Syllabus 3 - patent application process

Question 1

What are the minimum conditions required for a UK patent application to be given a filing date?

Answer 1

The documents filed at the Patent Office must satisfy the following conditions:

Indicate that a patent is sought.

Identify the person applying or contain sufficient information to contact them.

Contain either something appearing to be a description of the invention OR a reference to an earlier relevant application.

Question 2

What happens if a drawing or part of the description is missing from an application when it is initially filed?

Answer 2

If a drawing or part of the description was missing at the date of filing and is filed within the prescribed period (generally the period ending with the preliminary examination, or 2 months from notification if found missing), the missing part is treated as included. However, the date of filing is changed to the date the missing part was filed, unless a priority date was claimed on the original filing date and the applicant requests within the prescribed period that the filing date not be re-dated.

Question 3

What are the consequences if certain requirements, such as filing claims and abstract, paying fees, or requesting a search, are not met within the prescribed periods?

Answer 3

The application shall be treated as having been withdrawn. This applies if the applicant fails to file claims and the abstract, fails to file a description or copy of the earlier application when a reference was used, fails to pay the application fee, or fails to request and pay for a search within the prescribed periods.

Question 4

When does a UK patent application typically get published?

Answer 4

An application is typically published as soon as possible after the end of the prescribed period, which is 18 months beginning immediately after the date of filing or the declared priority date, whichever is earlier. Publication can be requested earlier.

Question 5

What must an applicant do to request a search of their application?

Answer 5

The applicant must make a request for a search on Patents Form 9A and pay the search fee before the end of the prescribed period. This must be done after the preliminary examination conditions are satisfied and the application has not been withdrawn.

Question 6

What must an applicant do to request substantive examination?

Answer 6

The applicant must make a request for substantive examination on Patents Form 10 and pay the prescribed fee. This must be done at the time of requesting the search or within the prescribed period, which is typically six months beginning immediately after the date the application was published. Failure to do so results in the application being treated as withdrawn.

Question 7

What is the “period for putting an application in order” for acceptance, also known as the compliance period?

Answer 7

The compliance period is the period prescribed for the purposes of sections 18(4) and 20(1) of the Act. Subject to some exceptions, this period is the later of:

Four years and six months from the date of filing or the declared priority date.

Twelve months from the date the first substantive examination report is sent to the applicant. If the first observations report (due to third-party observations) is sent during the last three months of this period, the compliance period is extended to three months from the date of that report.

Question 8

When is an application treated as having been refused?

Answer 8

An application is treated as having been refused if it is not determined to comply with all the requirements of the Act and Rules before the end of the compliance period.

Question 9

Under Rule 108(2), how can an applicant get an automatic extension for certain deadlines?

Answer 9

The comptroller shall extend by a period of two months any period listed in Part 2 of Schedule 4, provided:

A request is filed on Patents Form 52.

No previous request has been made under this rule paragraph for that period.

The request is filed before the end of the two months immediately following the expiry of the original deadline.

Question 10

What types of periods can not be extended under Rule 108?

Answer 10

Periods prescribed by the provisions listed in Parts 1 and 2 of Schedule 4. Part 1 lists periods that absolutely cannot be extended, such as the period for declaring priority late, applying to reinstate a terminated application, or patent renewal periods.

Question 11

Under what conditions can the Comptroller rectify an irregularity of procedure and potentially extend a period listed in Schedule 4?

Answer 11

A period specified in the Act or listed in Parts 1 to 3 of Schedule 4 can be extended under Rule 107 only if and only if:

The irregularity is attributable, wholly or partly, to a default, omission, or error by the comptroller, an examiner, or the Patent Office.

It appears to the comptroller that the irregularity should be rectified.

Question 12

What are the requirements for reinstating an application that was refused or treated as withdrawn due to a failure to comply with a deadline?

Answer 12

The comptroller shall reinstate the application if, and only if:

The applicant requests it on Patents Form 14.

The request complies with the relevant rules (e.g., includes evidence, filed within 12 months of termination).

The comptroller is satisfied the failure to comply was unintentional.

Question 13

What is the deadline for requesting the reinstatement of a terminated application under section 20A?

Answer 13

The request must be made before the end of the relevant period, which is twelve months beginning immediately after the date on which the application was terminated.

Question 14

What happens if a time limit for doing something under the Act or Rules expires on an “excluded day”?

Answer 14

The time limit is extended to the next following day not being an excluded day. Excluded days are specified by the comptroller.

Question 15

What happens if a failure to meet a deadline was due to a delay or failure in a communication service (like post or electronic communications)?

Answer 15

The comptroller shall extend any period of time where they are satisfied the failure was wholly or mainly attributable to such a delay or failure.

Question 16

What are the minimum conditions to get a filing date for a UK patent application?

Answer 16

The documents filed must indicate a patent is sought, identify the applicant or provide contact info, and contain either a description of the invention or a reference to an earlier relevant application.

Question 17

What must an applicant do to request a search under section 17?

Answer 17

The applicant must file a request on Patents Form 9A and pay the search fee before the end of the prescribed period.

Question 18

What happens if claims and the abstract are not filed within the prescribed period after the application has a filing date?

Answer 18

The application shall be treated as having been withdrawn.

Question 19

What is the deadline for requesting substantive examination under section 18?

Answer 19

Generally, six months beginning immediately after the date the application was published. For new (divisional) applications, special periods apply.

Question 20

What is the primary deadline for putting an application in order for acceptance (the compliance period) if no priority is claimed?

Answer 20

Four years and six months beginning immediately after the date of filing.

Question 21

What is the primary deadline for putting an application in order for acceptance (the compliance period) if priority is claimed?

Answer 21

Four years and six months beginning immediately after the declared priority date.

Question 22

How can the standard compliance period be affected by the first substantive examination report?

Answer 22

The compliance period is the later of 4.5 years from filing/priority or twelve months beginning immediately after the date the first substantive examination report is sent to the applicant.

Question 23

What happens to an application if it is not determined to comply with all requirements by the end of the compliance period?

Answer 23

The application shall be treated as having been refused by the comptroller.

Question 24

Under Rule 108(2), what is the automatic extension period for certain deadlines, and how is it requested?

Answer 24

The comptroller shall extend the period by two months. It is requested by filing Patents Form 52 [108(2)(a)] before the end of the two months immediately after the original deadline expired. This can only be requested once for any given period under this rule paragraph [108(2)(b)].

Question 25

Can the period for declaring priority late under Rule 6(2)(b) be extended under Rule 108?

Answer 25

No, this period is listed in Part 1 of Schedule 4 and cannot be extended under Rule 108 [108(1), 13].

Question 26

Can the period for applying to reinstate a terminated application under Rule 32(1) be extended under Rule 108?

Answer 26

No, this period is listed in Part 1 of Schedule 4 and cannot be extended under Rule 108 [108(1), 14].

Question 27

When can the comptroller extend a period listed in Parts 1 to 3 of Schedule 4 under Rule 107?

Answer 27

Only if the irregularity is attributable, wholly or in part, to a default, omission, or error by the comptroller, an examiner, or the Patent Office, and it appears the irregularity should be rectified.

Question 28

What is the deadline for requesting reinstatement of an application under section 20A?

Answer 28

The request must be made before the end of the relevant period, which is twelve months beginning immediately after the date the application was terminated.

Question 29

What must the applicant demonstrate for the comptroller to reinstate a terminated application under section 20A?

Answer 29

The comptroller must be satisfied that the failure to comply with the deadline was unintentional.

Question 30

What is the effect of reinstating a terminated application on things done during the period it was terminated?

Answer 30

Anything done under or in relation to the application during the termination period shall be treated as valid.

Question 31

What happens if a time limit for doing something expires on an "excluded day" or an "interrupted day"?

Answer 31

The time limit is extended to the next following day not being an excluded day or interrupted day.

Question 32

What is the exception to an application's filing date being re-dated if a missing drawing or part of the description is filed?

Answer 32

Re-dating does not apply if priority is claimed, the missing part was in the priority application, and a request to that effect is made within the prescribed period.

Question 33

Under what conditions can a new (divisional) application be filed under Section 15(9)?

Answer 33

The earlier application must not have been terminated or withdrawn, and the period ending three months before the compliance date of the earlier application must not have expired.

Question 34

What happens during the preliminary examination under Section 15A if the examiner finds formal requirements are not met or requirements under Section 13(2) or 15(10) remain?

Answer 34

The examiner reports the findings, and the comptroller notifies the applicant. The applicant is given an opportunity to make observations and/or amend the application.

Question 35

What is the process if, during substantive examination, the examiner reports that requirements are not complied with?

Answer 35

The comptroller gives the applicant an opportunity within a specified period to make observations on the report and to amend the application. Failure to satisfy the comptroller or amend can lead to refusal.

Question 36

How is the compliance period affected if the first observations report is sent to the applicant late in the standard period?

Answer 36

If the first observations report is sent during the last three months of the standard 4.5-year/12-month period, the compliance period is extended to three months beginning immediately after the date that report is sent.

Question 37

What are some of the steps an applicant must take when requesting reinstatement of an application under Section 20A?

Answer 37

The request must be made on Patents Form 14 before the end of the 12-month relevant period. The applicant must also file evidence in support of the request.

Question 38

If a published application is reinstated, what right does a person who began or prepared in good faith to do an infringing act during the termination period have?

Answer 38

They have the right to continue to do the act or to do the act, but this right does not extend to granting a licence to another person.

Question 39

What is the main deadline for entering the national phase in the UK for a PCT international application?

Answer 39

Generally, 31 months from the priority date. This requires filing NP1 and translation if needed.

Question 40

What are the prescribed periods for requesting search and substantive examination for a PCT national phase application entering the UK?

Answer 40

For search, the later of 12 months from priority or two months from national phase entry. For substantive examination, the later of 33 months from priority or two months from national phase entry.

Question 41

What happens if, during the preliminary examination, the examiner finds a declared priority date is outside the permitted 12 or 14 months?

Answer 41

The comptroller must notify the applicant, and the applicant must provide a corrected date within two months of the notification, or the declaration is disregarded.

Question 42

Can a period specified by the comptroller in connection with an application or patent be extended?

Answer 42

Yes, under Section 117B(2), the comptroller shall extend such a period by two months if the applicant requests it in writing before the end of two months after the period expired. This extension can only be granted once under this specific provision.

Question 43

What periods cannot be extended under Section 117B (extension of comptroller-specified periods)?

Answer 43

Periods specified in relation to proceedings before the comptroller.

Question 44

What is the core difference between discretionary and non-discretionary time extensions by the UK Comptroller?

Answer 44

Non-Discretionary: The Comptroller shall grant the extension if specific conditions are met [110(2), 20(2), 114(1), 107(2), 117(3)]. It's mandatory. Discretionary: The Comptroller may grant the extension if they "think fit" [110(1), 110(3), 111(1), 112(4), 108(1), 108(4)]. It's subject to judgment and conditions [111(2), 112(5), 108(2), 109(2)].

Question 45

Give one example of a non-discretionary extension type and its source rule/section.

Answer 45

A first request on Patents Form 52 for a period listed in Schedule 4 Part 2, filed within two months of expiry, results in a mandatory two-month extension [110(2)]. A request in writing within two months of expiry for a period specified by the comptroller results in a mandatory two-month extension [107(2)]. Failure mainly due to a communication service delay or failure results in a mandatory extension [114(1)].

Question 46

Give one example of a discretionary extension type and its source rule/section.

Answer 46

Extending most periods not in Schedule 4 Parts 1 or 2 [110(1)]. Granting a further extension for a period listed in Schedule 4 Part 2 after the Rule 108(2) extension is used [111(3), 112(6)]. Requires evidence [111(3)(b)]. Granting a further extension for a period previously extended under Section 117B(2) [108(4)(b)]. Extending a period due to an irregularity caused by a Comptroller/Office error [109(3)].

Question 47

Are there any periods that cannot be extended? If so, where are they listed?

Answer 47

Yes, periods listed in Schedule 4 Part 1 cannot be extended [110(1), 112(7), 109(3)]. Examples include deadlines for reinstating terminated/lapsed patents or renewing patents.

Question 48

Which periods have limits on how much they can be extended under discretionary powers (Rule 108(1) or (3))?

Answer 48

Periods listed in Schedule 4 Part 3 may only be extended (or further extended) for a period of two months only under Rule 108(5) [112(5)]. Requests for these limited extensions must be made within two months after the period expired [112(7)].

Question 49

What are the key differences in how time periods listed in Schedule 4 Parts 1, 2, and 3 can be extended?

Answer 49

Schedule 4 Part 1: Periods listed here cannot be extended at all [110(1), 13]. Schedule 4 Part 2: Can receive a mandatory two-month extension under Rule 108(2) if requested correctly on Patents Form 52 before the end of the two months immediately after expiry (only once) [110(2)]. Further extensions are discretionary under Rule 108(3) with evidence [111(3)]. Schedule 4 Part 3: May be extended (or further extended) discretionarily for a period of two months only under Rule 108(5) [112(5)]. Requests for these limited extensions must be made within two months after the period expired [113(7)].