Examination and Search

Question 1

What are the essential requirements for a Search to be done?

Answer 1

a) PRELIM: Preliminary Examination done
b) STATUS: Application not refused/withdrawn/treated
c) DEADLINE: Within 12 months of priority or 2 months from filing: PF9 and Search Fee paid [£150]
d) CONTENT: Application includes i) description ii) one or more claims
e) LANGUAGE: description complies with rules on language

Question 2

What happens when the Examiner does not think it is worthwhile to identify relevant documents for ALL of the application?

Answer 2

Examiner informs Comptroller, Applicant informed via Search Report

Question 3

What does the search examiner do with respect to unity?

Answer 3

Search Examiner determines unity and searches the first invention only, must pay fee for each further invention.

Question 4

What happens if the Comptroller decides that additional subject matter needs searching?

Answer 4

Comptroller requests updated search from Examiner
Supplementary search due to actions from the applicant under 18(3), 19(1) or s117 require further fee [£150] unless waived by Comptroller.

Question 5

What is the form for requesting a search?

Answer 5

9A

Question 6

Which rule of the patents rules 2007 governs the search?

Answer 6

Rule 27

Question 7

Under Rule 27, what must the comptroller do if only one invention of multiple has been searched?

Answer 7

Inform the applicant

Question 8

When is the relevant date before which the applicant must pay supplementary search fees?

Answer 8

First day of the 3-month period ending with the compliance date of the application

Question 9

What is the form used for requesting supplementary search under section 17(8)(6)?

Answer 9

PF9A

Question 10

What are the potential reasons for no useful search?

Answer 10

Invention is obscure
Invention is not patentable, not novel, or obvious

Question 11

What is the deadline for requesting examination?

Answer 11

6 months after publication of the specification

Question 12

What is the deadline for paying the examination fee?

Answer 12

6 months after publication of the specification

Question 13

What is the outcome if you fail to request examination and/or pay the examination fee

Answer 13

deemed withdrawn

Question 14

What are the options if the Examiner requests a supplementary search report?

Answer 14

1) Pay the fee
2) amend to fix non-unity

Question 15

What is the Rule 30 Compliance Period?

Answer 15

The time allowed for the applicant to put the application in order for grant.

Question 16

How long is the compliance period under R30?

Answer 16

Later of:
1) 4 years and 6 months from priority date
2) 12 months from first ER

Question 17

What is the compliance period for applications filed following a dispute under R30?

Answer 17

Later of:
1) 4 years and 6 months from priority date
2) 18 months from new filing date

Question 18

What is the compliance period for divisional applications under R30?

Answer 18

Later of:
1) 4 years and 6 months from priority date
2) 12 months from first ER

Question 19

What is the compliance period when the Examiner uses 3rd party observations for an examination report within the last 3 months of the R30 period?

Answer 19

3 months from the date of the ER

Question 20

If application complies with the act/rules within the compliance period, what is required before grant?

Answer 20

Payment of the grant fee.

Question 21

When can the Comptroller still limit the grant of a compliant application?

Answer 21

If another application for the same invention coexists with the same priority date and owner.

Question 22

What form do you request substantive examination on?

Answer 22

PF10

Question 23

Under what conditions is the deadline for requesting examination different?

Answer 23

If under Section 22 secrecy order - 2 years from priority date.

Question 24

What are the Rule 28 deadlines for divisional applications or applications filed following disputes?

Answer 24

Later of:
1) 2 months after initiation date
2) relevant period - 2 years from filing/priority

Question 25

What is the deadline for requesting substantive examination if a new application is filed less than 6 months before the compliance date of the earlier application?

Answer 25

The initiation date

Question 26

Under section 1A) what is the procedure followed at the IPO if the examiner believes a supplementary search is required?

Answer 26

a) Examiner tells comptroller b) comptroller can pause examination until fee paid c) Comptroller may refuse the application if the applicant doesn't within the allowed time a) pay fee b) amend application

Question 27

Under section 18(2) what is the purpose of the examiner's review of the application?

Answer 27

To ensure it meets the requirements of the act

Question 28

Accelerated substantive examination is allowed if...

Answer 28

Applicant provides adequate reasons why acceleration is needed Meets requirements for acceleration through the "Green Channel", PCT(UK) Fast Track, or PPH

Question 29

If the Examiner finds deficiencies within the application, they will send a report detailing their objections to which the applicant must respond by...

Answer 29

1) arguing against objections 2) amending the application (no added matter)

Question 30

What will happen if the amendments or arguments don't fully resolve the issues?

Answer 30

Further examination issued.

Question 31

As well as the Examiner, who might also provide objections to the patent during its pendency?

Answer 31

Third parties may submit comments pointing out issues.

Question 32

How does the Comptroller prevent double patenting?

Answer 32

If one applicant files two applications for the same invention, the comptroller can refuse to grant one of them.

Question 33

Before grant, the application must meet formalities including...

Answer 33

correct claim format, suitable abstract, proper drawings

Question 34

What is the deadline for filing for a reinstatement of an application under Section 20A according to Rule 32?

Answer 34

Within 12 months of termination

Question 35

What is the form and requirements for reinstatement of applications under s20A?

Answer 35

PF14 with supporting evidence

Question 36

Under what circumstances is the request for the reinstatement of the application published?

Answer 36

when the application has been published

Question 37

What happens if the supporting evidence is not filed?

Answer 37

Examiner specifies a period to file it

Question 38

What happens if the supporting evidence filed is not sufficient?

Answer 38

Examiner notifies the applicant, applicant has 1 month from notification to request a hearing

Question 39

Under what circumstances is the reinstatement of the application advertised?

Answer 39

If the request for reinstatement was published

Question 40

How do you go about getting an extension?

Answer 40

Request an extension under Rule 108(2) as of right using PF52