Manual of Patent Practice

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Section 15: Date of filing application

Sections (15.01 - 15.58) last updated: October 2016.

15.01

This section states the conditions which are necessary and sufficient for an application to be accorded a filing date, sets out the circumstances in which an application may be re-dated to a later date, makes provision for divisional applications and specifies further conditions which must be fulfilled before an application can proceed. Time limits and other provisions relating to these matters are prescribed in rr.18-22.

15.01.1

Section 15 was amended by the Regulatory Reform (Patents) Order 2004 (S.I. 2004 No. 3204) to incorporate the principles of Articles 5 and 6 of the PLT. The amended section applies to applications initiated on or after 1 January 2005 by the filing of documents which comply with the requirements of s.15(1). The relevant rules were amended with effect from this date by the Patents (Amendment) Rules 2004 (S.I. 2004 No. 3205). For applications initiated by documents that met the relevant requirements of the former section 15(1) on or before 31 December 2004, unamended sections 14(1) 15, 17 and 18 of the Act and the Rules continue to apply. The Patents Rules 2007 (SI 2007 No. 3291) have replaced the Patents Rules 1995 (as amended) with effect from 17 December 2007.

 
Section 15(1)
Subject to the following provisions of this Act, the date of filing an application for a patent shall be taken to be the earliest date on which documents filed at the Patent Office to initiate the application satisfy the following conditions-
(a) the documents indicate that a patent is sought;
(b) the documents identify the person applying for a patent or contain information sufficient to enable that person to be contacted by the Patent Office; and
(c) the documents contain either (i) something which is or appears to be a description of the invention for which a patent is sought; or (ii) a reference, complying with the relevant requirements of rules, to an earlier relevant application made by the applicant or a predecessor in title of his.
 
Section 15(2)
It is immaterial for the purposes of subsection (1)(c)(i) above-
(a) whether the thing is in, or is accompanied by a translation into, a language accepted by the Patent Office in accordance with rules;
(b) whether the thing otherwise complies with the other provisions of this Act and with any relevant rules.

15.02

r.12(1), r.25(1)(a) is also relevant.

Normally the indication that a patent is sought will be given by the completion of Patents Form 1. This is designated a formal requirement, but it is not necessary that it be explicit in order for a date of filing to be accorded. If the documents filed contain an implicit indication, however informal, which makes it reasonably clear that an attempt is being made to file an application for a patent then s.15(1)(a) can be regarded as having been complied with. The indication must, however, be in English or Welsh (at least to the extent that it is apparent to a literate person acquainted only with the English and/or Welsh language that a patent is sought).

15.03

The applicant is sufficiently identified if the name and address given are adequate to meet the customary requirements of postal delivery. The address may be anywhere in the world. Other information (such as a phone number) instead of an address may be sufficient identification to grant a filing date see 15.03.1. Where there is more than one applicant each must be adequately identified.

15.03.1

r.12(2), r.12(3) is also relevant.

The applicant’s name and address should normally be given at the time of filing,but failing that a date of filing can be accorded when the application contains sufficient information to enable the applicant to be contacted. Where an application which does not include both the applicant’s name and address is accorded a date of filing, the applicant must be notified of the failure, and the comptroller may refuse the application if the applicant does not file the missing information within two months of issue of the notification. The name and address (or other means of contacting the applicant) must be in English or Welsh to the extent that it is useable by a literate person acquainted only with the English and/or Welsh language.

[ Where Parts 2 and 4 of Form 1 do not, between them contain enough information to enable the applicant to be contacted, contact information in Part 12 may be good enough, but where there is doubt the advice of Legal Section should be sought.]

15.04

s.7(1) is also relevant.

If the application is made in the name of a firm or other organisation which is not a corporate body this will not prevent it being accorded a filing date, provided the organisation is adequately identified. The formalities examiner should however require that one or more persons (that is, individuals or corporate bodies) be named at part 2 of Form 1.

15.05

Provided a document contains at least a small amount of technical information it will be regarded as complying with s.15(1)(c), and failure to comply with, for example, s.14(3) or r.14 will not prevent a filing date being accorded. If the description fails to comply with any formal or substantive requirement of the Act or Rules, objection will be raised sooner or later and the applicant given an opportunity to rectify the matter. It is therefore in the interest of the applicant to ensure that, at the time of filing, the description is not flawed in such a way that rectification would not be possible. For example, no amendment is allowed which would result in the description disclosing matter not either present at or referred to on the filing date.

[ In the rare event that although a filing date has been accorded, it transpires that what has been filed cannot conceivably be called a description, the filing date should be cancelled. ]

15.06

There is no requirement to pay a filing fee as a prerequisite to an application being accorded a date of filing. For details of payment of the application fee required for preliminary examination, see 14.02 and 14.04.17.

Disclosure

1. Description, Language of Description

15.06.1

In order to qualify for a date of filing something that is or appears to be a description will normally be required. Providing that the remainder of the application is in English or Welsh (i.e. with names and addresses etc. intelligible to and useable by a literate person acquainted only with English and/or Welsh) an application can qualify for a date of filing if the description (or what appears to be the description) is neither in English or Welsh nor compliant with rules such as r.14. The wording “something that appears to be a description” in s 15(1)(c)(i) reflects the wording “a part which, on the face of it, appears to be a description” of the PLT, and caters for possibility of that part of the application being in non-Roman notation.

15.06.2

r.12(8), r.12(9) is also relevant.

Where a date of filing is accorded to an application comprising a foreign-language description, the applicant must be notified of the failure to comply with r.14(1). The comptroller may refuse the application if the applicant fails to file a translation into English or Welsh within two months of such a notification.

2. Reference to an earlier application

15.06.3

r.17(1) is also relevant.

Article 5(7) of the PLT requires Contracting Parties to accept, for the purposes of according a date of filing only, a reference to an earlier application as a replacement for the description, and this is reflected in s.15(1)(c)(ii). Where such a reference is made the application number, date of filing and country of filing must be stated in part 9 of Form 1.

15.06.4

s.15(10)(b), r.17(2), r.22(3), r.108(1), r.108(5)(7), r.17(3), r.112(1), r.112(2) is also relevant.

The application will be treated as withdrawn if the disclosure contained in the reference fails to be substantiated by the filing of a certified copy of the earlier application (and, if that copy is not in English or Welsh, by an accompanying translation) within the four months (extendable at the discretion of the comptroller, see 123.34 to 123.41. Applicants must bear in mind any difficulties which may be inherent in obtaining the necessary certified copies and translations within the time allowed. Where, however, a copy of the earlier application in question is available to the comptroller, the comptroller will make and certify the necessary copy and place it on the file without the applicant needing to request or pay for it.

15.06.5

r.22(1), r.108(2)-(7) is also relevant.

The application will also be treated as withdrawn if a description (in English or Welsh) is not filed (as required by s.15(10)(b)(i)) before the expiry of the period prescribed in r.22(1). This period is extendable once by two months as of right under r.108(2) and further extendable in tranches of two months at the discretion of the comptroller under r.108(3)-(7) see 123.34 to 123.42. Rule 22 is listed in Part 3 of Schedule 4, so if a request for extension (or further extension) is not received before expiry of the requested extension, the application must be treated as having been withdrawn see 123.34-41. A description must be filed in addition to the certified copy of the earlier application, and must be filed even where the earlier application is available to the comptroller. Where the description required by s.15(10)(b)(i) contains matter additional to that contained in the earlier application to which reference was made, s.76(1A) will not allow the application to proceed unless or until that matter has been removed from the description. Whether or not there is any added matter is a matter of fact which will have to be determined comparing the description against the certified copy (or, where relevant, the translation of the certified copy). Except in the clearest of cases (e.g. when the description is manifestly a complete photocopy of part or all of the certified copy) the document should be referred to an examiner to make the comparison.

 
Section 15(3)
Where documents filed at the Patent Office to initiate an application for a patent satisfy one or more of the conditions specified in subsection (1) above, but do not satisfy all those conditions, the comptroller shall as soon as practicable after the filing of those documents notify the applicant of what else must be filed in order for the application to have a date of filing.

15.06.6

Where an application fails to meet the requirements for being given a date of filing, the comptroller must notify him of that failure and state the reason.

 
Section 15(4)
Where documents filed at the Patent Office to initiate an application for a patent satisfy all the conditions specified in subsection (1) above, the comptroller shall as soon as practicable after the filing of the last of those documents notify the applicant of-
(a) the date of filing the application, and
(b) the requirements that must be complied with, and the periods within which they are required by this Act or rules to be complied with, if the application is not to be treated as having been withdrawn.

15.06.7

Where an application meets the requirements for being given a date of filing, the comptroller must notify the applicant of that date, and must also notify the applicant of anything that still requires to be filed and for which the sanction for failing to file it within the time prescribed is that the application will be treated as withdrawn. Where applications (including divisional applications) are initiated by documents complying with section 15(1), these notifications will be embodied in the document receipts issued by Document Reception.

15.06.8

s.89A(3) is also relevant.

For international applications, the application fee is set at nil, but there is instead a national phase entry fee. As soon as the requirements of s.89A for national phase entry are met, preliminary examination and search can be carried out. In this case the notifications required by s.15(4) will be included in the formalities report rather than in the filing receipt.

 
Section 15(5)
Subsection (6) below applies where-
(a) an application has a date of filing by virtue of subsection (1) above;
(b) within the prescribed period the applicant files at the Patent Office-
(i) a drawing, or
(ii) part of the description of the invention for which a patent is sought, and
(c) that drawing or that part of the description was missing from the application at the date of filing.
 
Section 15(6)
Unless the applicant withdraws the drawing or the part of the description filed under subsection (5)(b) above (“the missing part”) before the end of the prescribed period-
(a) the missing part shall be treated as included in the application; and
(b) the date of filing the application shall be the date on which the missing part is filed at the Patent Office.
 
Section 15(7)
Subsection (6)(b) above does not apply if-
(a) on or before the date which is the date of filing the application by virtue of subsection (1) above a declaration is made under section 5(2) above in or in connection with the application;
(b) the applicant makes a request for subsection (6)(b) above not to apply; and
(c) the request complies with the relevant requirements of rules and is made within the prescribed period.
 
Section 15(8)
Subsections (6) and (7) above do not affect the power of the comptroller under section 117(1) below to correct an error or mistake.

General Considerations: Missing Drawings and Missing Parts of the Description

15.07

Subsections (5) to (8) provide for missing drawings and parts of the description to be filed after the date of filing, and are intended to reflect the provisions of a.5(6) of the PLT. Unless or until the terminology is further clarified by case law, it should be considered that a part is missing only when it is evident from inspection of the documents on file that the description or drawings are manifestly incomplete. The page numbering may be discontinuous, or there may be a mismatch between the number of pages of text alleged to have been filed and the number actually present. In the case of drawings there may either be a discontinuity in sheet/Figure numbering or the absence of a drawing listed in the description.

15.07.1

Where, upon performing the preliminary examination, the formalities examiner finds that a drawing referred to in the description, or a part of the description, appears to be missing this must be formally notified to the applicant in the preliminary examination report as required by s.15A(4) and (9) see 15A.23. The examination should be no more rigorous than is necessary to check for missing pages, missing sheets of drawings, or the absence of individual Figures listed in the description. There is no requirement to read and construe the text of the description (other to identify the drawings that are listed).

15.07.2

Preliminary examination is not always performed soon after the date of filing, and although there is no statutory requirement for document reception to notify the applicant of any parts missing from an application at the time it qualifies for a date of filing, it is nevertheless in the applicant’s interest that he should be informed as soon as possible of any such defects. For this reason document reception should, as a matter of best practice and good customer relations, continue to report to the applicant any missing matter that is noticed when document reception procedures are being carried out.

Time Limits

15.07.3

s.15(6)(a) is also relevant.

Where a drawing or a part of the description is missing from an application on the date of filing, the missing material can be filed at any time before expiry of the period prescribed in r.18 (which is either at any time up to the preliminary examination per r.18(1) or, if the absence of the missing matter is notified with the preliminary examination report under s.15A(9), within two months of the date of issue of that notification per r.18(2)). When missing matter is filed within the allowed period, then the matter shall be treated as included in the application, unless the applicant requests in writing that the missing material is withdrawn before the remainder of that period has expired.

15.07.4

The period prescribed by r.18(1) can be extended in accordance with r.108(2) or (3) see 123.36.5-123.36.8. The period prescribed by r.18(2) can be extended at the comptroller’s discretion in accordance with r.108(1) see 123.36.9. The effect of these time periods and extensions is that missing material may be filed at any time up to the issue of the preliminary examination report. Once the preliminary examination report has been issued, then if the absence of the missing matter is notified in the report, the applicant has 2 months to file the missing material, and this period may be extended at the Comptroller’s discretion. If the preliminary examination report has been issued, but the report does not refer to the missing matter, the applicant may file the missing matter within two months of the report on filing Form 52 together with the appropriate fee. At the Comptroller’s discretion, this period may be further extended on filing a further Form 52 and fee.

Re-dating

15.08

Unless s.15(7) applies the date of filing the application must be amended to be the date on which the missing part was filed. Re-dating as a consequence of including missing matter is the only circumstance in which an application may be re-dated to a date later than the originally accorded filing date.

15.08.1

With respect to drawings, s.15(5) and (6) can only be applied where a drawing referred to in an application was not present in any form in the application at the filing date of the application; an application cannot be re-dated when formal drawings are filed to replace informal drawings which had been filed on the filing date. (If a late filed formal drawing differs materially from an originally-filed informal drawing the only remedy lies in replacing the formal drawing with one which is in agreement with the drawing originally filed). The expression “any drawing” has been held to mean “any figure” (Alps Electric Co’s Application (BL O/12/90)). In the case of a divisional application filed without a particular drawing, the date on which the application was initiated may be re-dated under s.15(6) to the date on which the missing drawing is filed. This does not affect the date which the application may be treated as having as its date of filing under s.15(9), allowance of which is determined in the normal way after the question of re-dating has been settled. (However, the change in the date on which the application was initiated may result in failure to comply with the period specified in r.19, but an extension of the period may be allowed in two month tranches, if considered appropriate, by exercise of the comptroller’s discretion under r.108(1) and (5)-(7)).

15.09

Section 15(8) states that s.15(6) and (7) do not affect the comptroller’s discretion under s.117(1) to correct an error or mistake. Thus, if all of the requirements of s.117 and r.105 have been met see 117.03-09, it is possible for the comptroller to permit a drawing which was omitted by mistake from the documents originally filed with an application to be filed later without loss of the original filing date. Requests to this effect should be considered on their merits, see 117.10.

15.10

r.18(2) is also relevant.

If on preliminary examination (see 15.07.1) it is found that a part of the description or a drawing referred to in the application has not been filed at all, a letter should be issued specifying a period of two months for filing the missing material, the application then being re-dated to the date on which the missing material is filed. However, sight should not be lost of the possibility that, rather than re-date, the applicant might prefer to use the defective application to provide priority for a subsequent application, which includes the missing part(s), so preserving the date for the disclosure present in the original, defective application (subject of course to the provisions of s.5).

[ If a part of a description or drawing has been filed late, LFB should be used, if it has not been filed at all, LFA should be used. After the formalities examiner has issued the appropriate letter and on completion of preliminary examination he should refer the case to the search examiner. The formalities examiner should create a minute to draw the search examiner’s attention to the invitation to redate. If the re-dating will or might invalidate a declaration of priority this should also be drawn to the search examiner’s attention. It is for the search examiner to decide whether to carry out the search immediately or whether it would be more sensible to wait until the applicant has had the opportunity to respond to the invitation to re-date. For example, there may be no point in deferring the search if the applicant is unlikely to re-date, perhaps because the missing part is unimportant and re-dating would result in loss of priority. On the other hand, it may well be sensible to wait if there is a fair risk that the application will be withdrawn and used to provide priority for a new one. If the search examiner decides to defer the search, the OPTICS status should be set to 2 - “Out for ABS” and an appropriate diary entry should be entered in the PD electronic diary. This entry should state the examining group after the application number in the format GB0000000.0 – EX00. A diary action should also be added to the PDAX dossier. ]

15.11

While a formal report under s.15(5) or (6) will normally only issue after preliminary examination, if the formalities examiner becomes aware before the filing of this form that a drawing is missing an informal notice should be issued informing the applicant of the options available from these subsections.

[This will normally only occur with private applicant cases. LFAA should be used.]

15.12

If, after re-dating, the new filing date is more than twelve months after a declared priority date then the claim to priority must be relinquished and the declared date cancelled, but see 15.16.1 and 2.

15.13

The applicant must be notified in writing whenever an application has been re-dated, and, if applicable, that the declared priority date has been cancelled.

15.14

r.18, s.118 is also relevant.

Where the absence of missing matter is notified in the preliminary examination report, the period of two months allowed for filing the missing material and/or withdrawing the late-filed missing material may be extended at the Comptroller’s discretion in accordance with r.108(1) see 123.36.9. If no reply or extension request is received within the two month period, or if a reply indicates that the applicant does not intend to avail himself of the opportunity to re-date, the missing matter and all references to it should be treated as omitted from the application. Instructions for publication should be provided to include on the front page of the published application a notice see 16.29 that no copy of the particular drawing(s) or part of the description was included in the application as filed. Where the missing part or drawing is filed, it is not included in the published application s.16 but is open to public inspection after publication.

15.15

Where missing matter is treated as omitted, the specification as filed and published under s.16(1) is to be read skipping any missing pages of description or any reference to an absent figure (or a reference character in it which does not occur also in a figure which is present). For example, if Figures 2-4 are absent, a passage which reads “The cam 31 shown in Figures 2-4 controls the feed and is driven by the link shown in Figures 1 and 3 operated by the crank 33 shown in Figure 1” notionally reads “A cam (31) controls the feed and is driven by the link shown in Figure 1 operated by the crank 33 shown in Figure 1”; “31” is included if it occurs in a figure other than 2-4. If the specification when so read fails to comply with s.14(3) and/or (5) objection should be raised during substantive examination. Unless the applicant voluntarily amends the specification to delete those references which are to be treated as omitted, their deletion should be sought. (Such deletion should not be requested nor, except in the case of references in the claims, permitted, before s.16 publication).

15.16

s.76(2) is also relevant.

If the applicant seeks to amend the specification after s.16 publication by filing or reinstating an omitted drawing, this may be allowed, provided it meets the requirements laid down for the timing and nature of amendments see 19.13-19.22, in particular that it must not add subject-matter see 76.09.

Avoiding re-dating where there is a claim to priority

r.18(4), r.18(4)(b), r.18(4)(a), r.18(5)(a), r.18(5)(b) and r.18(7) is also relevant.

15.16.1

Where a declaration of priority is present on the date of filing, s.15(7) allows that s.15(6)(b) shall not apply providing that:­-

(a) the applicant requests that it shall not apply;

(b) the request is made in writing (i.e. in a letter or e-mail) before expiry of the period for filing the missing part(s) or drawing(s);

(c) the request identifies where the missing matter in question is contained in the priority application (or applications);

(d) all the missing material is contained in the priority application (or applications); and

(e) copies of the relevant priority applications, either certified or otherwise verified to the satisfaction of the comptroller, are filed within either sixteen months from the declared priority date or four months from the date of the request that s.15(6)(b) should not apply.

[Where there is any doubt as to whether the disclosure of late-filed allegedly missing drawings or parts of the description are contained in the priority application (or applications) the matter should be referred to an examiner.]

15.16.2

r.18(6), r.112 is also relevant.

Where the Office has access to a copy of the (or each) priority application, the comptroller will make and certify the necessary copies.

 
Section 15(9)
Where, after an application for a patent has been filed and before the patent is granted -
(a) a new application is filed by the original applicant or his successor in title in accordance with rules in respect of any part of the matter contained in the earlier application, and
(b) the conditions mentioned in subsection (1) above are satisfied in relation to the new application (without the new application contravening section 76 below),
the new application shall be treated as having, as its date of filing, the date of filing the earlier application.

15.17

Section 15(9) was introduced by the Regulatory Reform (Patents) Order2004; the wording of this provision is identical to the previous section 15(4) in existence before the Order came into force on 1 January 2005. It allows for applicants to file, in certain circumstances, a new application (commonly referred to as a “divisional application”) which takes the date of filing of an earlier application (commonly referred to as a “parent application”). A divisional application under s.15(9) is made by inserting the application number and filing date of the parent application in part 6 of Patents Form 1. Section 15(9) does not exclude the possibility of a divisional application itself giving rise to a divisional application. Thus no objection should be raised simply because an application claims the date of an earlier divisional application. Where this is the case, the “earlier application” referred to in s.15(9) and r.19 will be the earlier divisional application, and so when deciding if the conditions of r.19 are fulfilled, it is the status of this application and not that of the parent application from which the earlier divisional application derived that should be considered (see 15.19). The later divisional application will then take the filing date of the earlier divisional application, which, if validly claimed, will be the filing date of the original parent application.

[ Examiners in particular should be aware of the different procedures which apply when processing divisional applications. As well as the detailed guidance contained in the following paragraphs, reference should be made to the examiners’ aide-memoire and checklist for divisional applications (see15.58). ]

15.18

r.19(3) is also relevant.

The requirement that such an application must include a request for antedating means that such a request must be made at the time of filing; there is no provision for converting an ordinary application into a divisional application after filing (P’s Application [1983] RPC 269).

15.19

r.19(2)(a), s.15(9) is also relevant.

A divisional application may not be made if the parent application has been refused, withdrawn or taken to be withdrawn or treated as having been withdrawn, if the period prescribed for putting the parent application in order has expired, or if a patent has been granted on it.

15.20

r.19(2) is also relevant.

Subject to the overriding considerations in 15.19 a divisional application may be made at any time up to the date three months before the compliance date (as prescribed by r.30). If the compliance period (i.e. the period for putting the application in order, as prescribed by r.30) is extended under rules 108(2) or 108(3), then the three month deadline for filing a divisional application is calculated from this extended period. However, if the first report of the substantive examiner under section 18 is made under section 18(4), a new application may only be filed within two months of the date of that notification to the applicant under section 18(4) that the earlier application complies with the Act and Rules.

15.20.1

r.30(3)(b), r.2(2), r.108(4), r.30(2)(b) is also relevant.

The compliance period for putting a divisional application in order generally expires at the same time as the compliance period for the earlier application, whose date of filing is to be treated under s.15(9) as the date of filing of the divisional application. Consequently, in accordance with rule 2(2), if the compliance period prescribed on the earlier application has been extended under rule 108, this extended compliance period will apply – as the unextended compliance period – to any divisional applications filed on or after the date that the period was extended. If the compliance period prescribed on the earlier application is set under rule 30(2)(b) this compliance period will also apply to any divisional applications see also 18.47, third paragraph in square brackets). However, if the compliance period prescribed on the earlier application is later extended under rule 108, that extension will not apply to any divisional applications which have already been filed; a separate request will be required to extend the compliance period for any such divisional applications.

15.20.2

CoP is also relevant.

In view of the fixed time period for placing an application in order prescribed by r.30, divisional applications should be filed early. For example, if all possible search reports under s.17(6) have been issued, it is helpful for applicants to come to early decisions as to what inventions are to be pursued in divisional applications and to file these applications promptly, filing the same number of divisional applications as there are inventions requiring protection since it is undesirable for divisional applications to raise further plurality of invention issues.

15.21

r.108(1) is also relevant.

The comptroller has discretion to extend the period of time allowed under rule 19 for filing a divisional application. However, this discretion will normally be exercised only if the applicant shows that the circumstances are exceptional and that he has been properly diligent Penwalt Corporations’s Application BL O/72/82; International Barrier Corporations’s Application; Kokusai Denshin Denwa’s Application BL O/9/83; Luk Lamellan und Kupplungsbau GmbH’s Application [1997] RPC 104.

The comptroller also has discretion to extend the compliance period of a parent application under rule 108(3) to allow a divisional application to be filed within the period prescribed by rule 19 see Fergusson’s Application, BL O/272/09 and Knauf Insulation’s Application BL O/098/13.

It was held by the Patents Court in Kiwi Coders Corporation’s Application [1986] RPC 106 that an appeal against a decision to refuse the allowance of a divisional application will succeed only if it is established that the comptroller’s discretion was exercised wrongly in principle, i.e. there was some error in approach. It is not sufficient that somebody else might have reached a different conclusion upon the same facts. The hearing officer had held that although a fresh citation had been raised in the second report on the parent application, the citation did not require or suggest the splitting out of subject matter and consequently did not provide justification for the comptroller to permit filing well beyond the period allowed.

In Anderson’s Application BL O/297/02 the hearing officer held, on the facts of the case, that the comptroller should not exercise discretion to extend the period for filing a divisional application. He then rejected an argument that to refuse late filing of the divisional application was to deny the applicant his rightful property in contravention of his human rights. The applicant had been given ample opportunity to patent his invention, so there had been no limitation of access to the patent system and no deprivation of property within the meaning of UK patent law and the general principles of international law enforced by the Human Rights Act 1998.

15.22

r.6(5) is also relevant.

A divisional application may, but need not, make a declaration of priority where one is made in the parent application. However, a divisional application may not make a declaration of priority which is not also made in the parent application. It should not be overlooked that where a declaration of priority has been made in the parent application for matter forming the invention of the divisional application, then failure to make the same declaration in the divisional application will mean that the parent application will, when published, form part of the state of the art under s.2(3) for the divisional application. The EPO Board of Appeal in T 1496/11 decided that the disclosure of a published divisional application was entitled to the declared priority date but the claims of the parent were not, the divisional was then found to constitute novelty destroying prior art under Article 54(3) EPC (see also discussion of Nestec SA & Ors v Dualit Ltd & Ors [2013] EWHC 923 (Pat) in 5.25.1). Although EPO Board of Appeal decisions are not binding upon the UK courts they are of great persuasive value. It therefore remains to be seen what approach the UK courts will take in relation to divisional applications in light of this decision of the Board.

15.23

r.8(2) is also relevant.

In a case where the application specified in the declaration of priority is one for a UK (national) patent, is an international application filed at the Office, or is any other application of which a copy is on the file of another UK (national) patent application (eg the parent application) r.8(4)(c) in conjunction with r.112 relieves the applicant from the necessity to request or pay for a certified copy. Where the copy of the priority application is in a foreign language, there is no routine obligation to file a translation, but the applicant may be directed to do so under rule 9(1) if the examiner thinks necessary. Where a translation is required, there is no obligation that it must be verified.

15.24

A divisional application must be filed by the original applicant for the parent application or by his successor in title. Where more than one applicant is named in the parent application, it is possible for the divisional application to be made by only some of the original applicants. Where the applicants in the parent and divisional applications differ and no explanation is either apparent or submitted the formalities examiner should raise an objection; the application cannot proceed as a divisional if the provisions of s.15(9) have not been complied with. A divisional application may be filed, after the death of an applicant on the parent application, in the name of the personal representative of the deceased. The EPO Legal Board of Appeal in Trustees of Dartmouth College’s Application (J 2/01 [2005] OJEPO 88 and [2004] EPOR 54) held that for an application filed jointly with two or more applicants, the right to file a divisional application was only available to the registered applicants jointly, and not to one of them alone or to fewer than all of them.

15.25

r.31(5)(b) is also relevant.

If one of several applicants for the parent application no longer has any interest in or right to the invention of the parent application, that application may be amended by making a written request see 19.09.

15.25.1

If, following amendment of a parent application, the applicant wishes to delete the name of an inventor, the procedure described in paragraph 13.18.1 should be followed.

15.26

r.10(1), r.10(2), r.21 is also relevant.

Where any applicant in the divisional application is not an inventor, Form 7 must be filed, even if this has already been done in respect of the parent application. This must be done within two months of filing the divisional application, or, if is expires later, within the time allowed for filing this form for the parent application (see 13.11).

15.27

r.106(2), r.22(5), r.22(6), PR Sch. 4, Parts 2 and 3 is also relevant.

A request for preliminary examination and search, together with the search fee, must be filed in respect of every divisional application, even if the invention to which it relates has already been the subject of a further search under s.17(6), on the parent application see 17.111-17.114. In such a case however the comptroller may refund the whole or part of the search fee paid in respect of the divisional application (see 15.47-49). The Form 9A and the search fee should be filed within two months of filing the divisional application or within the period allowed for doing this in respect of the parent application, whichever expires later (see 15.50). This period may be extended in accordance with r.108(2) or (3) and (5)-(7) see 123.34-41. However, if the divisional application is initiated within the last six months of the compliance period (including any extensions) see 20.02 20.02.1 then the period for filing the Form 9A and fee expires on the date on which the divisional application is initiated. In this case, the period may be extended in accordance with r.108(1) and (5) to (7) see 123.34-41.

15.28

r.28(5), PR Sch. 4, Parts 2 and 3 is also relevant.

A request for substantive examination (Form 10) must be filed by the later PR Sch. 4, of a) two months after filing the new application or b) two years from the declared priority Parts 2 and 3 date, or, where there is no declared priority date, two years of the date to be treated as the filing date. This time limit may be extended in accordance with r.108(2) or (3) and (5) to (7) see 123.34-41. However, as with the search request, if the divisional application is initiated within the last six months of the compliance period (including any extensions) see 20.02-20.02.1 then the period for filing the Form 10 and fee expires on the date on which the divisional application is initiated. In this case, the period may be extended in accordance with r.108(1) and (5) to (7) see 123.34-41.

15.28.1

A divisional application on which Forms 9A and 10 have been filed together should be subject to combined search and examination. This applies even if no actual search is required because the claims of the divisional application have already been searched as part of the parent application.

15.29

CoP is also relevant.

An application filed under s.15(9) containing additional matter not disclosed in the earlier application may be filed, but shall not be allowed to proceed under s.15(9) unless it is amended so as to exclude the additional matter see 76.02. It is therefore unnecessary to take the precaution of filing identical claims to the parent application in a divisional application to secure a filing date. This practice is discouraged as amendment of the claims will be necessary (see 15.31), and the search examiner will have no discretion but to defer the search see 15.36 or issue a search report under s.17(5) in respect of the first invention claimed, even if this is identical to the parent application (see 15.38). An alternative remedy to the removal of the additional matter in a divisional application lies in the relinquishment of the request for divisional status see 19.11. The search/ substantive examiner should object to the presence of additional subject matter either as a preliminary objection or at the time of the search or examination report, as set out in 15.35 or 15.45.

15.30

There is no need for the claims of the divisional application to be of the same scope as claims which were directed to the same subject-matter in the parent application; nor need there have been equivalent claims in the parent application. If a claim in a divisional application is broader in scope than an equivalent claim originally present in the parent application, this does not necessarily mean that the divisional application contains additional disclosure; this must be decided on the facts of the case see 76.16-76.20. If however the objection arises under s.14(5)(c) instead of s.76(1) the divisional status is not impugned see 76.21. Where the parent application specified a range and a claim in the divisional claims a sub-range, see 18.69-18.69.1.

15.31

s.18(5)

The parent and divisional applications or two or more applications divided from the same parent, may not claim the same invention see 18.91-18.97.1.

15.32

CoP

There is no requirement that the parent or divisional application should not unnecessarily repeat description appearing in the other application or for inclusion of a cross-reference if matter is described which is claimed in the other application. However, as for any other application, it should be considered whether the presence of extraneous description which does not relate to the invention claimed in the particular application may cast doubt on the scope of the claims. It is therefore helpful for the description and drawings of a divisional application to be filed in a form appropriate to the application, e.g. in terms of identification of the embodiments relevant to the claimed invention.

Procedure in examining groups

Preliminary examination

15.33

Whether or not an application is allowed to be antedated determines the date when it should be published, and the time allowed for filing priority documents, Forms 7, 9A and 10, and for putting the application in order. Therefore where the formalities examiner has reported that an application is made under s.15(9), it is necessary for the search examiner, before doing anything else with the case, to consider whether all the conditions set out in s.15(9) and r.19 have been met. However, if a drawing referred to in the application is not filed with the application then the procedure under s.15(5), (6) and (7) concerning the possible re-dating of the date on which the application was initiated should be dealt with before consideration of whether the application can be treated as having an earlier date of filing under s.15(9) see 15.08-16. If antedating is not allowable then it is possible for the application to proceed with its date of filing as the filing date (in which case a request to amend Form 1 should be made in writing, see 19.11.

15.34

When a divisional application is filed out of time (but earlier than the date of issue of the grant letter) the first question to be decided is whether or not discretion under r.108(1) should be exercised to allow the application to proceed under s.15(9) (see 15.21). This matter should be disposed of before any further proceedings on the case, including any consideration as to whether amendment is necessary under s.76(1), take place. If no, or inadequate, reasons as to why the late filing should be allowed are given initially, a suitable explanation should be sought, only a short time being allowed for a reply. If a convincing response is not forthcoming, a hearing should be offered. The applicant should be informed that proceedings on the application will not continue until the question as to whether the late filing will be allowed has been settled.

[ The decision whether to allow the late filing may be taken by a Senior Examiner, who may also offer a hearing when a convincing reason for the late filing is not forthcoming. If an application seeking divisional status is received after the “parent” has been marked in order for grant and the grant letter has not yet been produced, the formalities examiner should set back the status of the case on OPTICS (for the search examiner to reinstate when appropriate) and minute the file to this effect. If the grant letter has already been produced but not issued, the formalities examiner should defer issue of the grant letter but should not take any action on OPTICS until the search examiner has indicated whether the parent should be withdrawn from the grant cycle. Where issue has already occurred, grant should be rescinded cf 18.89­ 90 if the filing was foreshadowed and is considered by a Senior Examiner or Deputy Director to merit treatment as a divisional. See 15.46 for action once a divisional has been foreshadowed or seems likely to be filed.) If it is decided that the parent must be withdrawn from grant, this should be communicated as a matter of urgency to the publication liaison officer who will take the necessary action. ]

15.35

The search examiner should not make an exhaustive analysis of the parent and divisional applications, but should investigate them sufficiently to come to a prima facie view as to whether s.76(1) has been complied with. If it has not, search should be deferred and a preliminary objection raised, requiring excision of the additional matter (unless the applicant can satisfy the examiner that there is no such matter present) before the application can proceed. The period allowed for response to the objection should normally be one month (extendable as-of-right by two months or until the expiry of the s.20 period - see 117B.01-05). However, if it is clear that the added matter is not relevant to the search, the search may be made and objection to the added matter issued simultaneously with the search report (see also 15.39 and 15.45).

[If search and/or examination are deferred EL24 should be used to make a preliminary objection. SC15 should be used to issue the objection to added matter with the search report. The Examination Support Officer should be instructed as to what is the correct processing status to be recorded. If EL24 issues the status should be set as “out for ABS/ABCSE”. If added matter is present and search (or CSE) is performed status 3 “Searched - Do not s.16 publish yet” should be used]

15.36

CoP is also relevant.

The search examiner may also defer search and examination of a divisional application not fulfilling the points laid out in the Code of Practice by requesting the filing of an amended specification before performing the search. The applicant should be informed which points of the Code are not met, and a period of one month should normally be allowed for filing an amended specification.

15.37

Since, where it is determined that the antedating is allowable, the application will in many cases already be due for publication, a divisional application should, as far as possible, be given on receipt priority over other applications for search and publication. Where however the application, on the basis of the divisional date, is very close to the compliance date, it must be treated, in preference to all others, as a matter of urgency (see 15.20.1).

15.38

A search report under s.17(5), accompanied by a copy of each document cited see 17.104.1, should be issued in the same manner as for an ordinary application. The fact that no actual search has been carried out on a particular divisional application, either because the initial search on the parent application was sufficiently wide to comprehend the invention of the divisional application, or because the invention had been the subject of a further search under s.17(6) on the parent application, does not render the issuing of a formal search report unnecessary. If the claims of the divisional application lack unity of invention the search report should be in respect of the first invention, even when a report in respect of this invention has already issued in connection with the parent application, since there is no discretion to do otherwise see 17.106. If the parent application was an international application, it will be necessary to carry out a search unless it can be confidently deduced that the international search on the parent must have comprehended the divisional invention, but in any event a search report must be issued. If the claims were amended in response to an objection under s.76(1) and the search was done in respect of the amended claims, a notice to that effect should be included on the front page of the published A document see 16.29.

[ To obtain such a notice on the front page, the examiner should add a minute to the dossier instructing Formalities of the exact wording of the notice. An appropriate message should also be sent to the relevant Formalities Group/Examiner alerting them to the minute on file, see 16.29]

S.16 Publication

15.39

s.16(1) is also relevant.

The requirement that an application should be published “as soon as possible after the end of the prescribed period” see 16.01 is construed as meaning as soon as is reasonably practicable after such date and, of course, applies equally to a divisional application. However, publication cannot occur until any added matter detected at that stage has been deleted from the application, under s.76(1) see 15.35, 16.08 and 76.02. What is published under s.16(1) is not the application as so amended but the application as filed, ie including the additional matter. The divisional application should normally be sent for publication after search and as soon as at least 16 months and 3 weeks from the priority or filing date has elapsed, and before substantive examination, provided this is not due.

15.40

Full consideration of whether ante-dating is allowable is made at the substantive examination stage; at search stage (where the divisional does not undergo combined search and examination) only a prima facie assessment of added matter is made (see 15.35). Therefore when a divisional application is sent for publication before substantive examination is completed, allowance of ante-dating is only provisional. In such cases, instructions for publication should be provided to include a notice see 16.29 on the front page of the application to the effect that the filing date accorded is provisional and is subject to ratification or amendment.

[ The formalities examiner should be alerted to the need for an appropriate notice to appear on the front page of the published A document by a minute added to the dossier. ]

15.41

r.31 is also relevant.

If however the application is due or overdue for substantive examination when the search has been made, the search examiner should proceed to carry out the substantive examination, the report of which should be issued at the same time as the search report. When amendments have been filed the search report should relate to any amended claims if the amendments are allowable or to the original claims if the comptroller’s consent to the amendments is withheld and the amendments would not have substantially affected the search strategy see 17.35. Similarly, the substantive examination should be carried out on the basis of the original application or the application as amended, depending on whether the comptroller consents to the amendments. If the comptroller’s consent is withheld, the objections to the amendments should be explained in the examination report.

[ SE4 should be used in the case of a report under s.18(3). If there is plurality of invention, RC6 and RC6A should be added to the examiner’s combined search and examination report. A report under s.18(4) using SE5 may issue prior to publication of a divisional only if the invention in suit was clearly claimed in the published parent application, thus giving third parties at least three months to submit observations under s.21. If SE5 issues, the examiner should ensure to set a diary action for the application see 18.81, final square brackets for more details).

If that is not the case, and the divisional is in order, SE3 should issue indicating that a report under s.18(4) that the application complies with the Act and Rules will not normally be issued until three months after the application has been published; that such delay is to allow for third parties to be given the opportunity to file observations under s.21 and for the search to be updated (if necessary). However, in the case of a divisional filed very close to the compliance date, there may not be sufficient time remaining to allow the usual three month period after publication for s.21 observations. Even if the invention of the divisional was not clearly claimed in the published parent application, the grant of the divisional cannot be delayed beyond the compliance date in order simply to allow for the expiry of this three-month period.

[Any allowable amendments filed before combined search and examination should be acknowledged using SC1.

[The fact that COC action (consequent on the filing of Form 23) has yet to be taken is not an outstanding formal requirement and, thus, does not prevent the examiner from issuing a s.18(4) report or from marking the application in order for s.16 publication (see 15.42). ]

15.42

If formalities are complied with for s.16 publication, the application should then be sent for publication. If formalities have not been complied with, the applicant will have been informed that the application cannot be published until the outstanding requirements have been met.

Substantive examination

See also 15.41-15.42.

15.43

s.18(5) is also relevant.

During the substantive examination, the substantive examiner should not only satisfy himself that there is no added subject matter in any part of the application, but also that there is no conflict of claims between the parent and divisional applications see 18.91-18.97.1. Likewise if two or more applications are divided from a single parent, then their claims must not be in conflict.

15.44

If at the first substantive examination stage a divisional application satisfies all the requirements of s.15(9) the allowance of the divisional date should be notified in the first report under s.18; if it does not, then notification of the allowance of antedating should be deferred until compliance is obtained.

[ RC21 should be used in a report under s.18(3) or s.18(4) to notify the applicant of the allowance of the divisional date. If allowance is deferred until grant, EL21 should be issued before the application is forwarded to grant. ]

15.45

If an objection that a divisional application as filed contains added matter is raised at substantive examination, it may be included in the report under s.18(3). However, if the nature of the added matter is such that it seems unlikely that the application will be pursued, a preliminary objection may be made and full examination deferred (see 15.35). If the application is withdrawn or refused, a request for the refund of the fee paid on Form 10 should be allowed if no report under s.18 has been issued.

[If examination is deferred EL24 should be used to make a preliminary objection. The Examination Support Officer should be clearly instructed to book the application as an ‘Amendment before Examination’ (see also 15.35). RC24 should be used to make the objection to added matter in the s.18(3) report. ]

15.46

A parent application may be substantively examined early (provided Form 10 has been filed) and at the same time as a divisional undergoes combined search and examination unless the applicant or his agent agrees otherwise. When the parent application and the divisional application are processed together in this way, the same period for response to reports under s.18(3) should be set for both applications. If the examination of the parent application is deferred until after combined search and examination of the divisional application, the period for response to a report under s.18(3) on the divisional should be set to match that period which would have been applicable for a first response on the parent application see 18.49. One application may be sent for grant before the other, however if amendment of the outstanding application subsequently resulted in conflict this would then need to be cured by amendment of that application, unless amendment is applied for under s.27 in respect of the granted application.

[Normally, a notification of intention to grant letter (EL34 or EL3) should be issued and the application sent to grant as soon as it is in order, irrespective of the state of the remainder of the family. However, an application may be held back where appropriate, for example if there is conflict of claims with another family member which is not yet in order or if it is not clear whether the current scope of another family member which is not yet in order conflicts with the claims of the application which is in order.

[The PROSE clause for objecting under s.14(5)(d) in the first instance (RC6) warns the applicant that there will be no automatic reminders of the deadline for filing a divisional. ]

[When a plurality objection has been overcome but a divisional application has not been filed, PROSE clause RC26 may be inserted into the subsequent s.18(3) report to inform the applicant of the deadline for filing a divisional application. This clause should be used at this stage regardless of whether a divisional has been foreshadowed or not.]

[Following the introduction of notifications of intention to grant on 1 October 2016, the practice of “foreshadowing” the filing of a divisional application (i.e. indicating that a divisional application is likely to be filed in the future) has no effect. The examiner should therefore take no further action in response to such a foreshadowing. The notification of intention to grant will always provide the applicant with at least one month’s advance notice of grant, during which time a divisional application may be filed (as long as it is filed at least three months before the compliance date) or other actions taken. The “latest date for reply” given in the intention to grant letter (EL34 or EL3) is not a specified period and is therefore not subject to the two-month as-of-right extension. The application should be sent to grant shortly after this date if no actions have been taken since issue of the intention to grant letter (see 18.86.1-18.86.3).]

[ In the exceptional circumstance of a request for accelerated examination being acceded to in respect of a member of the family, the formalities examiner should be instructed to process that member for grant before the other member(s). Any conflict would need to be cured by amendment of the outstanding application, unless amendment is applied for under s.27 in respect of the granted application. For grant of a family member, see 18.87.]

Requests for refund of fees

r.106 is also relevant.

15.47

The comptroller has discretion to remit the whole or part of the search fee paid in connection with a divisional application which relates to an invention in respect of which a search fee has already been paid on the parent application. A request for remission of the search fee must be made in writing by the applicant to the comptroller. When an applicant appears to be entitled to a refund and it appears most unlikely that s.17(8) would need to be invoked after a refund had been made, a refund can be made before the divisional application is in order for grant. If on the other hand, an early refund seems inappropriate, eg because the need for a supplementary search under s.17(8) cannot be ruled out, consideration of a request for a refund should be deferred and reconsidered later, normally when the application is in order for grant.

15.48

When considering an application for a refund of the search fee, the general principle of one search fee per patent application should be followed. Therefore, if two (or more) search fees have been paid on the parent application, and the parent and divisional applications relate to different ones of the inventions searched for on the parent application, a refund should normally be given. If the parent application is an international application made under the PCT, a refund of the search fee paid on the divisional application should only be given if more than one search fee was paid during the national phase of the parent application, and one of those fees covered the invention being searched in the divisional application. If just one search fee was paid during the national phase then no refund is given. The number of search fees paid to the International Search Authority is not a consideration.

15.49

If the searching necessary on the divisional application has been restricted at all stages to the “top-up” search and to any further searching consequent upon the premature termination of the relevant further search on the parent application, the full search fee paid on the divisional application should be refunded unless this results in the payment of fewer search fees than the total number of parent and divisional applications in the patent family. Furthermore, no refund should be made if a search becomes necessary due to amendment of the claims of a divisional application. If, in view of the search made, the request is refused the examiner should inform the applicant so. If only one search fee has been paid on the parent application (and hence only the first invention specified in its claims has been searched), a refund of the search fee paid on a divisional application should not be given even if the divisional application is for the first invention of the parent. There is no appeal from a decision of the comptroller to refuse a refund.

[The substantive examiner should minute the file to indicate whether or not the request for a refund may be allowed. If a request for refund of the search fee paid in a divisional application is allowed before the application is in order, the substantive examiner should issue EL8 or ELC8, as appropriate, and instruct the appropriate formalities group to arrange for an early refund. On the other hand, if consideration of a refund request is deferred, the examiner should issue ELC9. If and when the refund is allowed, the appropriate formalities group should be asked to attend to it.

[Although no refund is given, a search for a second invention in a divisional application should be made without requiring an additional search fee when a search report has issued in respect of the first invention in the divisional application, despite this invention already having been searched in connection with the parent application (see 15.38), and a further search becomes necessary for the second invention sometime later upon deletion of the first invention. ]

 
Section 15(10)
Where an application has a date of filing by virtue of this section, the application shall be treated as having been withdrawn if any of the following applies­
(a) the applicant fails to file at the Patent Office, before the end of the prescribed period, one or more claims and the abstract;
(b) where a reference to an earlier relevant application has been filed as mentioned in subsection (1)(c)(ii) above-
­(i) the applicant fails to file at the Patent Office, before the end of the prescribed period, a description of the invention for which the patent is sought;
(ii) the applicant fails to file at the Patent Office, before the end of the prescribed period, a copy of the application referred to, complying with the relevant requirements of rules;
(c) the applicant fails to pay the application fee before the end of the prescribed period;
(d) the applicant fails, before the end of the prescribed period, to make a request for a search under section 17 below and pay the search fee.

15.50

r.22(1), r.22(2), r.22(7)(a), r.22(7)(b) is also relevant.

Where there is no declared priority date, the claims, abstract, application fee, request for search (on Form 9A) and the search fee must all be filed not later than twelve months from the date of filing. Where, instead of filing a description, a reference is made under s.15(1)(c)(ii) to an earlier application, s.15(10)(b)(i) also requires the description to be filed within this period. Where there is a declared priority date these elements (including, where relevant, a description filed under s.15(10)(b)(i)) must be filed before expiry of whichever is the later of twelve months from the earliest priority date or two months from the date of filing. The periods specified in r.22(1) and (2) are listed in Part 2 of Schedule 4 of the Rules. They may therefore be extended once by two months as of right under r.108(2), and further extensions (in tranches of two months) may be granted at the discretion of the comptroller under rr.108(3) to (7). So as to provide a clear demarcation between extension of time under r.108 and reinstatement under s.20A, these Rules are also listed in Part 3 of Schedule 4, and if a request for extension (or further extension) is not received before expiry of the requested extension, the application must be treated as having been withdrawn see 123.34-42. Once extension is not longer available, reinstatement under s.20A may be requested.

15.51

r.22(3), r.108(5), r.108(7) is also relevant.

Where a reference is made under s.15(1)(c)(ii) to an earlier application, s.15(10)(b)(ii) requires that a certified copy of the application referred to (accompanied, if necessary by a translation) must be filed within the four months if the application is not to be treated as withdrawn. This period can be extended under r.108(1) and (5)-(7) in tranches of two months see 123.36.10-123.41 at the discretion of the comptroller in cases where there is a genuine difficulty in obtaining the necessary certified copy within the time prescribed.

15.52

r.22(5), r.22(6), PR Sch. 4, Parts 2 and 3 also relevant.

In the case of an application which claims an earlier filing date under s.8(3), 12(6), 15(9) or 37(4), the claims, abstract, application fee, request for search and search fee must be filed within two months of making the application or within the relevant period for the earlier application - whichever is the later. This period is extendable once by two months as of right under r.108(2), and then in two month tranches at the discretion of the comptroller under rr.108(3) and (5) to (7), provided the request is received before the expiry of the requested extension see 123.34-41. If this extension is no longer available, reinstatement under s.20A may be requested. However, if the application is filed within the last six months of the compliance period (including any extensions), the claims, abstract, application fee and the search request and fee must be filed at the time of making the application.

15.53

In the case of an application which has been converted from an application for a European patent (UK), the period for paying the application fee, filing Form 9A, paying the search fee and filing Form 7 is governed by r.58(4), (see s.81); in the case of an international application the application fee is nil, and the period for filing Form 9A and paying the search fee is governed by r.68(3) see 89A.12 and 89A.18.

15.54

s.14(5)(c) is also relevant.

Although the Act provides for the claims to be filed later than the description, they must of course be supported by the description as originally filed. If no claims were present on the filing date of the application, then when claims are filed for the first time this does not constitute amendment of the application. However once the application contains at least one claim, the subsequent filing of claims (except by way of correction under s.117) does entail amendment of the application and is governed by r.31.

15.55

s.16(1), s.118(3)(b), r.55 is also relevant.

If the claims, abstract, application fee, request for search, search fee, and where a reference under s.15(1)(c)(ii) is made, a description and certified copy of the application, have not all been filed by the end of the respective prescribed periods, the application is taken to be withdrawn. It is not published, but the fact that it has been withdrawn is advertised in the Journal. It may continue to serve as a basis for a declaration of priority in respect of a later application, subject to s.5(2), (2A) and (3).

r.22, r.108, r.10 is also relevant.

[Where no claims and/or an abstract have been filed within the period prescribed by r.22 and the two-month period in which an extension could be requested on Patents Form 52 under r.108(2) has expired, the application is taken to be withdrawn. It is not possible for any extension to be granted once this two-month period has passed (r.108(7)). A standard letter (WR4) is issued by the Formalities Manager warning of the intention to advertise the application as taken to be withdrawn. Similar considerations apply where a Patents Form 7 has not been filed within the period prescribed by r.10. For termination procedure, see 14.199.1.]

15.56

Once the application has been treated as withdrawn through failure to file any of the claims, abstract, application fee, request for search, search fee, and, where a reference under s.15(1)(c)(ii) is made, a description and certified copy of the application, reinstatement under s.20A is the only option remaining available. In particular, the deletion of an incorrect claim to priority as a correction under section 117 is not allowable, even if allowance of the deletion would mean that time for filing a request for search still remained (Payne’s Application [1985] RPC 193); see also 117.19.

 
Section 15(11)
In this section “relevant application” has the meaning given by section 5(5) above.

15.57

Where a reference is made under s.15(1)(c)(ii) to an earlier application, that earlier application may be either an application for a patent under the 1977 Act or an application made in a convention country. The definition of what is a relevant application is the same as for s.5 of the Act see 5.30.

Annex to section 15 of the Manual - Divisional applications

15.58

Section 15 of the Manual refers at various points to the processing of divisional applications. In particular, references are to be found from 15.17 to 15.49.

[Examiners in particular should be aware of the different procedures which apply when processing divisional applications. Of particular help will be the examiners’ aide-memoire and checklist for divisional applications, which are reproduced below. Neither the aide-memoire nor the checklist is intended to be exhaustive. More detailed guidance is given in the paragraphs of the Manual referred to in square brackets.

[Divisional applications: examiners’ aide-memoire]

When a purported divisional is filed

1). There are various basic formal requirements which must be satisfied if an application is to qualify as a “divisional”. These matters are considered by the appropriate formalities group 15.17-15.19, 15.22-15.24.

Has it been filed in time?

2). R.19 sets out the time periods within which a divisional can usually be filed. Put simply, a divisional can be filed as-of-right on a parent providing that the parent has not been granted or terminated, and the divisional is filed at least three months before the compliance date (including any extensions) 15.33.

3). R.19 sets out the time periods within which a divisional can usually be filed. Put simply, a divisional can be filed as-of-right on a parent providing that the parent has not been granted or terminated, and the divisional is filed at least three months before the compliance date (including any extensions) 15.19-15.20.

4). If lodged outside these periods, an application can still be admitted as a divisional filing, but only at the comptroller’s discretion. This requires exceptional circumstances and a diligent applicant 15.21, 15.34 ].

Added matter

5). S.15(9) means that a divisional cannot be allowed to proceed unless amended to exclude any detected additional matter 15.29, 76.02, 76.19. The usual criteria are used to determine whether or not matter has been added 76.03: for example, the presence in a divisional of claims having a different scope from, or no equivalent in, the parent does not necessarily mean that matter has been added. An objection under s.14(5)(c) should not be confused with one under s.76; the former does not impugn divisional status 15.30.

6). At the search stage, if this is separate from substantive examination, a prima facie view is taken by the search examiner on the added matter question. If added matter is judged to be present, its excision may be requested before the application is allowed to proceed, the search being deferred; EL24 is sent and one month allowed. An alternative if the added matter is not relevant to the search is to do the search and object to added matter in the search letter using SC15 15.35. The implications of added matter for publication under s.16 are given in para 11 below.

7). Since the search examiner’s view is not definitive, the substantive examiner needs to satisfy himself/herself on the point 15.43. If added matter is judged to be present, full examination may be deferred if the application is not likely to proceed, sending EL24 and allowing one month for reply. Otherwise the full examination is conducted and objection raised using RC24 15.45.

Allowing divisional status

8). Once ante-dating is allowable, by virtue of the requirements of s.15(9) and r.19 being met (see above), the applicant should be informed using RC21. If a search or examination letter is issuing before it is allowable, notice that compliance is awaited should be given 15.44.

9). The search itself is performed as usual, unless combined with examination (see paras 17-20 below). Issue of a search report on a divisional cannot be dispensed with even if the search has been covered by that on the parent 15.38. Consideration of a request for a refund of the search fee 15.47-15.49 may be given now unless it appears likely that s.17(8) might need to be invoked, in which case final consideration should be deferred until just before grant (see para 20 below). ELC8(EL8)/ELC9 can be used to notify allowance/deferment respectively of such a request.

Publication

11). Publication cannot occur until any added matter detected at that stage has been deleted from the application. However, what is published is not the application as so amended but the application as filed, ie including the added matter 15.39, 16.08, 76.02.

12). In addition, special instructions for publication may need to be given if:

  • publication is before allowance of the divisional date (e.g. because substantive examination has not yet taken place), to say that the filing date is provisional 15.40

  • amended claims have been filed in response to an objection under s.76(1). This is an examiner’s free text entry 15.38, 16.29

13). [deleted]

Substantive examination

14). It is not necessary (though it is of course allowable) to include cross-references between parent and divisional applications. Nor is there any specific requirement that disclosure should not be unnecessarily duplicated between the applications. However, it should be considered whether description of matter which is not relevant to the application in suit throws any doubt on the scope of the claims 15.32.

15). To comply with s.18(5) parent and divisional claims should not conflict. Special care is needed with omnibus claims 15.31, 18.91-18.97.1.

16). Reply periods to s.18(3) reports should be set having regard to the expiry of the compliance period, which is the later of 4½ years from the priority/filing date of the earlier case, whose date of filing is to be treated under s.15(9) as the date of filing of the divisional, or 12 months from the date of issue of the first s.18 report on this earlier case (see also para 17 below).

Combined search and examination

17). If Forms 9 and 10 have been filed on the same day or shortly one after the other with a request for combined search and examination, the search and examination are combined. If the examination report is one under s.18(3) a single combined search and examination report should issue using SE4. If the examination report is one under s.18(4) just the search report or a single combined search and examination report should issue using SE3 or SE5 depending on whether the invention claimed in the divisional was claimed and published in the parent application 15.41. If amendments have been filed before issue of the search report the appropriate version of SC1 should be added 15.41. ELC5 should also be added to the covering letter of the first s.18 report on a divisional when the first s.18 report on the relevant earlier case issued more than 3½ years from its priority/filing date (see also para 16 above) 18.47, 20.02.

18). Post-“A”-publication OPTICS statuses, eg 9 and 10, must not be set until after “A”-publication is complete.

19). If the first substantive examination report on a late-filed divisional is under s.18(4), grant cannot be accelerated by waiving the usual two-month period as it is necessarily delayed until after s.16 publication 18.81.

In order stage

20). Any outstanding request for a refund of the search fee can be determined now and the applicant notified of the outcome (see para 10 above) 15.47-15.49 .

21). Applications do not normally have to be held back from grant until the remainder of the family is in order. However an application may be held back where appropriate, for example if there is conflict of claims with another family member which is not yet in order. 15.46.

22). Even if the invention of the divisional was not clearly claimed in the published parent application, the grant of the divisional cannot be delayed beyond the compliance date in order simply to allow for the expiry of the three-month period for third-party observations. 15.41.

[Divisional applications: examiners’ checklist]

There are various basic formal requirements for a divisional, which the formalities examiner assesses. 15.17-15.19, 15.22-15.24

1). Has the divisional been filed in time? 15.19-15-21, 15.33-15.34

2). Is there any added matter? Are SC15/EL24/RC24 necessary? 15.29-15.30, 15.35, 15.43, 15.45, 76.02-76.03, 76.19

3). Is ante-dating allowable? Is RC21 necessary? 15.44

4). Is a search fee refund due? Is ELC8(EL8)/ELC9 necessary?

5). Publication:

a. is it due?

b. what is to be published?

c. are any special instructions for publication needed?

d. has the applicant been told?

6). Is any description of matter included which is relevant to the claims of the parent but not the divisional and casts doubt on the scope of the claims? 15.32

7). Is there claim conflict, eg of omnibus claims? 15.31, 18.91-18.97.1

8). Is combined search and examination appropriate? Which of SE3, SE4 or SE5 is necessary? Is ELC5 necessary? 15.41, 18.47, 20.02

9). When does the compliance period expire, and what should the s.18 report reply deadline be? 15.20.1

10). Don’t set post -“A”-publication OPTICS statuses until “A”- publication is complete.

11). Before sending to grant:

12) a. is there any possibility of conflict with other applications in family?

b. have 3 months elapsed from publication if claims were not in parent?

[NB: grant of the divisional cannot be delayed beyond the compliance date solely to allow for the expiry of the 3-month period - 15.41 ]