PA 14 - Making an application; PR 12, 14, 16, 103, 104, 113, 114, 115

Question 1

How should UK applications be made S14

Answer 1

S14(1)
Every patent application
a) shall be made in the prescribed form and filed at the UKIPO in the prescribed manner

Question 2

What is the prescribed form/manner for a UK application to be made

Answer 2

Using PF1 for request of grant (R12)

Question 3

When do application fees need to be paid S14

Answer 3

S14(1A)
When an application for a patent is made, pay the application fee WITHIN THE LATER OF 12 MONTHS FROM PRIORITY OR TWO MONTHS FROM FILING

Question 4

What happens if the application fee is not paid

Answer 4

S15(10)c)
The application will be deemed WITHDRAWN

Question 5

What must all UK applications comprise

Answer 5

S14(2)
The application must comprise:
a) a request for grant of a patent;
b) a specification containing a description of the invention, one or more claims and any drawing referenced therein
c) an abstract
BUT at filing not all these have to be done

Question 6

What must the specification be S14(3)

Answer 6

S14(3)
The specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art
i.e. clear enough to be enabling

Question 7

What should the claims do S14(5)

Answer 7

S14(5)
The claim(s) shall
(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

Question 8

Is there any restrictions on “supported by the description” S14(5)c)

Answer 8

Yes
CANNOT rely on support in priority documents see S5

Question 9

What does the abstract provide

Answer 9

S14(7)
The abstract gives technical infromation and does NOT from part of the state of the art for S2(3)

Question 10

Can you withdraw an application

Answer 10

S14(9)
The application may be withdrawn by the applicant at any time before grant, and this cannot be reversed

Question 11

Are there any exceptions to S14(9)

Answer 11

YES
S14(9) it DOES NOT affect the power of the Comptroller under S117(1) to correct and ERROR OR MISTAKE in the withdrawal of an application by the applicant (and thus potentially reversing a withdrawal)

Question 12

What happens if the applicant’s name and address are not provided on making an application

Answer 12

R12
2) If they are not provided, the Comptroller will request these

Question 13

What is the time limit for providing applicants details

Answer 13

R12
3) the applicant has TWO MONTHS from the request of the Comptroller

Question 14

What happens if you don’t provide the applicants details by the deadline

Answer 14

R12
3) the Comptroller may refuse the application (the application is treated as withdrawn R104)

Question 15

What should the title be

Answer 15

R12
6) The application must provide a title which is short and indicative

Question 16

What can the claims not refer to

Answer 16

R12
6) The claims MUST NOT rely on references to technical features of the invention disclosed in the description or figures UNLESS these can NOT be clearly and concisely defined in writing or using a mathematical or chemical formula.

Question 17

Can applications be filed in any language

Answer 17

YES

Question 18

When does a translation of the application need to be provided

Answer 18

R12 8)
If the application is in a foreign language (not English or Welsh), and no translation is provided, the the Comptroller will request a translation (R113)

Question 19

What must the description do re drawings or photographs

Answer 19

R12
7)
The description must list any included drawings or photographs

Question 20

What is the time limit for providing a translation

Answer 20

R12
9)
Two months after the notification of the requirement of a translation

Question 21

What is the consequence of not filing a translation

Answer 21

R12 9)
The comptroller may refuse the application

Question 22

What must an application contain if it discloses a sequence (Bio)

Answer 22

R13 2)
It must include a sequence listing

Question 23

What is the time limit for providing a sequence listing

Answer 23

R13 3)
The comptroller will request it and set the period for a response

Question 24

What happens if you do not provide a sequence listing

Answer 24

R13 3)
The Comptroller may refuse the application

Question 25

What must a late filed sequence listing include

Answer 25

R13 4)
A late filed sequence listing must be accompanied by a declaration that it does not contain matter extending beyond the sequence disclosed in the application

Question 26

What should the abstract include

Answer 26

R15
Start with the title of the specification
Contain a concise summary of the matter contained in the specification
including
an indication of the technical field to which the invention belongs
a technical explanation of the invention
the principal use of the invention
identifies the main figure if there are more than one in the application
Reference numbers should be included as applicable

Question 27

What should the abstract not include

Answer 27

R15
It MUST not include any statement on the merits or value of the invention or its speculative application

Question 28

What in the abstract can the Comptroller change

Answer 28

Which figure is included with the abstract

Question 29

What makes two inventions unified

Answer 29

R16
Two or more inventions are linked so as to form a single inventive concept where there exists between them a technical relationship which involves one or more of the same or corresponding SPECIAL TECHNICAL FEATURES

Question 30

What does Special technical Features mean

Answer 30

R16
Those technical features which define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. ( e.g. new plug and socket)

Question 31

What occurs if the application fee is not paid on filing

Answer 31

The cost increases

Question 32

What should the format of drawings be

Answer 32

black and white, but greyscale phots have been permitted as is shading in drawings where it assists in representing a shape and does not obscure other elements of the drawings

Question 33

What does a PF1 require

Answer 33

Title of application
Name and address of each applicant
country of incorporation if a company
name of agent,
address for service
Priority details, if any
statement of inventorship (use PF7 within 16 months if applicant is not the inventor)
signature of applicant or appointed agent

Question 34

What makes a claim clear

Answer 34

Must be clear to a person skilled in the art
But no need to list non-essential or “expected” features
EPO also requires claims to be clear on their own merit

Question 35

What should a product by process claim define

Answer 35

a product according to the process by which it is or can be obtained

Question 36

What must a function claim include

Answer 36

it must list elements to be arranged and the disclosure must describe how to arrange them
i.e. there must be no inventive step required to achieve the result by working out how to arrange the elements

Question 37

When are onmibus claims allowed

Answer 37

OMNIBUS CLAIMS ARE NO LONGER ALLOWED
unless the technical features of the invention cannot otherwise be clearly and concisely be defined using words, a mathematical or chemical formula or any other written means (i.e. very unlikely)

Question 38

Do the claims have to include anything else

Answer 38

No - reference numbers and two-part from (EPO) are allowed but not required

Question 39

What is an enabling disclosure

Answer 39

An enabling description provides enough infromation for the skilled person to work the invention across the whole scope of the claim.

Question 40

What can happen if a disclosure is not enabling

Answer 40

It can be a ground for revocation

Question 41

What does sufficiency mean

Answer 41

Sufficiency is a test of whether the full scope of the invention as defined by the claims is clearly, completely disclosed by the description (different to enabling).
So for something to be insufficient the claim scope encompasses something that the description does not disclose enough for the skilled person to replicate

Question 42

What can happen if a claims are insufficient

Answer 42

Insufficiency is a ground for revocation (lack of support is not)

Question 43

What does support mean?

Answer 43

Support is a pre-grant question of whether there is enough technical infromation in the application to support (provide basis) for the text of the claims

Question 44

What can the abstract not be used for

Answer 44

The abstract is not part of the specification itself, so cannot be used as basis for amending the claims (also true at the EPO)

Question 45

What should an enabling description be for a selection invention

Answer 45

The desired effect must be obtainable for ALL examples selected.
It is also bad if the effect can be obtained from those things not selected.

Question 46

What is different about enablement in the US

Answer 46

the US requires a “best mode” i.e. a preferred embodiment, as the invention is “reduced to practice”. It is no longer necessary to isolate this within the description, and EP/UK requirements for enablement are adequate for US purposes

Question 47

What happens if ANY document is provided not in English or Welsh

Answer 47

The Comptroller may request a translation be filed within TWO MONTHS
R113/114

Question 48

What happens if the Comptroller has reasonable doubts as the the accuracy of a transaltion

Answer 48

R115
He shall notify that persons of the reasons for his doubts and
may require that person to file evidence to establish that the translation is accurate
And if they fail to do so, the comptroller may take no further action to that document.