Mixed deadlines Flashcards by Lianne Da-Cunha

File statement that invention displayed at international exhibition

UK: 4 months from filing
PCT(UK): 2 months from NP entry

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File new application following entitlement dispute

3 months from decision / end of any appeal

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s12(6) - Where PCT(UK)/EP(UK) refused or withdrawn or UK designation withdrawn, Comptroller may he believes actually to be entitled to file new application by when

3 months of refusal/withdrawal

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Search and filing fee for new application following entitlement dispute

1 month from initiation date

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If old application/licensee worked/made serious and effective preps to work invention in good faith before registration of new applicant, they can file request to new applicant for licence to keep working invention by when

2 months from Comptroller’s decision

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Statement of inventorship (UK, PCT(UK))

UK: 16 months from priority
PCT(UK): later of 16 months from priority and 2 months from NP

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Transfer of patent to rightful owner is actionable

Up to 2 years from grant, unless registered proprietor knew at grant that they were not entitledE

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Employee applies to Comptroller for compensation

From grant up to 1 year after patent ceases to have effect

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Application / search fees for UK app
Application / search fees for PCT(UK) app

UK: If priority: later of 12 months from priority and 2 months from filing. No priority: 12 months from filing
PCT(UK): Later of 12 months from priority, 2 months from filing and 2 months from NP entry

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File description, if earlier application referenced on filing request for patent

If priority: later of 12 months from priority and 2 months from filing. No priority: 12 months from filing

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File certified copy and translation (if needed) of earlier application referenced on filing

Within 4 months of filing

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File missing parts (drawing or some text of description), and request not to re-date (if desired)

Between filing and start of preliminary examination, or within 2 months from notification by preliminary examiner

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File certified/verified priority doc which contains the missing parts (where request not to re-date made)

Earlier of 16 months from priority or 4 months from date of filing request not to re-date

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File divisional

Before expiry of 3 month period ending with compliance date (assuming parent not terminated, withdrawn or granted)File

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When must one complete formalities for new applications (divs or result of entitlement dispute) on filing

If new application filed within last 6 months of compliance period

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Correct erroneous priority date in a declaration of priority

2 months from invite (preliminary examination stage)

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Completion of technical preparations for publication

Around 5 weeks before expiry of 18 months from priority

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Pay additional search fee(s)

On or before the start of the 3-month period ending with the compliance date

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UK: Request exam and pay exam fee (inc. excess description pages fees)
PCT(UK): Request exam and pay exam fee (inc. excess description pages fees)

UK: 6 months from publication of application
PCT(UK): later of 2 months from NP entry and 33 months from priority (i.e. where enter NP early)

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Request exam and pay exam fee (inc. excess description pages fees) for new application (div/dispute)

Later of 2 years from priority date and 2 months from initiation date.
But comply on filing if within last 6 months of compliance date.R

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Request exam and pay exam fee (inc. excess description pages fees) for application under secrecy order

2 years from priority date

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Pay grant fee (i.e. excess claims and pages fees as no grant fee)

2 months of notification from Comptroller

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Earliest application can be granted (e.g. if no objections in combined search and exam report before publication)

At least 3 months after publication

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Intention to grant: notice period for grant date (and therefore to file divs/voluntary amendments before grant)

At least 1 month from notification

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Intention to grant: notice period for grant date (and therefore to file divs/voluntary amendments before grant), where intention to grant is the 1st exam report

2 months from notification

Response time (and extension time) if 1st exam report issued more than 3.5 years after priority date

2 months (instead of 4) Extendable only to 4 months total (instead of 6 total)

Appeal decision to refuse

Typically 28 days from decision or 14 days if on a point of procedure

Request reinstatement

Within 12 months from termination

Period specified upon approval of request to reinstate application to remedy failure that caused termination

At least 2 months (but best to remedy on filing reinstatement request)

Where evidence to show failure was unintentional in a request for reinstatement/restoration is insufficient, the period to request hearing

1 month from notification

Comptroller can prohibit publication if application prejudicial to national security

Up to 3 months after publication typically due, so 21 months from filing

If SOS orders continuance of secrecy directions, when are directions reconsidered

Within 9 months from filing date, and at least every subsequent 12 months

Earliest overseas application can be filed if relates to military technology / prejudicial to national security/safety of public, if no prevent directions given in this period

At least 6 weeks after first filed at UKIPO

1st renewal date and renewal period, where patent grants no earlier than 3 months before 4th year anniversary of filing date

1st renewal date = last day of period of 3 months from grant date renewal period = grant date to last day of month in which renewal date falls

1st renewal date if grant mentioned in EP Bulletin no earlier than 3 months before 4th year anniversary of filing date

Later of: - last day of period of 3 months from mention of grant - the next anniversary of filing date to fall after mention of grant

Comptroller notifies proprietor of unpaid renewal fee

Within 6 weeks of end of renewal period

Request restoration

Within 13 months after 6 month grace period

File address for service, if not included on filing

Within 2 months from invite

When are documents filed at UKIPO put on register

14 days after filed at UKIPO

When can licensee under LOR institute infringement proceedings in own name

If proprietor neglects/refuses to do so within 2 months of being requested

When can person apply to cancel LOR on grounds that proprietor is precluded by contract to grant LOR

Within 2 months of entry of request for LOR by proprietor

File opposition to cancellation of LOR entry

Within 2 months of application to cancel

Register assignment/exclusive licence so that can be awarded costs/expenses for an infringement carried out before registration

Within 6 months of transaction date

Deadline to put application in order if TPO made within last 3 months of compliance period and results in a first observations report

3 months

Compliance period for new application following dispute

Later of compliance period for earlier application and 18 months from initiation date

Compliance period for divisional application

Un-extended compliance period of root application

Compliance deadline if appeal pending and original compliance period expires

Comptroller decides extended compliance deadline

Compliance deadline if time to bring appeal still pending and compliance period expires

End of time to bring appeal

(Anyone) file observations on a request for an opinion (different to proprietor requesting review of opinion)

Within 4 weeks of advertisement of the request

Patent holder / requester of opinion files observations in reply to observations filed on a request for an opinion

Within a further 2 weeks (of the original 4 weeks to file the initial observations on a request for an opinion)

(Patent holder) request review of opinion

Within 3 months of issue of opinion

File notice of opposition against amendment proposed by proprietor under s75

Within 2 weeks of advertisement of proposed amendment in OJ

File notice of opposition in any scenario (inc. against amendment proposed by proprietor under s27 but NOT under s75)

Within 4 weeks of advertisement in OJ

File counter-statement to a filed opposition

Within 4 weeks of notification

Late declaration of priority for late filing for UK app Late declaration of priority for late filing for PCT(UK) app

UK: Within 14 months from filing date of earliest relevant application PCT(UK): 1 month after NP entry (or 1m from request to enter NP early)

Late declaration of priority for divisional/new application following dispute

On initiation date

File English translation of amendment made in international phase

On entry, or 3 months from notification by Comptroller (provided English translation of original application filed on entry)

If EP/PCT application first filed at UKIPO and has been made secret, it can be converted into a UK filing if not received by EPO/IB by end of what period

14 months from filing

File priority docs / declare statement of inventorship for new applications (div/following dispute)

Later of 2 months from initiation and 16 months from priority date (or on filing if new app filed in last 6 months of compliance period)

Respond to preliminary exam report

Typically 2 months from notification

In entitlement proceedings, where transfer of rights ordered, Comptroller may permit other (entitled) party to implement order if registered (non-entitled) proprietor doesn't transfer by when

Within 14 days of order

File translation of spec if not filed in English or Welsh

2 months from invite

SPC fee If this missed, SPC fee + additional fee

Within 3 months from start of SPC or, where SPC certificate granted after start date, then 3 months after date SPC granted Within 6 months of end of above period

Mixed deadlines Flashcards

(63 cards)