Formalities Manual (online version)

Chapter 4: Description, claims and abstract

Section (4.01 - 4.94) last updated: March 2017.

Introduction

4.01

The description, claims and abstract comprise the statutory part of the patent specification (drawings form an optional part). It is the responsibility of the Formalities Examiner to ensure that the description, claims and abstract meet the formal requirements as defined by Rule14 and Schedule 2 parts 1, 2 and 4 of the Patent Rules 2007(Annex 4D - Rule 14 and Schedule 2).

Agent Cases - Non PCT Applications

4.02

On receipt of the Application Fee the Formalities Examiner should undertake the Preliminary Examination. The Application Fee may be paid at the same time as the application is filed, if this is the case the fee will be placed on the Form1. Alternatively the fee may be filed with the request for search and the fee will then be placed on the (https://www.gov.uk/government/publications/request-for-search). The Formalities Examiner should check both Form 1 and Form 9A and identify if the Application Fee has been paid on these forms.

4.03

The total fee will be present on all the forms on e-filed or web-filed applications; the fee details for these cases will be outlined on the fee sheet. The fee may also be filed independently of these forms. If this is the case the fee may be found on form AF1 either one submitted by the applicant or one made up in the office. As part of the Preliminary Examination the description and claims should be examined in order to establish that the requirements of r.14 and Sch.2 have been complied with. If one or more of the pages is found not to comply the applicant should be informed via the Preliminary Examination Report.

Agent cases - PCT Applications

4.04

Where the specification is the English language copy supplied by WIPO the pages will already comply and no objection should be raised. However, where the specification is an English language translation of the WIPO foreign language document, r.14 and sch.2 are to be applied in the same way as for non - PCT applications. See Chapter 13 for full details.

Private Applicant cases

4.05

If at the Preliminary Examination of a Private Applicant case it is established that the specification fails to comply with r.14 and Sch.2, the procedure as noted at 4.03 should be carried out. If no response is received to the request for replacement pages and that is the only outstanding formal requirement, the case should be referred to the Formalities Manager for approval of retyping action.

4.06

Upon approval of the retyping action the Formalities Examiner should retype the pages using Word and import them into the dossier. Footnote 15 should be added to COPS using REC FOO. The applicant should be advised in writing using the letter entitled ‘Description re-type’ at Annex 4A - Description re-typed. A copy of the typed pages should be enclosed along with confirmation that the application may now proceed to “A” publication. Before being sent for publication, the applicant should be given one month (extendable under r. 109) to set out, in writing, any objection to the above action. A suitable diary should be set.

General points

4.07

The description should be headed with the title of the invention which should be short (r12(6)) and in agreement with the title given on Form1. It is acceptable for the title to appear on a page of its own provided that the page is numbered 1. Where; the title is missing from the description, a discrepancy is discovered between the title on the description and that given on the Form 1 or a written request is made under s117 to correct the title, the Patent Examiner should be informed via a minute.

4.08

The claims should be clearly identified. There is no requirement in the legislation as to the manner in which the claims shall be headed, providing the heading clearly identifies the commencement of the claims.

4.09

The description claims and abstract must be typewritten or printed on white, matt A4 size paper. Manuscript documents are acceptable as long as they are printed and clearly legible. Handwritten documents are acceptable if written in capital letters. Pages should be free from tears, folds and other damage and be suitable for reproduction.

4.10

Minute the examiner if any part of original document is illegible to see if replacement pages would class as added matter.

Replacement pages

4.11

When replacement pages are filed in response to an official objection the Formalities Examiner must check that the replacement pages are word for word copies of the pages as originally filed and that they comply with the formal requirements. If acceptable, the assembler should be used to create a Formal copy which should be suitably annotated. The Formalities Examiner should ensure that Footnote 4 is added to COPS.

4.12

If the Formalities Examiner is unable to decide whether a replacement page is identical to the page as originally filed (for example if text is illegible), the matter should be referred to the Patent Examiner. The Patent Examiner should then instruct Formalities regarding the incorporation of acceptable pages and the addition of any relevant Footnote.

4.13

Replacement pages may be filed outside the period specified in the Preliminary Examination Report as an automatic extension of two months to this period is available under r.109. Requests to extend the specified period under r.109 should be made in writing or e-mailed to PATEOT@ipo.gov.uk, before the end of the period as extended. If replacement pages are filed outside this extended period a further extension of time may be allowed at the Comptroller’s discretion.

Computer programs and other bulky material

4.14

Where pages of the specification contain computer programs or other lengthy material, these pages will not normally be printed when the application is ‘A’ published. A report to the Patent Examiner should be made as follows:

“Pages ………….. of the specification appear to be a computer program and in accordance with paragraph 16.27 of MoPP should not be printed unless you decide otherwise”.

4.15

If the Patent Examiner does not require the pages to be printed he/she will ask the Formalities Examiner to arrange for the appropriate Footnote to be added to the front page of the ‘A’ document. However it is still the responsibility of the Formalities Examiner to ensure that the pages in question meet the formal requirements.

4.16

If the Patent Examiner decides that the program is to be printed and the pages are not formally acceptable he/she will arrange for any objection to be communicated to the applicant, usually when the Search Report is issued. The new pages when received will be treated as in 4.10.

4.17

The Patent Examiner may decide that a computer program is not required on the ‘A’ print but is necessary in the ‘B’ print. In these circumstances, if the pages do not meet the formal requirements, he/she will arrange for the objection to be issued with the substantive examination report.

Sequence listings

4.18

A sequence listing means, in respect of a biotechnology invention, the part of the description of the application which gives a detailed disclosure of the nucleotide and/or amino acid sequences referred to in the application.

4.19

The Patent Rules 2007 introduced specific provisions for the filing of sequence listings which are set out in Rule 13 and Schedule 2 paragraphs 5 and 9.

  • any application which discloses a sequence must include a sequence listing

  • if a sequence listing is not provided at filing the comptroller may specify a period within which it must be filed. If it is not filed the application may be refused

  • a sequence listing provided after filing must be accompanied by a declaration that it does not contain matter beyond that disclosed in the specification

  • a sequence listing shall, if reasonably possible, be delivered in electronic form even where the patent application is not filed electronically.

  • a sequence listing may be set out either in the description or at the end of the application. If it is at the end of the application it must be numbered consecutively in a separate series. The 1.5 minimum line spacing requirement does not apply to a sequence listing.

4.20

Applications containing sequence listings will generally be allocated to a heading covering:

  • proteins, enzymes and nucleic acid
  • chemical analysis testing, specific complementary binding
  • microbiology
  • pharmaceutical preparations

4.21

The majority of these applications will be dealt with in the examining group responsible for biotechnology. These applications will typically have claims or references in the specification to nucleic acid or peptide sequences of SEQ ID NO: 1, 2 and onwards which would suggest that there should be sequences present in the application.

4.22

The sequences if present are typically presented as separate pages, with the sequences spelt out; for example Nucleic acid sequence: atgcatcctt atgggttcaa, Protein/peptide sequence : MAVASLILGNM. Alternatively there may be tables listing the sequences by their publicly available accession numbers, e.g. a database (such as GenBank (RTM)) accession number ACC 1234. If there is any doubt the heading examiner will advise.

4.23

If an application is identified as one which should contain a sequence listing then the Formalities Examiner should confirm at the Preliminary Examination that one has been filed and, if so, that it meets the requirements. If it does not then any objection should be made as part of the Preliminary Examination report. Any sequence listings filed separately on Discs are then stored by the relevant Formalities group.

4.24

If no sequence listing is present the Formalities Examiner should notify the applicant using the paragraph set out below specifying a period of 2 months from the notification for the sequence listing and a declaration to be filed, and set a diary entry.

4.25

If no sequence listing has been filed and the 2 month period has expired the case should be referred to the heading examiner for advice.

4.26

The following paragraph is suggested for use in notifying an applicant who has not provided a sequence listing at filing.

“Your application discloses a - {nucleotide/amino acid/protein/peptide} sequence - but you have not provided a sequence listing as required under Rule 13 of the Patent Rules 2007. Please provide a sequence listing, in electronic form if possible by {2 months from date of letter}. You should also provide a declaration that the sequence listing does not contain any matter beyond that which is disclosed in your application. If you do not provide a sequence listing within the time specified above your application may be refused”.

Claims and abstract

4.27

One or more claims and an abstract should be filed within 12 months of the earliest date of the application or within 2 months of the date of filing of the application, whichever is longer (s.15(10) and r.22(1)). The claims and abstract do not have to be filed together. An application must have one or more claims before the Patent Examiner can proceed with the search.

4.28

Where the Application Fee has been paid but no claims have been filed the Preliminary Examination Report should request claims be filed within the prescribed period.

If a request for search (Form 9A) has been made but no claims have been filed and no Application Fee paid, the Agent/Private applicant should be contacted by letter and advised of the discrepancy. The application should then be diarised for a suitable period to await filing of the claims.

4.29

Where claims have been filed after the initial filing date of the application but within the prescribed period, assuming the appropriate fees have been paid, a message should be sent to initiate the search or CSE. The Formalities Examiner should ensure that Footnote 3 of the printer’s instructions is recorded on COPS.

4.30

To extend the prescribed period for filing the claims and abstract an automatic 2 month extension period is allowed under the provisions of r.108(2) (see 10.24 -25). A further extension to the prescribed period may be available under Rule 108(3) if the period has previously been extended under rule 108(2), but not otherwise (see 10.31-44). The applicant/agent may apply for re-instatement (see 10.45 -61) if an extension of time is no longer available.

4.31

If amended and/or new claims are filed at any time before the date of completion of preparations for ‘A’ publication they will be included in the ‘A’ specification. If a CSE report has been previously issued then pre pub amendment message should be sent to the Patent Examiner.

If the new claims comply with r.14 and Sch 2 the Formalities Examiner should create two new sets of claims. One should have the doc code of ACLMS and should be headed “Amendments to the claims have been filed as follows” and re-numbered to follow from the original set of claims. This should also be annotated “for a-pub only”. The ESR, if on file, will also need renumbering.

The other set should be coded as CLMS and annotated as “Working Copy after a-pub” and the action log updated.

4.32

If the amended and/or new claims are filed after A-Publication as part of a full response to a Combined Search and Examination report. The case should then be forwarded to the Patent Examiner as an amendment in order that he may consider any suggested changes.

4.33

In the event that the amended and/or new pages of claims do not comply with r.14 and Sch 2 the applicant/agent should be informed. Publication should not be delayed to await any response.

4.34

If acceptable pages have been received after preparations for publication are complete the amended and/or new claims will not be included in the ‘A’ specification but will be made open to public inspection.

4.35

Where only the abstract is absent this does not prevent the application from proceeding to search if both the request for search (Form 9A) has been filed and the Application Fee has been paid. Where the Application Fee has been paid and the search has been requested, the lack of an abstract should be reported in the Preliminary Examination Report.

4.36

Where the search has been requested but no Application Fee has been paid the application cannot proceed to search and the agent should be contacted by telephone and advised of the deficiency.

4.37

Where no claims and/or an abstract have been filed within the prescribed period and the automatic 2 month extension allowed by r108(2) has expired, a WR4 letter should be drafted. The application should be referred to the Formalities Manager for termination of the case (see Chapter 11.29-33).

Failure to comply with formal requirement(s)

4.38

Compliance of the description, claims and abstract with r.14 and Sch 2 is a formal requirement and failure to comply will result in refusal of the application by the Comptroller under s.15A. If an objection has not been met and the period for response (as extendable by two months under r.109) has expired an FL48 letter should be issued to the applicant/agent and the case diarised for 2 weeks after the date set for response.

4.39

If no response is received to the above requests the application should be refused and a decision should be prepared by the Formalities Examiner. The decision should then be passed to the (Assistant) Head of Administration for approval and signature. Two copies of the decision should be issued with the covering letter and the case should be diarised for an appeal. If no appeal is received the case should be terminated by the Formalities Manager as of the effective date of the decision.

Formal requirements – electronically filed applications

4.40

Applications and sequence listings which are filed electronically are exempt from some of the formal and other requirements for drawings and documents. This allows unrestricted transmission of applications by electronic means.

4.41

Directions issued under section 124A govern how the Office will deal with applications after they have been delivered electronically. The latest directions are at: https://www.gov.uk/government/publications/filing-patent-applications-by-electronic-means–2

4.42

Paragraphs 16 and 17 of the Directions set out the formal requirements for description, claims and abstract in an electronically delivered application as below:

Where an electronic application includes a description of the invention, rule 12(4) of the Rules shall apply to the extent that the description shall be preceded by the title of the invention. The following provisions of the Rules shall apply to electronic applications and shall be formal requirements: Schedule 2 Part 1 paragraph 3, Schedule 2 Part 2 paragraphs 4-7, 9 and 10.

4.43

Once the application has been filed all the formal requirements will apply except those which relate specifically to paper filed applications (paragraphs 1, 2 and 8.)

Part 4 of Schedule 2 applies to all applications.

Reference to earlier application/later filed description

4.44

Under s.15(1)(c) the applicant is not obliged to submit a description at the time of filing in order to secure a filing date; instead he may supply a reference to a previous application, although this must be substantiated (by filing a copy of the application referred to and a description) in order for the filing date to stand.

As such cases cannot be security cleared on the basis of their description they will be identified, actioned and retained in Security Section until sufficient documentation is on file to allow security clearance to take place. If an Application Fee has been paid Security Section will perform the preliminary examination.

4.45

The reference to a previous application must include i) the filing date of the earlier application (r.17(1)(a)) ii) the application number (r.17(1)(b)) iii) the country where it was filed (r.17(1)(c))

4.46

If the applicant has made correct use of this provision the Formalities Examiner should check that all the above information has been provided in part 9 of Form 1. If any of the information is missing or unclear the case should be referred to the Head of Administration for advice on how to proceed.

4.47

If it is clear that the applicant has misunderstood the provision and/or has provided something other than a bona fide reference to an earlier application then the procedure in 15.11-12 should be followed to make the application a ‘no case’. If there is any doubt as to whether the application can continue the case should be referred to the Formalities Manager.

Copy of earlier application

4.48

In all cases where a reference to an earlier application has been correctly made, there is a requirement for the applicant to file a copy of the application he referred to within 4 months of the filing date. This must be either a certified copy or a copy otherwise verified to satisfy the Office if a certified copy cannot be obtained. If the copy is in a language other than English or Welsh then a translation (or declaration) must also be filed. (r.17(2)(b))

However, if the application referred to is an earlier GB application or an application which is otherwise available (via the internet) to the Comptroller, then the requirement to file a copy will be treated as met. (r17(3)).

4.49

If the Application Fee has been paid the Formalities Examiner should request the certified or verified copy of the referenced application (and translation or declaration if required) in the Preliminary Examination Report. If the Application Fee has not been paid and a copy of the referenced application is required then the letter at Annex 4B - Reference to earlier application (further details requested) should be issued. A diary date should be set to monitor the filing of the requested documents since without these the application will be treated as a ‘no case’.

4.50

Where the referenced application is also the priority application only one certified copy of the document is required, this will satisfy both the priority and the earlier referenced application requirements.

4.51

If the applicant files the certified copy outside the prescribed period, or enquires about doing so, they should be advised of the r.108 procedure if they are within the prescribed period plus two months. No automatic extension of time is available but a discretionary extension to the prescribed period (by request – no Form 52 is required) may be available under r.108(1) although this will be restricted by r108(5) and (7) (see 10.31 -44). Re-instatement will apply if an extension of time is no longer available.

4.52

Failure to file the certified copy (and translation or declaration if required) within the prescribed period will lead to the application being treated as withdrawn.

Description

4.53

In every case where a reference to an earlier application has been made a description must be filed within 12 months of the filing date

4.54

If the Application Fee has been paid the Formalities Examiner should request the description in the Preliminary Examination Report. A diary date should be set to monitor the filing of the description since without it the application will be treated as withdrawn

4.55

The prescribed period for filing the description is either:

12 months from the filing date, where there is no claim to priority or where there is a priority claim, 12 months from the priority date or 2 months from the filing date, whichever is the later.

4.56

When the description is filed the diary entry should be cancelled. The following free text footnote should be added on COPS:

The application was filed with a reference to an earlier application under Section 15(1)(c)(ii) of the Patents Act 1977; the description was filed later than the filing date but within the period prescribed by Rule 22(1) of the Patents Rules 2007.

4.57

The description when filed should comprise only the description of the invention and any drawings referred to in that description. The copy of the description should not include any claims or an abstract. The requirements for filing these on any application are as outlined in 4.27-4.37 above. Except in the clearest of cases (for example when the description is obviously a complete photocopy of part or all of the certified copy) the document should be referred to the Patent Examiner to make the comparison.

4.58

Failure to file the description will lead to the withdrawal of the application and the application should be forwarded to the Formalities Manager who will withdraw the application. An automatic extension under rule 108(2) is available for filing the description therefore withdrawal should not be effected until the 2 month extension period has passed.

The “As Filed” state of the application

4.59

In some circumstances it may be difficult to establish which documents are to form the state of the application in accordance with s.130(4) when an application is filed. Apart from the reference to an earlier application outlined in 4.44 – 4.58 above the following situations may also give rise to uncertainty:

a) Documents forming the application may be filed at different times on the same day.

b) Amendments may be filed with the application on the application’s date of filing.

c) Two specifications are filed with the application on the application’s date of filing.

d) Two different specifications are filed with the application on the application’s date of filing.

e) The application may have been re-dated after later documents have been filed (when missing drawings are supplied).

Cases which do not fall within any of these categories should be referred to the Assistant Head of Administration via the Formalities Manager for consideration.

4.60

All the documents filed on the date accorded to the application (filing date) will form the state of the application “as filed”.

4.61

Any amendments or modifications filed on the filing date of the application should only be incorporated into the specification if it is clear that it is the applicant’s intention that the amendments are intended to form part of the application ‘as filed’.

4.62

Where there is any doubt over the amendments the case should be clarified with the Patent Examiner. An appropriate minute should be placed on file.

4.63

Where two versions of the same document are filed which are obviously different and where the applicant’s instructions are unclear as to which documents should form the “as filed” specification, the Agent/Applicant should be informed by letter/email giving a period of one month in which to inform the Office which document(s) are to form the application “as filed” and asked to comfirm in writing. After the applicant has informed the Office of his intentions the procedure as set out in 4.47 above should be followed.

Documents filed in a language other than English or Welsh

4.64

S.15(2) allows for the description to be filed in any language for the purpose of securing a date of filing.

On receipt of an application filed in a language other than English or Welsh, Index and Scanning Section should process it in the normal manner and forward it to Security Section.

4.65

The applicant has 2 months from notification in which to supply an English or Welsh translation (r12(8) and (9)). Security Section should promptly issue an appropriate letter advising the applicant of this and set a suitable diary. If the translation is received within the 2 month period the translation will form the description and the application will be processed in the normal manner.

4.66

If, on the other hand, a reply is not received within the two months specified in the letter Security Section should issue a further letter. If no reply is received within the two weeks specified in that second letter, the application should be refused. If the applicant replies to the second letter asking to be heard, the matter should be referred to the Hearing Clerk in Litigation Section who will appoint a hearing.

4.67

Any enquiries concerning the above procedures should be directed to Security Section.

Missing pages of description

Filed by the applicant

4.68

Where any page has been omitted from the description the agent/applicant can elect to file these missing pages at any time between the filing date and the date of Preliminary Examination (r.18(1)). The application will then be automatically re-dated to the date of filing the missing pages unless the provisions set out below apply.

a) If the applicant is to avoid re-dating of the application he must withdraw the missing page(s) in writing. If the applicant asks to withdraw the missing page(s) under s.15(6)(b) it will not be included in the printed ‘A’ document; however in the absence of a direction under r.53 it will become open for public inspection following s.16 publication.

b) Alternatively, he must request that re-dating does not take place because the provisions of s.15(7)(b) apply.

4.69

The provisions of s.15(7)(b) will only apply when there is a priority claim and the applicant can show that the missing pages were included in the priority document. It is the applicant’s responsibility to provide enough information to determine where in the priority document the missing pages appear.

4.70

Every missing part must be included in the priority document if the earlier filing date is to be retained. If there is any doubt as to whether subject matter is being added then the Patent Examiner should be consulted.

4.71

Unless a copy of the document is already held in the office a certified copy of the priority document containing the missing parts must be filed within 16 months of the priority date or within 4 months of the request to retain the original filing date if that is earlier.

4.72

When missing pages are filed by applicant/agent of his own accord the letter at Annex 4C - Letter when missing pages file by applicant (PLFB) should be issued explaining the options if automatic re-dating is not to take place and specifying a time for response.

4.73

If the applicant files missing pages and requests that the application is not re-dated the Formalities Examiner should refer the case to the Formalities Manager to determine if all the conditions set out above have been satisfied. If there is any doubt as to whether all the missing parts are contained in the earlier application the case should be referred to the Patent Examiner for advice.

Notified at preliminary examination

4.74

During the Preliminary Examination the Formalities Examiner must ensure that there are no missing pages of description. If it is discovered that a page or pages are missing the Formalities Examiner should carry out one of the following actions in accordance with s.15A(4) and 15A(9)(b)

a) where the application makes no claim to priority issue the appropriate paragraph inviting the applicant to file the missing pages. The standard paragraph gives the applicant 2 months in which he can file the missing page(s) and have the application re-dated to the date they are filed. If he does not file them then the application will proceed in the ‘as filed’ state.

or

b) where the application claims priority from an earlier application the missing pages may be contained in this priority application and s.15(7)(b) may apply (see 4.69-71). This possibility should be made available to the applicant by including the appropriate paragraph in the Preliminary Examination report.

4.75

In either case the Formalities Examiner should complete the Preliminary Examination. The case should be diarised for one week after the two month period and a minute included for the Examiner advising that this issue is still outstanding and the application may be re-dated. A fresh preliminary examination report should be issued.

4.76

Where an application contains a claim to priority under s.5(2) the Formalities Examiner should consider whether the possibility of re-dating would render the priority claim invalid. If this is the case, the following paragraph should be inserted into the standard paragraph of the Preliminary Examination report:

“It should be noted that the application claims the earlier date of {DATE} under Section 5(2) of the Patents Act 1977. Therefore, the filing of the missing page(s) and the consequent re-dating of the application would render the claim to priority invalid.”

4.77

If, in response to the Preliminary Examination Report, the applicant files the omitted page(s) and requests that the application is NOT re-dated the Formalities Examiner should refer the case to the Formalities Manager to determine if all the conditions set out in 4.59 – 61 above have been satisfied. If there is any doubt as to whether all the missing parts are contained in the earlier application the case should be referred to the Patent Examiner for advice. If the provisions of s15(7)(b) outlined previously in 4.59- 61 do not apply the application must be re-dated.

Re-dating

4.78

In order to re-date an application the Formalities Examiner should carry out the following actions:

a) place a minute on the dossier indicating the date to which the application is to be re-dated. Where the application contains a claim to priority that will be rendered invalid by the re-dating action, the minute should also request the cancellation of the priority details.

b) send a message to the Formalities Manager.

4.79

The Formalities Manager will carry out the following actions:

a) approve the re-dating, enhance the Form 1 and, where appropriate, delete the declared priority date.

b) create a message to Document Reception for issue of a new filing receipt, Index and Scanning to re-date all documents on file to the date of filing of the omitted pages and, if appropriate, place a notice in the Patents Journal.

4.80

When the action is completed the Formalities Examiner should carry out the following actions:

a) check the page(s) to ensure that they meet the requirements of r.14 and Sch 2

b) advise the applicant in writing that the application has been re-dated and, where appropriate, that the claim to priority has been lost;

c) prepare a minute on the dossier advising the Examiner that the application has been re-dated and, where appropriate, that the claim to priority has been lost.

4.81

If the applicant does not respond or when replying elects to have references to the missing pages withdrawn under s.15(6)(b), the Formalities Examiner should carry out the following actions:

a) using the first non-standard text on the printers instruction and entering the relevant page number(s), record the information on COPS.

b) prepare a minute advising the Patent Examiner that the references to the missing page(s) are to be treated as withdrawn and that the printer’s notice has been completed.

c) send a message to the relevant examining group.

Correction of errors

4.82

If the Applicant/Agent has made an error in any of the pages of description, claims or abstract (including omitting a page) then they may request that this be treated as a clerical error under s.117(1). A written request identifying the proposed correction will be required to effect the correction. Where the Patent Examiner is not prepared to allow the correction as a clerical error he/she will inform the applicant/agent.

4.83

If a request to correct the description claims or abstract is received, the case should be referred to the Patent Examiner for consideration. The Examiner will advise Formalities regarding the allowability or otherwise. If substitute pages are required, provided the formal requirements are complied with, they should be inserted in the specification after the correction has been allowed using the assembler. It should be noted that any subsequent COC must be issued with the appropriate certificate.

4.84

The Formalities Examiner should enter footnote 6 on COPS. A letter informing the applicant of the allowance should be issued. If the request is not allowed, the description, claims and abstract should remain as filed. Where the unallowable correction concerns a late filed page, any late filed page will have to be treated as an amendment and will be dealt with by the Patent Examiner at the appropriate time.

Request for an annex to be printed under S.16

4.85

Any case which requires that a specification or any associated document filed with the application be printed at the “A” print stage as an annex to the description, must be referred to the search examiner with the following minute:

Please see Agent’s letter dated ……………. for action in accordance with paragraph 16.27 of MoPP.

4.86

Any subject matter not to be included in the “A” specification will be removed by the Patent Examiner from the copy of the specification to be printed and he/she will provide a ‘freetext’ footnote to be recorded on COPS.

Voluntary amendment of the description (Pre-pub amendments)

4.87

Where an applicant submits pages by way of amendment to the description before the preparations for publication complete (PPC) date and no Form 10 is on file they do not need to be referred to the Patent Examiner for consideration. Ensure to mark an amended description as working copy after A-publication. Where a F10 is on file please see 4.90 – 4.92.

4.88

Where amendments are filed before issue of the search report the Formalities Examiner must not incorporate these pages into the description until after publication but should confirm that they meet formal requirements.

4.89

When the request for substantive examination is filed, whether for an accelerated examination before publication or at the appropriate time after publication, the new pages should be incorporated into the description and annotated ‘WC after pub’. The checklist should be updated as a reminder to Formalities that there are amended pages on file.

Replacement pages at substantive examination

4.90

Where replacement pages are filed after publication for consideration at substantive examination, providing they meet the formal requirements, they should be incorporated into the specification using the assembler function. The amended description and/or claims should be annotated “Working Copy”. The previous claims should be marked “cancelled”.

4.91

Where replacement pages fail to meet the formal requirements, the Patent Examiner should be advised by an appropriate minute (see 9.11).

4.92

The Patent Examiner may defer issuing the request to file replacement pages which meet the formal requirements when he issues his report, (to enable further amendments to be made before replacement pages are requested), it will then be his responsibility to include the request for compliance with formal requirements. If no report is to be issued by the Patent Examiner, the matter will be referred back to the Formalities Examiner to pursue.

Amendment after the application is in order for grant

4.93

A written request to amend the pages of the application may be filed after an application has been placed in order for grant and may be allowed with the Comptroller’s consent. The request for amendment must be received before the issue of the “B” letter. If the case has entered the publication cycle the matter should be referred to the Publication Liaison Officer without delay. The request will then need to be referred to the Patent Examiner for his/her consideration (MoPP 19.20-22). If the request is allowed and new pages are necessary the Formalities Examiner will incorporate the new pages.

4.94

If a request for amendment is received after the issue of the ‘B’ letter the matter should be referred to the Publication Liaison Officer without delay. An investigation should be made into whether the issue of the ‘B’ letter was correct. If the ‘B’ letter has been correctly issued the applicant should then be informed that it is too late to make the amendment before grant but that the request will be considered after grant, (the date of publication in the Patents and Designs Journal). Any request to amend the application after grant will be the responsibility of Litigation Section.