NOT do to remedy a description that is not enabling?
amend the description to make enabling as it adds subject matter
49
What is meant by the term 'enabling' with respect to the description?
A enabling description provides enough information combined with the CGK for the skilled person to work the invention across the whole scope of the claim without undue burden and without inventive effort.
50
Insifficiency is when...
the claim scope extends beyond to technical subject-matter not made available to the person skilled in the art
51
What are the three conditions to accord a date of filing?
a) indication a patent is sought
b) identify/enable contact with applicant
c) description or reference to an earlier application
52
What is required when referencing an earlier application in place of a description?
Filing date, Application number, country of filing.
53
What happens if the application satisfies at least one but not all of the requirements?
Comptroller alerts applicant
54
How long does the applicant have to comply with Comptroller's request for applicant identity or verified translation?
2 months from notification
55
How long does the applicant have to comply with Comptroller's request for certified copy of an earlier application and translation?
4 months
56
If the application meets all of the requirements for according a date of filing, Comptroller will notify applicant of...
Date of Filing
Other requirement outstanding and the time limits to comply to prevent withdrawal
57
When an applicant has already got a date of filing, and they file a missing drawing(s) or text before preliminary examination or within 2 months of notification from preliminary examiner (R18), the missing part is treated as...but?
included but date of diling re-dated to when missing part filed.
58
When does redating under section 6 not occur for late-filed missing drawings or text?
a) A priority documnet declared under 5(2) before/on the filing date identifiably contains the missing parts and
b) Request is made i) to not re-date ii) identifying the relevant matter in the priority doc
c) within 15(5) period
59
Which section prescribes the filing of divisional applications or applications filed following disputes?
Section 15(9)
60
Which Rule prescribes the filing of divisional applications?
Rule 19
61
Which Rule prescribes the filing of new applications following disputes under s8(3), s12(6) and s37(4)?
Rule 20
62
What is the deadline for filing divisional applications under Rule 19?
1) 3 months before the end of the R30 compliance period
2) If first OA intent to grant - 2 months from OA
3) If earlier than 1 + 2, before termination, withdrawal, grant of the parent.
63
What is the deadline for filing applications following disputes under s8(3), s12(6) and s37(4)?
Within 3 months of the comptroller's order or within 3 months of any appeal order.
64
Under Rule 21, For divisionals and re-filings, the deadline for filing statement of inventorship is...
Later of:
a) 2 months from new filing date
b) period prescribed in section 13(2)
65
Under Rule 21, For divisionals and re-filings, the deadline for filing priority documents to support a priority claim is...
Later of:
a) 2 months from new filing date
b) period prescribed in Rule 8(5)
66
If a divisional or re-filing is filed within the last 6 months of the R30 period, under Rule 21 the deadline for filing statement of inventorship and priority documents to support a priority claim is...
Date of filing of the new application
67
Under Rule 21, for divisionals and re-filings, the deadline for filing a search request under Schedule 1...
Later of:
a) 12 months from filing of the earlier application
b) 2 months from filing the new application
68
What is the purpose of Rule 21?
Provides extensions for meeting formal requirements when a new application is filed that is derived from an earlier one.
69
What is the purpose of Rule 22?
Defines the time limits for compliance with s15(10) filing missing parts and s17(1) requesting search and paying search fee.
70
Under Rule 22, the relevant period (deadline) for complying with:
15(10)(a) filing missing claims/abstract
15(10)(bi) description
15(10)(c) application fee
15(10)(d)/17(1) request for search and search fee
Later of:
a) 12 months from priority date
b) 2 months from filing
71
Under Rule 22, the relevant period (deadline) for complying with 15(10)(bii) filing certified copy/translation
4 months from filing new application.
72
For divisionals and re-filings the deadlines under Rule 22 are adjusted to...
15(10)(a)(bi)(c)(d) and 17(1) - 2 months from filing new application.
15(10)(bii) - 4 months from filing new application
73
For divisionals and re-filings filed within the last 6 months of the R30 period you must file documents according to15(10)(a)(bi)(bii)(c)(d) and 17(1)
on date of filing
74
If you have filed informal drawings, what is the deadine for filing formal drawings?
15 months or within 1 month of notification
75
What are the requirements under section 15A(1) to get a preliminary examination?
a) Application has a date of filing
b) Application has not been withdrawn or treated as such
c) Application fee has been paid
76
The purpose of a preliminary examination is to ...(2)
a) if the application complies with formal requirements and priority claims
b) if the application complies with 13(2) and 15(10)
77
At what stage are missing parts identified at?
preliminary examination
78
If the preliminary examination identifies deficiencies in the application the Comptroller will ...
specify a period (2 months) to make observations or amend to comply.
79
What is the compliance period under R30?
4 years and 6 months from priority date
12 months from the first sub exam report
80
What is the compliance period for filings followig disputes under R30?
Later of;
a) Compliance period of earlier application
b) 18 months from the initiation date
81
What is the compliance period for divisional aplications under R30?
Compliance period of the earlier application.
82
If the first examination report is issued within the last 3 months of the existing compliance period, the period is extended to ...
3 months from the report date.
83
When does publication usually occur?
As soon as possible after 18 months from priority (R26)
84
What is published at 18 months?
Application as filed, with any amendments.
85
When are applications still published following a request to withdraw?
If the request is received after the preparations for publishing are already complete ~ 5 weeks beforehand
86
What might the Comptroller omit from the published documents before publication?
a) disparaging matter
b) immoral and offensive matter
87
What deadline is initiated by publication of the specfication in the official journal?
request substantive examination and pay examination fees.
88
What are the implications of requesting early publication?
You cannot claim late priority.
89
When might you want to request early publication?
To accrue damages in respet of third party infringement.
