Unit 2 - GB

Question 1

What are the types of UK patent?

Answer 1

• Direct filing (Non-convention, Convention)
• National phase of PCT application (GB)
• Divisional of existing UK application
• Validating granted EP patent - EP(GB)

Question 2

What are the minimum requirements to obtain a filing date? (GB)

Answer 2

• Indication a patent is sought
• details of the applicant sufficient for the UKIPO to contact them
• description filed or reference to an earlier filed application
• drawings if mentioned in description

Question 3

How long is the priority period for UK applications?

Answer 3

12 months

Question 4

What if 12 month deadline is missed?

Answer 4

• Priority can be claimed 14 months from earlier application

- Must show failure to file within 12 month period was unintentional

Question 5

What deadlines are triggered from Notice of Publication on a UK application?

Answer 5

6 months from publication to;

• File request for examination (PF10)
• Pay examination fee
• Pay excess pages fees for description pages over 35 (Payable after 6 April 2018) - if required

Question 6

What is the deadline for filing national phase in UK?

Answer 6

31 months from earliest priority date

Question 7

What happens if minimum not filed to secure filing date for UK application?

Answer 7

Once requirements are satisfied, application will be allocated later filing date

Question 8

What is the deadline for ‘filing translation of description’ if not filed on filling? (UK application)

Answer 8

2 months from UKIPO communication

Question 9

What is the deadline for filing ‘copy of earlier application’ if not filed on filing? (UK application)

Answer 9

• 12 months from priority date

Or

• 2 months from filing date

Whichever is later

Question 10

What is the deadline for filing claims/abstract if not filed on filing? (UK application)

Answer 10

• 12 months from priority date

Or

• 2 months from filing date

Whichever is later

(Extendible by 2 months using PF52 & fee)

Question 11

What is the deadline for filing formal drawings if not filed on filing? (UK application)

Answer 11

Within 15 months of earliest priority date or filing date (if no priority claimed)

(Extendible by 2 months - written request pateot@ipo.gov.uk)

Question 12

What is the deadline for paying application fee if not paid on filing? (UK application)

Answer 12

• 12 months from priority date

Or

• 2 months from filing date

Whichever is later

(Patent Form AF1 to pay separate)
(Extendible by 2 months - PF52, fee & surcharge)

Question 13

What is the deadline for filing a priority claim to existing UK application?

Answer 13

• Within 16 months of the priority date (Non-extendible)

- But later application must have been filed within 12 months of the priority application

Question 14

What is the deadline for filing certified copy of priority application on a UK application?

Answer 14

• Within 16 months of the priority date

Extendible by 2 months - PF52 & fee

Question 15

What is the deadline for filing inventorship details (PF7) if needed? (UK application)

Answer 15

• Within 16 months of the priority date

Extendible by 2 months - PF52 & fee

Question 16

Request for Search (Form 9A) - UK application

Answer 16

• 12 months from filing date (no priority claimed)
• Later of 12 months from priority date or 2 months from filing date (priority claimed)

(Extendible by 2 months - PF52 & fee)

Fees

• Search fee
• Excess claims fees over 25 (Search Request after 6 April 2018)

Question 17

If Applicant wants other inventions searched, what actions are needed and by when? (UK application)

Answer 17

• Request further search (PF9A)
• Pay additional search fees
• Identify additional claims you want searched

Deadline - 3 months before compliance date

Question 18

When is application published on a UK application?

Answer 18

18 months from filing date or priority date

Question 19

Section 18(4) Report (UK application)

Answer 19

Deadline

2 months for filing a divisional application or make amendments to description/claims

Question 20

Section 18(3) Report (UK application)

Answer 20

Deadline

• Usually 4 months to respond to objections, plus 2 months for any subsequent reports

(Extendible by 2 months - request in writing (free of charge)

Question 21

What is the compliance date? (GB)

Answer 21

Deadline by which acceptance must be reached

• 4.5 years from filing date/priority date

Or

• 12 months from date of first Section 18(3) Examination Report

Whichever is later

(Extendible by 2 months - PF52 & fee)

Question 22

When are divisional applications due on UK application?

Answer 22

• 3 months before compliance date on patent application

Or

• If first Examination Report is Section 18(4) Report, deadline is 2 months from date of report
• 3 months before compliance date to file additional searches for divisional application

Question 23

What are the deadlines on a divisional application? (UK application)

Answer 23

• Statement of Inventorship (PF7) to be filed on filing (if applicable)
• Request for Search & fee due (Non-extendible)
• 2 months from filing

Or

• Within period allowed in parent application

Whichever is later

• Request for Examination & fee due (Non-extendible)
• 2 months from filing

Or

• 2 years from earliest priority/filing date

Whichever is later

Question 24

When are grant fees due on UK application?

Answer 24

• 2 months from date of Notification of Intention to Grant

Question 25

What happens if the application is not in order by the acceptance date?

Answer 25

The application is refused

Question 26

When is the first renewal fee due assuming no late grant? (GB application)

Answer 26

On the last day of the month containing the 4th anniversary of the filing date

Question 27

When is the first renewal fee due on a late grant application? (GB)

Answer 27

On the last day of the calendar month, 3 months from date of grant

Question 28

When can the renewal fees validly be paid? (GB)

Answer 28

- Can be paid in the three months before the end of the month in which the renewal date falls - Can be paid late – up to six months after (first overdue month is free, otherwise a fee is payable for each additional month)

Question 29

What could delay publication on GB patent application?

Answer 29

- Late preparation of Search Report by UKIPO | - Late filing of parts of specification such as formal drawings

Question 30

When are renewal fees due on GB application?

Answer 30

End of month in which filing anniversary falls and paid annually from anniversary of filing date