Chapter 1: Patents and Formalities
Section (1.01 - 1.16) last updated: March 2017.
What is a patent? A patent is a monopoly right to the exclusive use of an invention. A UK patent lasts for a maximum period of 20 years dating from when the application for the patent was filed. To keep it in force during this period annual renewal fees have to be paid, starting from the fourth anniversary of the filing date.
What is patentable? For an invention to be patentable it must meet the following criteria as laid down in the Patents Act 1977:
- it must be new
- it must involve an inventive step
- it must be capable of industrial application
- it must not be ‘excluded’
Who is entitled to a patent? When an invention is made it belongs to the inventor unless his rights have been given to somebody else, for example by agreement or through a contract of employment.
Further basic patent information can be found on our website.
Types of application
An application for grant of a patent may be made under one of the following sections of the Patents Act 1977: Section 14 - The most common form of application (Chapter 2) Section 15(9) - A Divisional application (see Chapter 14) Section 81 - Conversion from a European Patent application (Chapter 12) Section 89 - National Phase processing of a PCT application (Chapter 13)
Most applications are submitted by professional agents who act on behalf of the applicant. Patent Attorneys are qualified specialists who although dealing primarily with patent work, often deal with other aspects of Intellectual Property (For example Trademarks, Designs and Copyright) in a similar manner to law firms. They have to undergo a series of post graduate training and examinations which allow them to identify themselves as ‘Chartered Patent Attorneys’. The Register of Patent Attorneys is maintained by the Chartered Institute of Patent Attorneys (CIPA).
There are two types of agents, those who are members of firms specialising in patents and other intellectual property and those who are employed exclusively by one company. The latter are known in the patent profession as “tame agents”. Solicitors may also act in the same capacity as a patent agent.
Some applications are submitted directly by the applicant without the professional assistance of a Chartered Patent Attorney. These applications are designated as ”Private Applicant (PA) cases” and are processed in a slightly different manner. Further information on dealing with PA cases can be found in Chapter 15.
The Formalities Section forms part of the Pre-Grant Administration Structure. Formalities groups are linked to a number of Examining groups.
Each Formalities group comprises a Formalities Manager and a number of Formalities Examiners and Examination Support Officers who work together as a team to carry out the three main Formalities functions -
Formalities examination Production and issue of Certified Office Copies (COC) Administrative support to the linked Examining Groups
Each Formalities group is responsible for the administration of all Pre-Grant patent applications that are the technical subject matter of their linked Examining Group. [For further information on Case Management see Chapter 11.
The Formalities Manager acts as both the line manager responsible for the day-to-day running of the group and as the senior officer in the group responsible for procedural decisions and quality assurance. In addition, they are responsible for the allocation of new applications to the correct examining group. One Formalities Manager within the division will hold the position of Assistant Head of Administration and have a number of additional responsibilities.
The Formalities Examiner is responsible for the majority of Formalities actions as listed in 1.15. The Examination Support Officer is responsible for the provision of administrative support to the examining group.
Sources of reference
The Formalities Examiner uses many different sources of information in carrying out the job, namely:-
- The Patents Act 1977 (as amended by the Patents Act 2004) - The Parliamentary Act which governs United Kingdom patent law for both new applications and existing patents. It is the main piece of legislation under which we operate
- The Patents Rules 2007 - The Rules provide the legislative framework under which the Patents Act is administered
- Manual of Patent Practice (MoPP) - This is the manual of current practice and procedure in the Office for administering the Patents Act 1977. It is not legally binding but provides a guide for action. MoPP is available in electronic format only
- Patent Legal Decisions - These record decisions made on behalf of the Comptroller or by the Patents Court in disputes regarding patents. Decisions are published on the Office or Court website. A table of cases relating to Formalities matters is at Annex 1A - Table of Cases
- Patents Formalities Manual (PFM) - This volume contains the current practice and procedure for Formalities Examination of patent applications. It is available electronically on the IPO website and a paper copy is held in each Formalities unit
- Formalities Guidance Notes (FGN) - These provide a transitory aide memoire to cover major amendments to current procedures between re-drafts of the PFM
- Patents Directorate Notices (PDN) - These provide transitory guidance issued on changes within the internal working practice of the directorate between re-drafts of the MoPP
- COPS Manual (Patents) - reference manual which provides guidance on the use of the COPS computer system. A list of commonly used COPS functions is at Annex 1B - List of COPS functions
- Guide to Name and Address Records - COPS user manual covering best practice when creating, correcting or amending name and address records and ADP numbers
- Register of Patent Attorneys - A register of all the persons currently permitted to practice as Patent Attorneys within the United Kingdom and therefore allowed to identify themselves as “patent attorneys”
- Statutory Instruments - (S.I.s) These are the powers conferred by parliament (usually to a Minister of State) within an Act for making more detailed rules, orders or regulations without the need to pass a new Act of Parliament. S.I.s are issued when changes are needed to the rules
- Directions - The Comptroller has powers under the Act to make directions concerning hours of business, Patent forms and requirements for electronic communications. These allow the office to react quickly to change without the need for further legislation
- PDAX Guidance Notes - These provide instructions on how to use the Patents Document Access eXchange in processing Formalities work.
Duties of the Formalities Group
The three main Formalities responsibilities as described in 1.10 can be sub-divided into the following activities:
- preliminary examination of a new UK Patent application for compliance with the non-technical requirements of the Act and Rules
- preparation and issue of the Formalities Examination Report under s.15A
- preparation and recording of publication footnotes
- preparation of the application for publication under s.16 (‘A’ Pub)
- redacting of personal data from correspondence for display on IPSUM
- handling and recording requests for accelerated publication
- preparation of ‘A’ Print errata
- post-Publication examination of the application for compliance with the non-technical requirements of the Act and Rules
- preparation of applications for publication under s.24 (‘B’ Pub)
- authorisation and preparation of ex gratia refunds on statutory forms
- consideration of extension of time requests under r.108 and reinstatement requests relating to Formalities issues
- automatic extensions of time under r.109
- re-dating of an application under s.15(5) and s.15(6)
- preparation and issue of Decisions of refusal on non-compliance with the requirements of s.15A
- consideration of requests under s.117. (Correction)
- consideration of requests under s.19. (Amendment)
- addition/deletion/substitution of inventors on F7
- addition/deletion/substitution of priority details
- consideration of late claims and late declarations of priority
- preparation and issue of standard and non standard Certificates on behalf of the Comptroller under s.32(2) (COC)
- fine allocation of new applications to their correct classification heading and examining group
- dealing with new or amended claims filed before publication under s.16
- dealing with telephone and written enquiries from Patent Attorneys, private applicants and other members of the public
- dealing with amendments filed after s.16 publication
- dealing with external CAVEAT requests (Form 49)
In addition to the above duties, Formalities are also responsible for referring the following matters to the Patent Examiner:
- requests under s.117 to correct clerical errors in the patent specification
- requests to amend the specification and/or abstract
- requests for refunds under s.17(6) or r.106
- requests for extensions of time to reply to s.18 examination reports which are outside the scope of r.109
- requests for accelerated treatment - search, examination, PCT Fast Track, grant or green channel
- any third party observations under s.21