PA 18 - Substantive examination and grant or refusal; PR 28-30

Question 1

What should you do when the requirements of search (S17(1) )are completed

Answer 1

S18(1)
Once the requirements of S17(1) are satisfied the applicant should
a) request examination WITHIN SIX MONTHS OF PUBLICATION, if not already done,
b) pay the examination fee

Question 2

What happens if examination is not requested or the fee paid

Answer 2

The application is deemed withdrawn

Question 3

What effects the examination fee

Answer 3

It is cheaper when paid online
Excess description page fees are also due with the exam fee)

Question 4

When us supplementary search required

Answer 4

If there is non unity or the claims are amended to require one following search

Question 5

What are the applicants options re supplementary search

Answer 5

S18(1A)
a) pay the search fee, or
b) amend to render the search unnecessary (or successfully argue otherwise)

Question 6

How much is done in examination

Answer 6

S18 (2)
Examination is to such an extent as the examiner considers necessary

Question 7

What is the applicant entitled to after examination

Answer 7

S18(3)
The applicant is ENTITLED to ONE opportunity to comply with any defect highlighted by the exam report and/or argue against them, within a specified period.

Question 8

What happens when the application complies

Answer 8

S18(4)
If the application complies within the R30 Compliance period, thje Comptroller will grant upon payment of the grant fee

Question 9

What happens w.r.t multiple applications to the same invention

Answer 9

S18(5) If two or more applications for the same invention coexist with the same priority date and owner, the Comptroller may limit grant to just one of them

Question 10

How should examination be requested

Answer 10

With FORM 10, and the payment of the examination fee R28

Question 11

What is the time limit fo requesting examination

Answer 11

WITHIN SIX MONTHS OF PUBLICAITON OF THE SPECIFICATION (not of the search as in EPO)

Question 12

What are the deadlines for examination for divisionals or S8, S12 or S37 new applications

Answer 12

The LATER of the relevant date for the PARENT APPLICATION OR TWO MONTHS FROM FILING, UNLESS within 6 months of the compliance period when the deadline is the FILING DATE

Question 13

What is the deadline for examination to be requested for applications under a secrecy order

Answer 13

TWO YEARS from the priority date (as there is no publication date)

Question 14

When are excess page fees sue

Answer 14

R(Fees)3C
IF the description (NOT including the claims, abstract or drawings) comprises more than 35 pages, a fee is paid for the 36th and each subsequent page TOGETH WITH the exam fee

Question 15

What does R30 define

Answer 15

The Compliance period - the period for putting the application in order for grant

Question 16

What is the length of the compliance period

Answer 16

R30
(2) a) FOUR YEARS SIX MONTHS FROM THE EFFECTIVE PRIORITY DATE, or
b) 12 MONTHS from the first report under S18(3)
Whichever is later

Question 17

What is the compliance period for applications following a dispute

Answer 17

R30(3)
for new applications following DISPUTES the compliance period is
the compliance period for the originating application OR
18 MONTHS from filing of the new application
Whichever is later

Question 18

What is the compliance period for a divisional

Answer 18

IT inherits the SAME compliance period as the parent application

Question 19

What happens if third part observations are used witin the last three months of the R30 compliance period

Answer 19

The applicant has three months to repsond

Question 20

When is a fee due for grant

Answer 20

R30A
(1) IF, when notified for the intent to grant
a)the number of claims is greater than 25, and greater than the number of claims when search was requested
b) the number of pages of the description is greater than 35 and greater than when examination was requested
(2) the corresponding further additional claims fees and/or page fees incurred must be paid WITHIN TWO MONTHS from the notification of intent to grant

Question 21

Can the date for a request for examination be extended as of right

Answer 21

YES with FORM 52 and the FEE (R108)

Question 22

Are any additional extensions avaliable

Answer 22

YES - at the Comptroller’s discretion under R108(3), providing good reason if given why failure to request was out of the applicant and agent’s control e.g. a disaster, or a genuine and uncharacteristic error
IF allowed, use FORM 52 and FEE

Question 23

Is reinstatement available for missed request for exam

Answer 23

YES - IF loss was UNINTENTIONAL (FORM AND FEE)

Question 24

Can the compliance period be extended

Answer 24

YES using R108(2) and R108(3) (Form + Fee)

Question 25

What must be done by the end of the compliance period

Answer 25

The application must be IN ORDER FOR GRANT i.e. it is not the time to actual grant, but it is the deadline by which any successful arguments/amendments must be made

Question 26

When may examination fees be refunded

Answer 26

They MAY be refunded if an application is withdrawn before examination commences

Question 27

What happens if CSER has no objections

Answer 27

the examiner will wait until at least THREE MONTHS after publication before grant, to allow for third party observations

Question 28

When are voluntary amendments and divisional filings not allowed

Answer 28

Between the administrative grant date and actual notification of grant in the journal

Question 29

What is the window between notifcation to grant and grant

Answer 29

the S18(4) communication is now a NOTIFCATION OF INTENT TO GRANT, which indicates a later grant date. There is a window of AT LEAST ONE MONTH before actual grant to file divisional/make voluntary amendments
OR
TWO MONTHS where the first examination communication is a notification of grant

Question 30

When do conflicting applications occur

Answer 30

If an application is withdrawn before publication but IS NOT WITHDRAWN LEAVING NO RIGHTS OUTSTANDING - refiling will not be a new application
IF an EP(GB) grants before a GB case the GB case is likely to be revoked

Question 31

What should be done in case of sister EP applications with GB designations going to grant which conflict with a GB application/patent

Answer 31

i) amend cases to distinguish them (so different inventions)
ii) withdraw GB designation BEFORE GRANT of EP application
iii) keep EP(GB) and let it supplant GB patent (noting any licenses etc of GB patent will need new agreements )

Question 32

When will a GB be revoked if there is a supplanting EP(GB) application

Answer 32

the Comptroller will wait until the end of the EP opposition period/procedure, if the EP(GB) survives the GB will be revoked.

Question 33

When can Hong Kong patents be registered

Answer 33

Based on a GB, EP(GB) or CN patent, within six months of grant, providing the application was recorded in Hong Kong within six months of publication. Only formalities are examined before allowance.

Question 34

To what other jurisdictions will an UK examiner look before granting a GB patent

Answer 34

they will check for equivalent cases in WO, EP, US, JP and KR proesecution

Question 35

What happens to time limits for responding to examination reports if the first examintion report is more than 3.5 years after the priority date

Answer 35

The deadlines are reduced to two months, and only extendable to four months

Question 36

What are you entitled to before before a loss after exmaintion report

Answer 36

you are entitled to a hearing, then an appeal to a patents court, then an appeal (on facts and law) to the court of appeal

Question 37

How long are normal response deadlines for examination reports

Answer 37

It depends
Typically, they are four months, but if examination is requested early, deadlines can be up to a year or more

Question 38

How can you request accelerated prosecution

Answer 38

If you can demonstrate hardship (e.g. infringement or to secure investment)
Using the “green channel” for inventions with environmental benefit
Can request accelerated publication to further shorten period