Manual of Patent Practice

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Section 18: Substantive examination and grant or refusal of patent

Sections (18.01 - 18.99) last updated October 2016.

Section 18: Substantive examination and grant or refusal of patent

18.01

This section sets out the conditions necessary for an application to proceed to substantive examination, makes provision for carrying out the examination and reporting the result, provides for the applicant making observations on the report and if necessary amending the application, specifies that a patent may then be granted or refused, and finally deals with the case of conflicting applications from the same applicant. Time limits and other provisions relating to these matters are prescribed in rr.28, 29 and 30.

Information security: a reminder

18.01.1

s.118(2) is also relevant

Combined search and examination actions are generally carried out before A publication, and accelerated examinations may also be performed before A publication. The guidance in this section therefore relates in part to pre-publication actions. Before A publication, the application, the search, examination or combined search and examination report, and any other documents or information concerning the content of the application (other than that prescribed under s.118(3)) must be protected and must not be communicated to anyone outside the Office other than the applicant or his designated representative – see 118.16 to 118.16.1 for further guidance on these issues.

18.01.2

More generally, in all cases, whether pre-or post-publication, formalities examiners should ensure that any communications (including telephone conversations) are directed to the intended recipient.

[Where correspondence from the Office is reported as never having arrived at its intended destination, or is reported as being misdirected or delayed, this fact should be recorded by sending a minute to the relevant formalities group with any relevant details. Use of r.111 to extend a deadline may only be authorised by the relevant Head of Administration (see 123.47.1.]

Code of Practice

18.01.3

The Code of Practice (the second part of which can be found below) identifies best practice points for patent applicants and agents, which if followed widely will lead to savings and efficiencies in the Office, and consequently to better service and better value. Examiners and other Office officials may on occasion draw the Code to the attention of the applicant or agent, and may ask for it to be complied with before the case is processed further if that would be more efficient.

18.01.4

However, it is not to be expected that best practice can always be adhered to. The Office has no right to demand compliance with the Code of Practice because the Code is advisory only and has no legal force.

18.01.5

If an application does not comply with one of the points of the Code of Practice then this does not necessarily justify an objection under the Patents Act or Rules. For example, an application having more than one independent claim in one category would not comply with code point 1e, but this would not usually justify an objection under s.14(5)(b). When drawing attention to non-compliance with the Code of Practice, examiners should therefore make it clear whether they are also raising a formal objection under the Act or Rules.

[Code of practice for applicants and agents]

Prosecuting patent applications

This part of the Code of Practice relates to the prosecution of patent applications. The process of examination and amendment of patent applications ideally proceeds by eliminating objections until the application can be granted. To expedite the granting of an application, the substantive examiner will attempt to indicate all objections in the first report issued under s.18(3). The main exception to this will occur where only major objections (such as patentability issues) are raised and minor matters are deferred until the major points have been settled. This process of eliminating objections minimises the time taken conducting a comprehensive review of the specification as it will generally only be necessary to decide whether or not the amendments or arguments advanced meet the objections raised. However, for this process to be efficient for both sides it is necessary that the following points are observed.

Point 6: Responding to the examiner’s objections

  • a full response should be made to each and every objection raised in an examination report through amendment and/or argument so as to progress the application towards grant see 18.63-18.63.3
  • when objections are to be met by amendment, an appropriate explanation should be provided, in particular, as to how the amendment meets the objection and how it is supported by the specification as originally filed [see 18.63-18.63.3
  • amendments must neither add new technical disclosure, nor broaden the scope of claims beyond the disclosure as originally filed (see 76.04 to 76.23)
  • pages showing the amendments, in manuscript or distinctive type, should be filed in addition to the clean replacement pages for the specification (see 18.61)
  • consequential amendment of the description may be deferred until the independent claims have been agreed upon (see 18.52)
  • the Office recommends the use of electronic filing when submitting amended pages or arguments in response to the examiner’s objections, whether the original application was filed electronically or not. See Apply for a patent

Point 7: Time issues in patent processing

The efficiency of the patent granting process depends in no small part on the timeliness of the Office as well as of applicants and agents. The Office will set a timetable for the various stages in processing a patent application to grant, by setting periods for responding to various Office letters and reports. Applicants and agents should use their best endeavours to act within the periods for response that will be specified. Requests for extensions of those periods for response will be considered if made in the recommended way and in accordance with the legislation relating to extensions of time. Requests for processing to be accelerated will also considered if made in the recommended way.

  • action should be taken within a period specified for response; and not delayed until the last day if that is avoidable
  • a request for extension of a period for response should be made in a timely manner. The request may be e-mailed to the dedicated pateot@ipo.gov.uk email address (see Requesting an extension of time by e-mail) in which case, an automatic acknowledgement of receipt will be issued. Alternatively, the extension may be requested in the response letter itself. Where an as-of-right extension is not available, the request should be supported by an adequate reason that is peculiar to the circumstances of the case (see 18.53 - 18.60, particularly 18.57.1)
  • a request for accelerated processing of search or examination should be supported by an adequate reason that is peculiar to the circumstances of the case (see 17.05.1-2 and 18.07 - 18.07.3).
  • when time is short, the covering letters or fax header sheets accompanying responses to Office actions should be marked “urgent” (see 18.72.1)
  • notification of withdrawal of an application must reach us before the date on which preparations for publication are completed if it is wished to prevent publication: the publication process does not permit later withdrawals (see 14.205).
  • voluntary amendments should be filed early (see 19.13)

Point 8: Filing divisional applications

  • divisional applications should be filed early as time is limited under rule 30 (see 15.20.2
  • a divisional application should have a single claimed invention (or inventive concept) that is distinct from that of the parent application (see 15.20.2 and 15.29)
  • the description and drawings of the divisional application should be provided in a form appropriate to the invention of the divisional application, and irrelevant material excised (see 15.32)
  • amendments already known to be required at the date of filing of the divisional application should be made (see 15.32)

If the above points are not met on filing a divisional application, suitable amendments should be filed as soon as possible (see 15.36).

Point 9: Forms and formalities after filing

  • information about changes should be notified promptly and by the recommended method. Global changes affecting more than one patent application should be notified by one communication, with a list of the patent application numbers (or patents) appended. The distinction between amendment and correction should be appreciated (see 19.03), and where a correction is proposed, sufficient evidence demonstrating that the correction was the applicant’s intention at the time of filing should be provided (see 117.19). Supporting proof where needed should be adequate to establish and verify the circumstances.

Change of address (only): a letter will suffice for this, whether it is amendment or correction (see 19.05, 117.03).

Change of agent: Form 51 is used for this amendment (see 14.04.12).
Appointment of an agent for the first time (after the filing date): Form 51 is used

Amendment or correction of other data on the application form: Form 20 is used for correction of an applicant’s name, and may require supporting proof. All other amendments or corrections should be made in writing (see 19.05 to 19.12 and 117.17 to 117.21).

Amendment of name (ownership) in the Register: Form 20 is used and may require supporting proof (see 32.06).

 
Section 18(1)
Where the conditions imposed by section 17(1) above for the comptroller to refer an application to an examiner for a search are satisfied and at the time of the request under that subsection or within the prescribed period
­(a) a request is made by the applicant to the Patent Office in the prescribed form for a substantive examination; and
(b) the prescribed fee is paid for the examination; the comptroller shall refer the application to an examiner for a substantive examination; and if no such request is made or the prescribed fee is not paid within that period, the application shall be treated as having been withdrawn at the end of that period.

18.02

(r.28(1) and r.28(2) are also relevant)

The request for substantive examination must be made on Patents Form 10. This, together with the prescribed fee, must be filed within six months of the date of publication of the application under s.16, unless the application falls into one of the categories referred to in (a)-(d) below:­

r.28(5) is also relevant

(a) for an application which claims an earlier date of filing under s.8(3), 12(6), 15(9) or 37(4), Form 10 and the fee must be filed within two months of filing the application or, if it expires later, within two years of the declared priority date, or, where there is no declared priority date, within two years of the date treated as the date of filing;

r.28(3) is also relevant

(b) for an application not falling within (a) above whose publication under s.16 has been prohibited or delayed because of a direction made under s.22(1) or (2), Form 10 and the fee must be filed within two years of the declared priority date, or, where there is no declared priority date, of the date of filing;

(c) for an application which has been converted from one for a European patent (UK) the period is governed by r.60, (see 81.17);

(d) for an international application for a patent (UK), the period is governed by r.68(4), see 89B.09.

In the case of an application in category (a), (b), (c) or (d), the period prescribed for filing Form 10 and the fee can be extended in accordance with r.108(2) or (3) together with r.108(5) to (7), see 123.34-41.

[ The Optics records are combed weekly. Applications which have between two weeks and three weeks remaining of the prescribed six month period for filing Form 10 are identified on the “Form 10 Picklist”. (The “Form 10 Picklist” cannot identify applications which fall into categories (a) - (d) listed in 18.02). Any applications on which Form 10 and fee are not filed are selected by Optics on the “Form 10 Time Limit Report” one month and seven weeks after the expiry of the prescribed period. Such applications should be checked by the relevant Formalities Manager to confirm termination. (For termination procedure, see 14.199). For applications not identified by the “Form 10 Picklist” but on which Form 10 has yet to be filed, the formalities examiner should identify those where the period for filing Form 10 has not expired. The file should then be diaried using the PD diary. If Form 10 is not subsequently filed in time, the application should be passed to the relevant Formalities Manager to confirm termination. ]

18.03

Form 10 and the examination fee can be filed at any time before the end of the prescribed period; it may be filed at the time of making the application if the applicant so wishes. Applications on which Forms 9 or 9A (see 17.02) and 10 have been filed on the same date (apart from PCT s.89 cases where an international search report has been communicated to the Office) will receive combined search and examination before publication under s.16, unless the applicant has explicitly stated in writing that this is not wanted. If an applicant has initially filed only Form 9 or Form 9A and later requests combined search and examination in writing when filing Form 10, the request for the combined procedure should be met if possible. However, in such cases the search and examination can only be combined if the examiner is aware of the request before beginning the search. A request for a refund of the examination fee and also of the search fee for combined search and examination cases is normally acceded to if it is received before issue of the substantive examiner’s report. However, the examination fee is not refunded if following combined search and examination a search report under s.17(5) has issued and the examination has been performed but no report under s.18 has issued (see 18.84.1). In all cases such refunds are a matter of discretion, not a right.

[ An Optics flag for combined search and examination will be set automatically to ‘yes’ if Forms 9 or 9A and 10 are logged with the same filing date. The formalities examiner should identify those applications on which both Form 9 or 9A and Form 10 have been filed on the same date (other than PCT s.89 cases where an international search report has been communicated to the Office). The combined search and examination will be identifiable by the appropriate cover label and PDAX message. However, it will not be necessary to label the dossier cover if the applicant has stated either on Form 10 or in a separate letter that combined search and examination is not wanted. In this case, the formalities examiner should set the combined search and examination flag to ‘no’, and add a minute to the PDAX dossier explaining the situation to the examiner.

[ In the event of Form 10 being filed after Form 9 or 9A with a written request for combined search and examination, the formalities examiner should check whether the search report has issued. If it has already issued, the applicant should be informed, as indicated later in this paragraph, that the request was received too late. On the other hand, if the search report has not issued, the formalities examiner should arrange without delay for the Form 10 to be put on file and for a minute to be added to the PDAX dossier. The formalities examiner should also place the appropriate label on the dossier cover and send the appropriate PDAX message to the substantive examiner to make him aware that combined search and examination has been requested. The combined search and examination Optics flag should also be set to ‘yes’. On receipt of a labelled file in the examining group, the Examination Support Officer should check with the search examiner to see whether the search has been started. If it has not, the examiner in due course should carry out the examination at the same time as the search. In the remote event of the Form 10 and the written request being received during a search, the search examiner can opt, depending on the stage reached, to carry out the examination or defer it until the normal examination stage. Whenever the examination is not carried out the applicant should be informed by the formalities examiner or the search examiner, as appropriate, that the request for substantive examination was received too late to allow combined search and examination and that substantive examination will occur in due course after s.16 publication. The applicant should also be informed that accelerated examination will be considered if requested and a reason for the request is given in writing. If necessary, the combined search and examination flag on Optics should also be changed from ‘yes’ to ‘no’. The request for a refund should be dealt with by the appropriate formalities group with the examining group being informed immediately. An examination report or combined search and examination reports should not be issued after receipt of a request for a refund, even if the report or reports have already been prepared.]

 
Section 18(1A)
If the examiner forms the view that a supplementary search under section 17 above is required for which a fee is payable, he shall inform the comptroller, who may decide that the substantive examination should not proceed until the fee is paid; and if he so decides, then unless within such period as he may allow
(a) the fee is paid, or
(b) the application is amended so as to render the supplementary search unnecessary,
he may refuse the application.

18.03.1

Subsection (1A) gives powers to the comptroller where an applicant’s action makes a supplementary search necessary at the substantive examination stage. Section 17(8) provides for the payment of a fee for such a search (see 17.120-123).

18.03.2

If, before or during substantive examination, the substantive examiner reports that a supplementary search is necessitated by an amendment or correction as referred to in 17.120-123, the applicant may be so informed in a letter giving a specified period to pay the fee or amend the application so as to remove the need for the search or submit observations, and warning that the application may otherwise be refused. Where such an amendment is submitted but fails to remove the need for the search, the matter is pursued until either a satisfactory amendment is filed or the fee is paid, or it becomes evident that the dispute cannot be resolved.

[ Senior Examiners may decide whether to take action under ss.17(8) and 18(1A), without reference to their Deputy Director; Examiners should consult their senior officer as to the appropriate decision. Such action should be initiated by issuing EL27 in which the period specified for response should normally be two months. This period may need to be reduced if the application is approaching the end of the compliance period; if there is less than 6 months remaining of the compliance period the reply period should not be set at longer than 1 month. Appropriate timeframes should be decided by the examiner if less than 3 months of the compliance period remain. When issuing EL27, the case examiner should create a “Diary” entry in the PD electronic diary for return of the file to him on a specified date which should be 5 months from the date on which he writes the instructions. The diary 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. Instructions should be given for the diary entry to be cancelled if a response is received before the “bring forward” date. If amendments are unsatisfactory or the applicant disputes the need for the search, or search fee, the matter should be pursued by letter or telephone (confirmed in writing) with the aim of swift resolution so that the normal examination process can commence or continue without undue delay. If no response is received the examiner should write or telephone (confirming in writing) to enquire if it is the applicant’s intention not to proceed, emphasising that if no action is taken the application will be treated as refused at the end of the compliance period. It should be made clear that genuine reasons for the late-filing should accompany any subsequent response. The case examiner should be named and a contact telephone number provided in all letters to the applicant or his agent.]

18.03.3

Where a further search is performed, at the request of the applicant, for a second or subsequent invention which was claimed in the application as filed and which was identified in the search report, section 17(6) rather than section 17(8) applies and the procedure is that set out in 17.111, etc. If, however, amendment to remove plurality of invention results in the deletion of claims to an invention which was searched at the search stage in favour of an invention which was present at that stage but which was not so searched, a search fee under section 17(8) should be required if a further search is then necessary at substantive examination.

[ 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. ]

18.03.4

If an applicant files another search fee in anticipation of the amendments made necessitating a further search under section 17(8) and the substantive examiner does not consider such a search to be necessary, then a refund of the fee paid should be made, even if no specific request therefor has been made by the applicant.

18.03.5

If, following the issue of the letter referred to in 18.03.2, there is such an unresolved dispute and/or if the fee is not paid or any other requirement of this provision is not met, a hearing is offered. If the hearing officer decides that examination should not proceed until the fee is paid or the application amended, he should specify a period (normally two months) for payment or appropriate amendment. If neither action is taken within the specified period he may refuse the application.

[A hearing may be offered by Senior Examiners but Examiners should consult their senior officer as to the appropriate decision. The hearing should be taken by the Deputy Director (see also 18.03.2).]

18.03.6

When the appropriate fee has been filed, together with a Form 9 or 9A, the substantive examiner performs the supplementary search. A search report is issued; this may accompany a s.18 examination report.

[ If the search report is issued with a s.18 report, SE6 or SE7 should be used as appropriate; SL7 should otherwise be used. Any newly-cited documents should be issued at the same time (see 17.104.1 to 17.105.2). ]

Section 18(2)

On a substantive examination of an application the examiner shall investigate, to such extent as he considers necessary in view of any examination carried out under section 15A above and search carried out under section 17 above, whether the application complies with the requirements of this Act and the rules and shall determine that question and report his determination to the comptroller.

18.04

After Form 10 has been filed but before sending the application to an examining group for substantive examination, the formalities examiner should examine any new pages for compliance with r.14 and Schedule 2. Any objections should be reported in a form suitable for inclusion in the letter which constitutes the examiner’s report under s.18(3) (see 18.47).

[18.05 Deleted]

18.06

The application should be forwarded to the examining group responsible for the classification heading where the primary search had been performed or if the application is destined for combined search and examination, the file should be sent for allocation to the appropriate group as indicated in 17.03. It may be transferred by mutual agreement to a different heading before substantive examination if, for example, it had transpired during the search that the other heading would be more suitable, or if amendment of the specification has rendered transfer appropriate, or if subject-matter has been transferred on reclassification. The substantive examiner should aim to deal with cases allocated to him within 18 months of their s.16 publication date but he should normally examine these cases in order of their priority dates, unless the application qualifies for combined search and examination, in which case the search and examination should be done so that the search report and any report under s.18(3) can issue within six months of the date of filing of the Form 9 or 9A (for divisional applications see 15.41-15.42).

[When an application which qualifies for combined search and examination is received in an examining group, it will take its normal place amongst pending searches (unless accelerated search has been requested - 17.05.1-2).]

[Examiners in particular should be aware of the different procedures which apply when processing combined search and examination cases. Reference should be made to the examiners’ aide-memoire for combined search and examination cases, which is issued to all examiners and is reproduced in 18.98.]

18.07

A request for accelerated substantive examination of an application, which the applicant should mark appropriately to ensure prompt action, may be allowed provided that the request:

a) gives adequate reasons why acceleration is needed (see 17.05.1-2 or paragraph 11 of the Patents Fast Grant Guidance;

b) meets the requirements for acceleration through the “Green Channel” (see 17.05.1-2 or paragraph 11 of the Patents Fast Grant Guidance);

c) meets the requirements for acceleration under the PCT(UK) Fast Track (see 89B.17); or

d) meets the requirements for acceleration under the Patent Prosecution Highway (PPH) (see 18.07.1).

Requests for acceleration should be in writing, and may be made electronically using the Office’s online patent filing services (as a covering letter). It is possible for an examiner to exercise discretion to accept an acceleration request by email; however this practice should not be encouraged. If the request is made before publication, the applicant should indicate whether or not publication before the end of the 18 month period prescribed under s.16 is also requested. (In the absence of any such indication, the applicant should be contacted to clarify whether accelerated publication is required.) A regular Notice to this effect appears in the Journal. Requests giving no, or inadequate reasons should be refused. (See also 18.87).

[ On receipt of a request for accelerated examination, Formalities should add the Accelerated Examination label to the cover of the dossier and send the message Acc Exam to the group ESO. A Green Channel label should also be added to the dossier cover where the acceleration request is under the Green Channel, and this should be recorded on Optics using the function Record Green Channel Patent Application (REC GRE).

[ On receipt of an Accelerated Exam message the examiner should consider the request as a matter of urgency, and report to the applicant/agent whether it is allowable. This should be done either by letter or by telephone (followed up by a report). In the event that the request is allowed, an indication should be given, with reference to any existing Agency target, of when the examination report can expect to be issued. If the application is in the publication cycle an examination report can still issue – see 18.64 ]

[ EL29, modified as appropriate, may be used to communicate a refusal of accelerated examination. EL30 or SC19 (when issuing a search report), modified as appropriate, can be used to inform the applicant that the request for accelerated substantive examination has been allowed and that substantive examination will take place immediately but that no report under s.18(4) will normally issue until at least three months after the application has been published under s.16. EL33 should then be sent if the substantive examination has been carried out and reveals no objection. When the substantive examiner has done the substantive examination and identified objections, and if EL30 or SC19 has not issued previously, ELC30 should be included in his report to confirm allowance of the request. See 18.07.2 for the situation where an examination report is likely to be issued earlier than three months after publication. In the rare event that the examination report itself is issued immediately, then it will of course not be necessary to issue a separate letter indicating allowance of the acceleration request, however an indication should be included in the covering letter to confirm that processing has been accelerated.

[At the point when the request is allowed or disallowed, the examiner should ensure that PAFS records the correct action type against the case and that the appropriate PDAX message exists for the case.

[Where an acceleration request is allowed, the PAFS action should be correct, but the examiner should always confirm what PAFS actions are open and, if they are not correct, include in the checklist accompanying the letter or report appropriate instructions to the ESO. The examiner should ascertain whether there is a “normal” Exam message in the appropriate heading team mailbox, and if there is close and delete it. They should then send the message ACC [HEADING] EXAM, setting the relevant date, to their own Group Personal mailbox, or that of the examiner who will carry out the action. The relevant date should be that of the date stamp on the applicant or agent’s letter requesting acceleration, the examination being due two months from this date. If the examiner doing the examination is not the heading examiner then the ESO should be asked to transfer the relevant PAFS booking.

[ Where an acceleration request is not allowed, the PAFS action will need to be changed, and the ESO should be asked to do this in the checklist accompanying the letter or report issued to the applicant or agent. Typically the checklist should include ‘Please change the PAFS booking from Accelerated Examination to Examination with a significant date equal to the earliest date of this application’. The examiner should ascertain whether there is a “normal” Exam message in the appropriate heading team mailbox. If there is then no further action needs to be taken. However, if there is not, the checklist accompanying the letter or report issued to the applicant or agent should include an instruction to the ESO to send a “normal” Exam message to the appropriate heading team mailbox, with the date in the message being the earliest date for the application.]

18.07.1

A request for accelerated substantive examination of an application under the Patent Prosecution Highway (PPH) will be allowed providing the relevant PPH requirements are met. These requirements are available online from the Patent Prosecution Highway web pages. The examiner should consider the work of the Office of First Filing/Examination but is not bound to follow the actions of that Office. Any objections under UK patent law should be raised as normal.

[On receipt of a request for accelerated examination under the PPH, formalities should add the Accelerated Examination label and the PPH label to the cover of the dossier and a PPH request message should be sent to the PPH mailbox (any further action will be advised by the PPH Administrator).

[The PPH Administrator should determine whether the request for PPH processing is allowable and record this in a minute for the heading examiner. The PPH Administrator should also inform the applicant of the allowability of the request. If the heading examiner will be unable to perform the examination due to absence, or for any other reason, the PPH Administrator may contact a deputy heading examiner to enquire whether they may be able to deal with it. In the absence of the heading examiner, and any deputy heading examiners, the PPH Administrator should consult the group’s Deputy Director as to who should perform the examination. Once an examiner has been identified the PPH Administrator should send the appropriate message to the nominated examiner’s Group Personal mailbox. The PPH Administrator should place a minute for the ESO of the nominated examiner on the dossier, to ensure that the case is correctly booked and noted as an accelerated examination on PAFS, and should send an appropriate message to the ESO.

[ The examiner should refer to the guidance provided in the minute from the PPH Administrator. If there is no minute but a PPH request has been made the PPH Administrator (currently Charles Jarman, email: PPH@ipo.gov.uk should be contacted immediately. ]

18.07.2

A report should issue confirming whether the request is allowable or not (see 18.07 and 18.07.1). If a request for accelerated substantive examination is allowed, the report should state that substantive examination will proceed as quickly as possible, but that no report under s.18(4) will normally issue until at least three months after the application has been published under s.16 so as to allow time for third parties to file observations under s.21 and for updating the search. The “3-month rule” does not necessarily apply to divisional applications. In a divisional application, if the invention claimed was clearly claimed in the published parent application, giving third parties at least three months to file Observations under s.21 in respect of that invention, then the “3-month rule” can be waived for the divisional application. In the case of a divisional filed very close to the end of the compliance period, 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 end of the compliance period in order simply to allow for the expiry of this three-month period. In the case of s.89 applications, if the corresponding international application has been published by WIPO (see 89B.04), then a report under s.18(4) may not be issued until at least 2 months after the application has been republished so as to allow adequate time for third parties to file observations under s.21 after the application has entered the national phase (National Starch and Chemical Investment Corporation’s Application BL O/34/96). Where the s.89 application has entered the national phase early and accelerated publication under s.16 has occurred (see 89A.20.1), the usual “3-month rule” applies. For further details on accelerated examination of s.89 applications, see 89A.21. For accelerated processing under the PCT(UK) Fast Track, see 89B.17.

18.07.3

Any request for confidentiality relating to accelerated prosecution, for instance where such prosecution has been requested because of alleged infringement, should be considered in the light of the general guidance given in 118.13, but the request itself and the general reason for it should be on the open file.

18.08

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

Substantive examination should be carried out using the main copy of the specification; the duplicate must remain unchanged as a record of the specification as filed. When substantive examination occurs after s.16 publication, any amendments filed before substantive examination should be incorporated into the specification, and the examination be conducted on the basis of the amended specification (cf 18.63-18.70). The amendments should be incorporated into the description, claims and/or drawings as appropriate, and each of these new documents annotated as “working copy”. For applications undergoing combined search and examination before s.16 publication, the examiner doing the search and examination should consider whether any amendments filed before issue of the search report may be allowed. If they are allowable the search and examination should proceed on the basis of the application as amended (17.35, 19.19.1). Amended or new claims should be included in the published application as normal (16.16-16.19). Applications where the original claims were filed after the filing date should be treated on combined search and examination as outlined in 17.34. If formal drawings were filed later than the application date they may nevertheless be used for the examination, but if a detail of a drawing becomes a point of issue the informal drawings should be consulted since any discrepancies of detail may not have been detected in the preliminary examination (see 15A.22).

[The substantive examiner should, at each action, scan all correspondence from applicants or agents to ensure that all matters raised have been dealt with bearing in mind the substantive examiner’s overall responsibility for the application. If, when proposed new claims are filed, it is not clear which previous claims (if any) have been superseded the agent (or applicant) may be telephoned to ascertain the position before examination is made. [Amendments allowed before the issue of the search report should be acknowledged at the time of combined search and examination using the appropriate version of SC1.

[The examiner should also pay particular attention to documents sent to Index and Scanning for importing onto the open part of a dossier. Although the substantive examiner generally has to identify and explain his objections without reference to any annotations he may have made, he may where he finds it difficult to do otherwise, explain his objections more fully by annotating a photocopy of selected pages from the specification which he can attach to the report which is to be issued, though this practice should be regarded as exceptional. A second photocopy, similarly annotated, must be associated with the file copy of the report. The substantive examiner should send the annotated photocopied page with a completed proforma to Index and Scanning who will import the page into the dossier and send the requested message to the examiner.]

18.09

s.1(1), s.14(3) and s.14(5) are also relevant

In particular the substantive examiner must establish whether the application relates to a patentable invention (see ss.1-4), whether the invention is disclosed in a manner which is clear and complete enough to enable it to be performed (see 14.58­ 14.90), and whether the claims define the invention and are clear (see 14.108 to 14.139), are concise (see 14.140 to 14.141), are supported by the description (see 14.142 to 14.156) and relate to a single invention or inventively-linked group of inventions (see 14.157 to 14.168). The substantive examiner should therefore study the specification to whatever extent is necessary to see whether these requirements have been met.

18.09.1

In Macrossan’s Patent Application [2006] EWHC 705 (Ch), Mann J held that each patent application must be measured against the requirements of the law and on the basis of its own facts; any particular application stands and falls on its own merits. Earlier patents can be used to gain some assistance on a particular case, but to rely on previous patents as some sort of benchmark would be to give the earlier patent in time a primacy which the legislation does not warrant. In deciding whether or not an application complies with the requirements of the Act and Rules, the facts of the case should be decided on the balance of the evidence available.

18.09.2

As Mann J indicated in Macrossan’s Patent Application [2006] EWHC 705 (Ch), any doubt should be resolved in the applicant’s favour only if the doubt is substantial. This could arise if the examiner’s assertions as to the common general knowledge have been challenged and expert evidence would be needed to establish the position, or if the date of a prior disclosure has been challenged and the examiner does not have access to material that would confirm the date. Certainly the examiner is not required to meet the criminal burden-of-proof standard in raising and pursuing an objection. If the examiner is minded to maintain an objection, but there may be substantial doubt on an issue of fact which would determine patentability, the test applied in Blacklight Power Inc. v The Comptroller-General of Patents [2009] RPC 6 should be used (see 4.05.1). In this case, the judge held that the examiner should consider whether the evidence provided by the applicant gives rise to a reasonable prospect that, if the issue were to be fully investigated at trial with the benefit of expert evidence, it would be resolved in the applicant’s favour. This case concerned industrial applicability and sufficiency where the claimed invention relied on a scientific theory of doubtful validity. However, the test could also apply to other questions of doubt which would be addressed in court by the use of expert evidence. This could include the determination of inventive step where a prima facie objection of obviousness is contested on technical grounds (see 3.67-3.69), and the determination of the publication date of an internet citation (see 18.09.3-18.09.5 below).

18.09.3

When assessing the relevance of an internet disclosure at the substantive examination stage, a document should be cited at first instance unless the examiner is certain that it falls outside the state of the art. If the applicant contests the publication date the examiner should decide the matter on the balance of probabilities based on the evidence available. Such evidence may include a publication date provided on the webpage itself, the cached date from a search engine (which provides a date by which the webpage must have been published), and the “WayBackMachine” on archive.org. Evidence from sources such as archive.org, while not conclusive, may provide justification for an examiner’s view that there is little doubt as to the date of disclosure (see also 17.54).

18.09.4

The standard of proof required for assessing the publication date for internet citations has been considered both in EPO Board of Appeal decisions and in Office decisions. Although the Board of Appeal in T 1134/06 Konami Corp. decided that for an internet disclosure to be cited as prior art, its date of publication would need to be proved “beyond any reasonable doubt”, in HSBC France’s Application BL O/180/09, the hearing officer held that the date of an internet disclosure should be decided on the balance of probabilities. This followed from previous UK case law on prior use (e.g. Kavanagh Balloons Pty Ltd v Cameron Balloons Ltd [2004] RPC 5 – see 2.29.1):

As the EPO’s approach to prior use forms the basis of the Technical Board of Appeal’s decision in T 1134/06, I do not consider that I am bound to follow the EPO’s reasoning in this case. Rather it seems to me more appropriate, in line with UK cases in this general area such as Kavanagh Balloons, that the date and contents of internet disclosures be assessed on the balance of probabilities, just as it is for cases of alleged prior use or, for that matter, dating any other categories of prior disclosure.

18.09.5

In Ranger Services Application BL O/362/09 it was held that a publication date established on archive.org was sufficient to demonstrate, on the balance of probabilities, a date of publication before the priority date of the application. In addition, EPO guidance issued in 2009 (Official Journal EPO 8/9 2009) states:

…the balance of probabilities will be used as the standard of proof, as generally applied by the boards of appeal. According to this standard, it is not sufficient that the alleged fact (e.g. the publication date) is merely probable; the examining division must be convinced that it is correct. It does mean, however, that proof beyond reasonable doubt (“up to the hilt”) of the alleged fact is not required.

It further notes that the fact that archive.org is not a complete archive does not detract from its credibility and the legal disclaimers contained in the site should not be taken to reflect negatively on the accuracy of the service. This guidance reduces the burden of proof required by the EPO and brings its practice more into line with that of the Office.

Considering the search report

18.10

r.113(5)-(6) is also relevant

The substantive examiner should then study the search report, including any document noted but not cited. Although any views expressed by the search examiner, either concerned with novelty or obviousness or with any other subject, should be carefully considered, the substantive examiner is not bound by these views and must make up his own mind as to what objections, if any, should be raised. While the search examiner will have resolved any doubt about the relevance of a document in favour of citing it, the substantive examiner should only cite if the document supports at least a prima facie objection. On the other hand the examiner may decide to cite a document noted by the search examiner but not included in the search report under s.17(5), for example where the documents cited were merely examples selected from a large number found, or any other document which has come to his notice (but see 18.11). Where the examiner has become aware of an apparently relevant document in a foreign language, he should check whether there is an English language equivalent. If not, the substantive examiner should use his judgment regarding the necessity for a text in English, making use of what he can glean from the foreign language document including any drawings and an English language abstract if available. The applicant can be asked informally to provide a copy of the text of the document in English if he has it, but a formal request for a translation should not be made except possibly in the case of a document cited in an international search report, international preliminary report on patentabilty or international preliminary examination report (see 89B.11 and rule 113(5)-(6)). Conversely the examiner may exceptionally provide a copy of a translation of a foreign language document to the applicant but is not obliged to do so (as per 17.104.1).

[If the substantive examiner decides not to cite a category X and/or Y document which had been included in the search report, a minute should be added to the PDAX dossier to record his decision. Such a minute is unnecessary in respect of A category documents included in the search report.

[The substantive examiner should ensure that any newly-cited documents are issued as appropriate (see 17.104.1, 17.105.1).

[If a substantive examiner requires a translation of a foreign language document which he has been unable to obtain by other means, consideration may be given to procuring one. This may be arranged by an Examination Support Officer. This should rarely be necessary and if it is it should be possible to identify key passages for translation instead of the whole document.]

Family matching, checking equivalents, and online file inspection

18.10.1

There are often reports and citations associated with equivalent applications. At any stage, when equivalents are found, examiners should use their judgement to decide which of these reports and citations to consider. Online file inspection can be used to find these reports and may provide further details of the significance of a document cited against an equivalent (see 18.10.4).

First substantive examination

18.10.2

When first examining a UK application or PCT application, the substantive examiner should identify any equivalent applications and list these on the internal search report (as per 17.115). The claims of EP, WO and GB equivalents should be considered in order to assess whether conflict arises (see 17.115) and (18.91-18.97.1). When there is an EP or WO equivalent, the examiner should also complete a search comparison form.

Subsequent examinations, and before grant

18.10.3

The composition of a patent family may change over time. Therefore examiners should check if any further equivalents have come to light since the check made at first substantive examination. As a minimum, this check should be made just before issuing an intention to grant letter, but may also be useful when issuing a second (or later) examination report. The examiner should also consider checking the online file, and legal status (eg whether granted or not), of any equivalent applications (see 18.10.4). At this stage it is possible that new documents have been cited against an equivalent, or an equivalent may have been granted with narrower claims. In addition, the first examination report for an equivalent may have become available, if it was not previously. It is often useful to carry out a final check, before grant, of the legal status and online file of any EP and US equivalents.

Online file inspection

18.10.4

Reports and citations associated with equivalents, and the legal status of equivalents, can often be found using online file inspection.

[ For EP equivalent cases, the European Patent Register online file inspection facility may provide further details of the significance of a document cited against the equivalent. For US equivalents, the USPTO’s PAIR online file inspection facility may be used. Other offices are increasingly introducing online file inspection and online machine translation. Where reports on AU and CA equivalents are considered by the examiner the applicant should be informed that work from either the Australian or Canadian office has been considered. When checking an equivalent granted US patent, the substantive examiner should also consider whether the granted claims have been significantly restricted or clarified in comparison to the claims of the application in suit. Where it appears that the granted claims, if made to the application in suit, would distinguish the invention from the prior art and be prima facie allowable, RC 13 should be used to mention this to the applicant.

18.11

Ideally an applicant should not be confronted during substantive examination with a document which could have been included in the search report but was not. Nevertheless the overriding consideration is the validity of an eventual patent, and if such a document demonstrates that the invention claimed is not novel or is obvious it must be cited.

[Whenever a new document is cited, even if only referred to as an example of common general knowledge, it should be included in an internal search report.]

[ Whenever a document which could and should have been cited earlier is cited for the first time in a s.18 report, an apology should be made on behalf of the Office. In general no reason for the oversight should be offered, though if the document was cited against a corresponding application or patent of the same patent family or if it has come to light as a result of reclassification this should be mentioned. In no circumstances should the blame for the mistake be attributed. On the other hand, when citing for the first time a document which was not previously relevant but has become so as a result of amendment of the specification, this fact may be pointed out. If this citation is made as a result of a partial search, and further searching is likely to be necessary, this should also be mentioned. Furthermore, if a citable document is found as a result of updating search to comply with s.2(3) then this should be mentioned in the s.18 report.

[ If the substantive examiner discovers such a citable document and considers it so relevant that the applicant may not proceed with the application, there being nothing to indicate that the applicant must already be aware of the document, he may defer issue of the s.18 report and instead cite the document using SL5, adding the relevant information regarding the document ie category and relevant passages/claims. The optional last paragraph of SL5 should be included if appropriate. This gives the applicant two months in which to withdraw the application before issue of the report. For all cases, the examiner may wish to set a diary reminder in the PD electronic diary for two months after the issue of SL5. 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.

[ The applicant should be provided with a copy of any non-patent literature (NPL), English language abstracts of foreign language patent documents and, where these have been requested by ticking the box on Form 9A, any patent documents cited after issue of the search report (see 17.104.1, 17.105.2). Furthermore, a copy of the source document (where appropriate) should be similarly provided for the applicant whenever it is substituted for an abstract at the substantive examination stage.]

(see also 18.03.1 to 18.03.6)

18.12

Normally no further searching should be necessary, beyond updating the original search (17.115 to 17.117; for s.89 cases, see 89B.12 to 89B.12.3). The search examiner will have set out a statement of the critical matter and indicated in which databases and classification areas the search has been carried out. Even if the substantive examiner is surprised by the fact that few (or no) documents have been listed, he should assume (in the absence of any indication to the contrary) that the report of the search includes all anticipations of the critical matter present in the areas searched, although if he knows of a particular relevant document omitted from the report he may cite it. Nor should the search be extended to other databases or classification areas unless there is very good reason for doing so. On the other hand the substantive examiner will have studied the specification more closely than the search examiner and if it transpires that the statement of critical matter was inadequate, or if any of the circumstances referred to in paragraph 17.117 applies, then a further search may be necessary. This could also be the case if reclassification has created a highly relevant place, not available at the search stage and likely to contain documents not covered by the original search, to search for the particular critical matter. If classification terms have been applied to the published document by the European Patent Office, it will normally be desirable to ensure that the field of search includes at least those terms which apparently relate to the critical subject matter (as opposed to supplementary material which might also have been classified). The applicant should be informed if the search has been extended to a field which was not referred to in the search report.

[ Any additional fields of search or citations arising from “top-up” or further searches should be recorded on a top-up internal search report in PROSE; furthermore any newly-cited documents should be issued by the Examination Support Officer together with the examination report (see 17.104.1, 17.105.2).

[ Unless action has been taken under ss17(8) and 18(1A), a further Form 9 (or Form 9A see 17.02) and search fee can only be accepted if the search examiner has reported that the application relates to two or more inventions, and then only in respect of claims present in the application at the time of the main search. Following a search report on the first of two inventions identified by the search examiner on an application, the applicant may cancel the searched claims and file a Form 10 together with a further Form 9 or Form 9A in respect of the remaining claims. In such a case the fee paid on the further Form 9 or Form 9A is not refunded; however, the further search can be carried out in advance of substantive examination. If, in such a case, Form 9 or Form 9A is not filed, it may be requested under ss.17(8) and 18(1A) at the substantive examination stage see 18.03.3. When a search report has been issued in respect of the first invention in a divisional application, despite a report in respect of this invention having already issued in connection with the parent application - see 18.03.3.]

18.13

If documents have been cited at the search stage and no amendment has been made, it is up to the substantive examiner to decide whether to carry out at once any further searching which is necessary or whether to defer it. If any necessary further search is deferred, the applicant should be informed.

Priority dates: Section 2(3)

18.14

As a result of the practice referred to in paragraph 17.74 the search report may include documents which may or may not in fact form part of the state of the art, depending on what is the priority date of the invention under examination and/or of the potentially citable matter. Further such documents may be found in the course of updating the search. In addition, if the applicant files a late declaration of priority (see 5.26.1) after search, the search report may resultingly include documents which no longer form part of the state of the art (see 17.82). The examiner should therefore consider whether the documents in the search report still form part of the state of the art. A document cannot be disregarded as a citation simply because the application in suit claims priority from it (see 5.25.1) and 5.26) and 15.22). At examination the practice set out in paragraphs 18.15 to 18.20 should be followed when a potential citation was published on or after the declared priority date or filing date of the application being examined.

18.15

If the potential citation is a UK patent application, or a European or international application designating the UK, and demonstrates lack of novelty, a prima facie determination of the priority date of the invention under examination (see 5.20-5.25.1) should be performed if possible. Normally only a cursory examination of any priority documents will be necessary. If any priority documents (or verified translations or declarations - see 5.11) have not yet been filed then the matter should provisionally be resolved against the applicant. Similarly, if there is any other doubt about the matter, either because it can be argued that the invention is not supported by the disclosure in the priority document, or because the priority document contains a reference which suggests that it might not be the earliest relevant application (for example if it is a US continuation-in-part or if it contains a reference to an earlier application), then the matter should provisionally be resolved against the applicant. If a prima facie priority date cannot be determined or if the prima facie priority date is later than the earliest declared priority date (or, where there is none, the filing date) of the potential citation, then the latter should be formally cited. No attempt should be made at this stage to establish the priority date of the invention in the citation. If the dates are such that there is a possibility that the applicant may be able to show that the priority date of his invention is not later than that of the cited matter by establishing or arguing for his own declared date and/or by attacking that of the citation, he should be invited to do so; if he does, then the substantive examiner will have to determine any priority date in question. If the applicant amends to remove the objection of lack of novelty, and the citation could be used to demonstrate the absence of an inventive step, the matter should then be considered as in paragraph 18.16.

Because of the provisions of s.78(5A) an application for a European patent (UK) remains citable under s.2(3) even if it, or the designation of the UK in it, is withdrawn or deemed to be withdrawn. Under the EPC all European patent applications filed on or after 13 December 2007 designate all Contracting States (including the UK) automatically at the date of filing. Every European patent application will therefore become a European patent (UK) application. Section 78(5A) further provides that removal of the UK designation before publication of the European patent (UK) application does not prevent the matter contained in the European patent (UK) application becoming part of the state of the art by virtue of section 2(3). Every European patent application filed after 13 December 2007 will therefore enter the state of the art by virtue of section 2(3) once published. For European patent applications filed prior to 13 December 2007, removal of the UK designation before publication will continue to prevent the matter contained in those applications from forming part of the state of the art by virtue of section 2(3).

r.9(4) is also relevant

[RC1 should be used for formally making the citation see 18.47. If the dates are such that the applicant may be able to argue that the priority date of his invention is earlier than that of the cited matter, RC1A should be added. If there is a possibility that the applicant will be able to show that the priority date of his invention is earlier than that of the cited matter by filing a translation of his priority document (or an equivalent declaration - see 5.11 then RC1C should be added instead.]

18.16

If the potential novelty citation is a document other than a UK patent application or a European or international application designating the UK then it should be formally cited provided that its publication date is earlier than the prima facie priority date (determined as in 18.15 above) of the invention under examination. Similarly, if the citation is a UK patent application or a European or international application designating the UK, but is to be used to argue lack of inventive step but not lack of novelty, then it should also be formally cited provided that its publication date is earlier than the prima facie priority date (determined as in 18.15 above) of the invention under examination. If the applicant in his response asserts that the priority date of his invention is in fact not later than the publication date of the citation the substantive examiner will have to determine the question.

r.9(4) is also relevant

[Formal citation should be made using RC1 or RC3 as appropriate see 18.47, and the appropriate one of RC1B or RC3A should be added. If there is a possibility that the applicant will be able to show that the priority date of his invention is earlier than the publication date of the cited matter by filing a translation of his priority document (or an equivalent declaration - see 5.11 then RC1D or RC3B should be added instead.]

18.17

r.8(1) and (2) 18.17 are also relevant

If, in order to determine the priority date of the invention under examination, the substantive examiner needs to consult a document referred to in the priority document, he should ask the applicant to provide a copy, with a translation if necessary. If it transpires that the document in question is in the office on the file of another application, the examiner should consult that file. If the priority application number and document itself if required (see 5.08 to 5.10) has not been provided and there is still time to do so, confirmation of the priority date must be deferred until the document is provided.

18.18

If it becomes necessary to consult the priority documents of a cited European (UK) application and, exceptionally, it proves impossible to obtain a copy before the end of the compliance period, the applicant should be informed that the examiner does not have immediate access to the priority documents and may have to resume action after grant. Similarly, the applicant should be informed of possible action after grant if a translation of a priority document or declaration needed to establish the priority date of a cited EP(UK) application has not yet been filed (see 73.02).

[Copies of priority documents (other than UK applications) of cited EP (UK) applications and of translations, if any, of the priority documents into one of the three official languages of the EPO can be obtained from the European Patent Register online file inspection service (queries about the European Patent Register should be directed to CIMS (Document Supply) on ext 4329). When the priority date of the EP (UK) application cannot be established in time, and the applicant is so informed at the same time as citation is made, RC22 should be used (or RC22A if there are other objections outstanding); if citation has already been made, EL22 should be used. RC22A should also be used when there should be plenty of time left for obtaining copies of the priority documents from the EPO.]

18.19

When it appears to the substantive examiner that the application under examination should be cited against the potential citation, he should take steps to ensure that the matter is taken into account by the relevant examiner.

18.20

ss.89(1) and 89B(2) r.66(1), (2) are also relevant

An international application can form part of the state of the art by virtue of s.2(3) only if it has fulfilled the conditions for entry into the national phase (see 2.30 and 89B.04) or if s.79(2) is satisfied in the case of an international application treated under the EPC as an application for a European patent (UK) (see 79.03). If at the time the potential citation is under consideration it is not possible to establish whether these conditions have been met, the potential objection should nonetheless be brought to the applicant’s attention. However, no formal objection can be raised until it has entered the national or regional phase designating GB. In the event that no objections remain save that a PCT application would anticipate one or more claims but that it has not yet entered the national or regional phase, the application may be sent to grant and action taken under section 73(1) if and when it does so.

[Optics can be used to determine whether an international application has entered the national phase. The necessary information can be accessed using the DIS EQU function and entering the WO number. The resulting display of a UK number indicates that the international application has entered the national phase. The European Patent Register can similarly be used to determine whether an international application has entered the regional phase. The latest dates by which an international application would normally be recorded on the relevant database as having entered the national or regional phase are as follows:

Optics – UK designated: 34 months after the priority date or, if none, the filing date

European Patent Register – EP(UK) designated: 40 months after the priority date or, if none, the filing date.

[ If the international application has not entered the national or regional phase at the time of writing the examination report, RC43 should be used to warn the applicant of the potential citation. The PROSE system will then generate a CAV2C caveat form to monitor the progress of the potential citation. At the appropriate time, the examiner will be sent the completed CAV2C form, which will indicate either that the international application is now citable under s.2(3) (having entered the national or regional phase) or that it is not citable (having never entered either the national or regional phase). The examiner can then take the appropriate action, which may be after the grant of the patent - see 73.02-73.04. Where the application is a PDAX dossier the examiner should record the details as an action. The Examination Support Officer will print out the caveat form and send it to the Caveat section. When the caveat form is returned to the examiner, the outcome should be recorded as a further action in PDAX. If further details are required they can be added to a minute and/or a copy of the actual caveat form and the form sent to Index and Scanning with a request to import the caveat into the dossier.]

Common general knowledge; non-documentary disclosure

18.21

The search report is concerned solely with documentary evidence, though in some cases the substantive examiner may be able to argue (at least in the first instance) that an invention claimed is not novel or is obvious on the basis of common general knowledge which is sufficiently well-known not to need documentary support, either on its own or in combination with any documents cited (see 3.45 and 3.62).

18.22

Common general knowledge can in some cases be regarded as implicit in the disclosure of a cited document, so that while certain essentials of a claim being considered may not be explicitly disclosed in the citation, it may be possible to argue that an earlier invention would, as a matter of normal practice, be performed in a way falling within the scope of the claim under consideration. This would have the effect that the prior document may then be cited on the grounds of lack of novelty rather than in support of an obviousness objection (though it may be advisable to explain the reasoning behind such an objection). It also renders citable such a document which forms part of the state of the art by virtue of s.2(3).

18.23

If it is found that an admitted display of the invention not within s.2(4)(c) has occurred or that in respect of a display falling within s.2(4)(c), no written evidence under r.5(4) and (5) has been filed within the prescribed period (see 2.40), and the matter displayed thus appears to fall within the state of the art as defined in s.2(2), objection should be raised under s.1(1)(a) or (b) as appropriate.

Prior use

18.24

If the substantive examiner is aware, either from personal experience or from information from another examiner (see 17.54 and 17.91) or from a member of the public (see 21.12-21.13), of an instance of prior use which is apparently destructive of the novelty or inventive step of the invention claimed, all the relevant facts should be communicated to the applicant, provided sufficient circumstantial details of the prior use are available to enable the applicant to make his own independent enquiries. For example it might be reported that an article having particular features was produced by a named manufacturer, under a particular name or identifying reference, or that such an article was purchased by a named person at an identified shop on or about a specified date. If prima facie evidence of prior use is put to the applicant he must respond (Zannetos’s Application, BL O/119/96). A vague or anecdotal allegation of prior use should however not be pursued. (For details of the standard of proof required in cases of alleged prior use, see 2.29.1).

[ If the applicant does not admit prior use and is unwilling to amend it will not normally be possible to pursue the matter. In no circumstances should the substantive examiner offer to make the anticipatory matter (or a drawing or photograph of it) available to the applicant or to third parties, unless provided by a member of the public. This is in order to avoid the involvement of the examiner in his personal, as opposed to his official, capacity in the patent proceedings. Any request or demand that an examiner should give evidence as to prior use, whether orally or by affidavit or statutory declaration, should be referred to the Director of Patents. ]

Examination for inventive step

18.25 [moved to 3.48]

18.26 [moved to 3.49, 3.64 to 3.65]

18.27 [moved to 3.66]

18.28 [moved to 3.54]

18.29 [moved to 3.50, 3.60]

18.30 [moved to 3.62]

18.31 [moved to 3.63]

18.32 [moved to 3.70]

18.33 [moved to 3.71]

18.34 [moved to 3.55, 3.69]

18.35 [moved to 3.57, 3.64]

18.36 [moved to 3.68]

Plurality of invention

18.37

The substantive examiner must consider whether the claims relate to a single invention or group of inventively-linked inventions (see 14.157 to 14.168). He should take into account any views expressed by the search examiner (see 17.106 to 17.110) but is not bound by these and must make up his own mind on the subject; he should hesitate however before raising objection if the search examiner has considered the question and decided that the claims do have unity of invention.

[The substantive examiner should consider offering an apology on behalf of the Office when raising an objection to plurality of invention if the search examiner decided the same claim represented a single invention.]

18.38

When there is plurality of invention, the substantive examiner should decide which of three courses of action to take at the first action under s.18. The course of action adopted should be that which is likely to be the most efficient in the particular circumstances of the case. Firstly, the examiner may decide to perform the full substantive examination at that stage. If substantive examination is performed an objection to the lack of unity of invention should be incorporated in the report. Secondly, the examiner may decide to defer consideration of claims relating to a second or subsequent invention. If so, the applicant should be informed accordingly. If no search has yet been performed in respect of the second or subsequent invention, the applicant should be reminded of this fact. Thirdly, substantive examination may be deferred entirely and a preliminary report issued under s.18(3) - see 18.39 below.

[ The aim should be to perform the full substantive examination if it is practicable to do so. Consideration of the novelty or obviousness of claims relating to a second or subsequent invention should be deferred if the claims in question have not been searched. However consideration in other respects should be deferred only if the amount of time or the difficulty involved in considering all of the claims is likely to be excessive.

[ Objection to plurality of invention should generally be made formally using RC6 (or RC6PA for private applicants). If however the fault appears to lie merely in infelicitous drafting of the claims, and the specification does not appear to disclose separate inventions, and it is thought undesirable to encourage division, RC6 need not be used or the reference in it to division may be omitted. The reference to division should also be omitted if less than three months of the compliance period remains and so the deadline for filing a divisional application under r.19 has passed. RC6 should not be used if it seems likely that plurality is present but it is difficult to disentangle the inventions specified in a large number of independent claims or the claims are too obscure. In this case the report should contain some other reference to s.14(5)(d) and/or use of its wording. RC7PA should be added to RC6PA if division is to be suggested to private applicants. RC6A should be added if only the first invention has been searched. ]

18.39

CoP is also relevant

The examiner may consider deferring substantive examination entirely when more than one invention has been searched and it is not clear which invention the applicant is likely to pursue, or when none of the inventions has been searched, or when claims are of an unduly complex nature not meeting the points laid out in the Code of Practice. Where a formal objection arises under s.14(5)(d), a preliminary report should be issued to this effect. RC16 may also be added to this preliminary report to refer to points in the Code of Practice. The applicant should be informed that further substantive examination is deferred until the application has been amended to meet this objection. Where no formal objection arises under s.14(5)(d), RC16 should be used to refer to points in the Code of Practice. The period specified for response under s.18(3) should be four months unless the substantive examination has been combined with the search, when the period for response should be set to expire two years after the priority date, or if none, the filing date. The period specified for the next report under s.18(3) should be two months or set to expire two years after the priority date, or if none, the filing date, if this is later for combined search and examination cases. If the application is in order as a result of the response to the preliminary report, and the applicant has indicated a possible intention to file a divisional application, the applicant should be given an opportunity to file the divisional application before the “parent” is granted (see 15.46). In any event, except for applications where the “3 month rule” can be waived (see 18.07.2), no s.18(4) report should be made until 3 months after s.16 publication.

[ Deferred examination should arise only if consideration of all of the claims would involve an inordinate amount of work. If the application is in order as a result of amendment in response to a preliminary report of plurality of invention, EL3 should not be issued, since the preliminary report constitutes a report under s.18(3). (See also 18.47).

[If the claims are amended in response to a plurality objection so that they no longer relate to plural inventions, objections are outstanding and no divisional application has been filed, PROSE clause RC26 may be inserted into the subsequent s.18(3) report. It is irrelevant whether the applicant has foreshadowed a divisional application or not, see see 15.46.]

18.40

For a combined search and examination case, in the situation where it would be possible to perform the search but the examination is to be deferred for the reasons set out above, then both the search and examination should be deferred.

[The procedure set out in 17.94.10 should be followed, with a suitably modified version of SE2 (SE2PA) being sent to the applicant.]

18.41

(r.27(3)-(6) is also relevant)

A further Patents Form 9 (or Form 9A see 17.02) and search fee can only be accepted if the search examiner has reported that the application relates to two or more inventions, and then only in respect of claims present in the application at the time of the main search (see 17.111). If plurality is first reported in a report under s.18(3), issued after the search report under s.17, a further Form 9 or Form 9A and search fee should not be accepted even if the claims now sought to be searched were in the application as filed; at this stage the applicant should be asked to amend to overcome the objection. However, a further Form 9 or Form 9A and search fee can be accepted when the search and examination are combined and it is made clear in the substantive examination report, issuing with the search report, that plurality is notified under s.17 (17.108). In such a situation, if a response to the examination report has been received then the examiner should conduct a re-examination taking into account the results of the further search. If no response to the examination report has been received then it is open to the examiner to decide whether it would be most efficient to conduct a re-examination in light of the further search results, or to await a response to the outstanding examination report. Re-examination at the time of conducting the further search may be particularly appropriate if the compliance date is close.

If the search examiner has reported plurality of invention and the applicant has filed one or more further Forms 9 or Form 9A, but the substantive examiner decides not to raise, or, having raised, decides to withdraw, a plurality objection in respect of claims which the search examiner has indicated related to more than one invention, a request for a refund of the fee paid on the further form(s) should be acceded to. Such a refund is made as a matter of discretion and not as a rectification of an irregularity under r.107; it should not be given where withdrawal of the objection is due to amendment of the claims. If, on the other hand, amendment to remove plurality of invention involves deletion of claims to an invention which was searched at the search stage in favour of an invention present at that stage but not searched, a search fee under s.17(8) should be required if a further search is needed at substantive examination, see 18.03.3. See also 18.12.

Other

18.42

r.12 are relevant

The specification should commence with a short and appropriate title and should continue with the description (including a list of any drawings) and the claims, in that order (see 14.48 to 14.51). The substantive examiner should also consider whether those requirements of r.14 and Schedule 2 which are not designated as formal requirements (see 14.54, 14.57) have been complied with. Beyond that, the form of the specification is a matter for the applicant, provided that s.14(3) and (5) are complied with.

[RC10 may be used to object to an inappropriate title. If the grant title exceeds 158 characters, the examiner must seek the applicant’s agreement to a shorter one (because Optics cannot accept longer titles). Although this is best done during the course of the normal substantive examination process, if it has been overlooked until the application is ready to proceed to grant, the agent’s/applicant’s agreement to a shorter title should be still sought by telephone at that stage (see also 18.86).]

18.43

Objection should be raised under s.14(5)(a), (b) or (c) if the claims contain obscurities or ambiguities or are not clearly consistent with the description. Attention should be focused principally upon the main claim(s). The extent to which appendant claims are scrutinised at substantive examination is a matter for the substantive examiner’s judgement; much will depend on the number of claims and their particular appendancies. The following principles are given for guidance:

(a) If a main claim appears to define a patentable invention all that is generally required with regard to its appendant claims is to check that they are supported by the description (particularly where they were filed later than the application - see 14.145) and to detect any blatant errors or any matters which cast doubt on the scope of the claims, such as a claim which is formally dependent on another but is not within its scope (cf 14.134). Minor matters which would not lead a skilled reader to misconstrue a claim or which would not be pursued if no amendment were forthcoming, should not be raised.

(b) When objection is to be raised to the main claim on grounds of lack of novelty and/or inventive step, and

(i) the substantive examiner can conclude, after considering the search report (and any other prior art known to him), that objection also arises in respect of some or all of the appendant claims, he should report accordingly;

(ii) the substantive examiner readily identifies an appendant claim on which he has found no objection on this account, he should include the fact, explicitly or by implication, in his report, without committing the Office for the future since there may be pertinent prior art not known to the examiner;

(iii) it is not clear to the substantive examiner what amendment of the main claim is likely to be made to meet the objection, examination of some or all of the appendant claims (and any further searching) may be deferred.

(c) The applicant should always be able to deduce from the substantive examiner’s report which claims have been considered by the examiner and with what result, and of which claims consideration has been deferred.

It should be remembered that an omnibus claim may be an independent claim and must be considered separately (see 14.124 to 14.125).

[Time should not be wasted on detailed checking of appendant claims; for example, the effect of complex appendancies does not need to be established. A cursory inspection of claims filed originally with the application will often suffice if the main claims are acceptable.]

18.43.1

CoP is also relevant

In instances where the claims do not meet the points laid out in the Code of Practice, the substantive examiner may consider deferring full substantive examination. Where a formal objection arises, a preliminary report under s.18(3) should be issued objecting under s.14(5)(a), (b) or (c). RC16 may also be added to this preliminary report to refer to points in the Code of Practice. The applicant should be informed that further substantive examination is deferred until the application has been amended, and/or comments have been made by the applicant, to meet the objections raised. The procedure is otherwise as in 18.39. Where no formal objection arises under s.14(5)(a), (b) or (c), RC16 should be used to refer to points in the Code of Practice.

18.44

s.76(2) is also relevant

Objection should be raised to any obscurities which hinder the understanding of the invention or cast doubt upon the scope of the claims, or to any passage which is inconsistent with the claims (see in particular 14.144 to 14.148). Objection should bemade under s.14(5) in preference to s.14(3) where this is possible (see 14.88). Where appropriate a warning should be added that any amendment to meet the objection must not add subject-matter. Minor matters which would not lead a skilled reader to misconstrue a document or which would not be pursued if no amendment were forthcoming should not be raised.

(For references in the specification to other documents, see 14.93 to 14.96; to prior art, see 14.91 to 14.92; to Trade Marks, see 14.97-14.101, 14.137.

[No more of the description should be read in detail than is necessary, for example to establish sufficiency and support for the claims. Objection should not be made to consistory clauses merely because they are not in literal agreement with the main claims. If the examiner considers it helpful to suggest what form of amendment would be regarded as satisfactorily meeting an Official objection, he should think carefully about the suggestion before making it. Examples of minor matters which should not be raised are inconsequential incorrect or missing reference numerals or leading lines, missing words, repeated phrases, and spelling errors.]

s.76(2) s.14(5)(c) and s.76(2) are also relevant

18.45

Objection must be raised if amendments to the specification result in the application disclosing matter which extends beyond that disclosed in the application as filed (see 76.03 to 76.23), or if amended claims are not supported by the description as filed (see 14.142-14.156). Original claims filed after the date of filing the application should be treated in this latter way (see 14.145); in either case a warning should be given against adding subject-matter to the description.

[Added matter introduced by amendments submitted before, or in response to, the substantive examiner’s first report may be objected to using RC9.]

18.46

As far as substantive examination is concerned, the claim to priority should not be questioned unless it becomes necessary to do so in considering the viability of a potential citation (see 18.14 to 18.16).

 
Section 18(3)
If the examiner reports that any of those requirements are not complied with, the comptroller shall give the applicant an opportunity within a specified period to make observations on the report and to amend the application so as to comply with those requirements (subject, however, to section 76 below), and if the applicant fails to satisfy the comptroller that those requirements are complied with, or to amend the application so as to comply with them, the comptroller may refuse the application.

18.47

If it is found, either at the first substantive examination or following subsequent amendment, that there are objections outstanding, the examiner’s report to the comptroller is issued to the applicant and should specify the period within which a response should be made. The report should usually deal first with fundamental matters such as patentability (other than questions of novelty or obviousness) and unity of invention (see 18.37 to 18.40), if they arise, then raise formally any objections based on lack of novelty or inventive step (see 3.48 to 3.71), and thereafter deal with lack of clarity and inaccuracies and inconsistencies in the claims and description in order of importance (see 18.42-18.45). The object should be to present the objections in a logical order. The report should also include any report from the formalities examiner (see 18.04). The specification is not returned to the applicant with the report.

[When the application leaves the examining group, the appropriate processing status should be recorded on Prose. For further information on processing statuses see Optics Manual (Patents) paragraph 5.4.7. The most common Optics processing statuses are listed below for convenience:

2: Out for ABS should be used when search has been requested but is being deferred awaiting action from the applicant (“Action Before Search”) - see MoPP 17.03 & 17.94.5 to 9. It should only be recorded provided no formal search has been carried out (and no decision that no search is possible has been made).

3: Searched - Do not s.16 publish yet should be used when a formal search or CS&E has been carried out but for some reason the examiner needs to see the file again before it is sent for publication. This is most often used when no abstract has yet been filed.

4: No search possible applies when the formal search report is to the effect that no search was performed.

5: May be s.16 published will apply to the majority of completed searches and CS&Es (including divisionals). It applies when the application will be in order for A-publication with respect to the examiner’s requirements once the formal search report is ready to be issued. It also applies to PCT national phase applications which have been classified and are ready for republication. This status should also be used when an application is in order for publication having previously had a status recorded as in 2 or 3 above.

8: Out for ABE should be used when examination has been requested but is being deferred awaiting action from the applicant (“Action Before Examination”).

9: Disposed of - In Order should be used when an intention to grant letter has issued, including when the application is in order at first examination. This status should not be used until after “A”-publication is complete.

10: Disposed of - Not in Order should be used where the application is not in order at first examination. This status should not be used until after “A”-publication is complete.

11: Awaiting applicant’s response generally applies when amendments which do not put the application “in order” have been received and so a further examination report is issued to the applicant. This status should not be used if status 9 or 10 has not been previously set.

12: Ready for Grant should be recorded once the application is finally in order and all “B” stage revision of the Optics data has been completed, and the latest date for reply given in the intention to grant letter has passed. (This status also applies to an application which has been recalled from grant (see below) but is again in order for grant.)

13: Not Ready for Grant is used when an application which has been recorded as Ready for Grant needs to be recalled. It is essential to act promptly when using this status, otherwise publication may have gone too far to allow automatic intervention. This status may be recorded by the Publication Liaison Officer in Formalities.

[ Unless the search and examination have been combined or an abbreviated examination report (see 18.47.1) is issued, the first report under s.18(3) should be issued under cover of examination letter EL1. If the report is issued 3½ years or more after the earliest date of the application, the letter should normally specify a period for reply of two months. For reports issued less than 3½ years after the earliest date, the letter should normally specify a reply period of four months (see 18.49). Subsequent s.18(3) reports should be issued using EL2, specifying a period of two months or less for reply (see 18.49) and making reference to the date of the agent’s letter replying to the previous report. For combined search and examination, the report should issue with SE1 or SE4. Furthermore, if the examination letter is issued within three months of the end of the unextended compliance period, ELC1 should be added. If it is issued in the two months extension obtained by filing Form 52, ELC2 should be added. If it is issued within two months after the end of the compliance period so that filing of Form 52 is necessary, add ELC3. If the examination letter is issued after the end of the extended compliance period letter EL5 should issue (see also 20.06).

R.30(2) is also relevant

[ When the first report (or in the case of a divisional application, the first report on the earliest ‘parent’ application) is issued later than three years and six months from the earliest date, then ELC4 (or ELC5 for the divisional) should be added to EL1. This reminds the applicant that the unextended period for getting the application in order will expire twelve months from the date of issue of the first report (or, in the case of a divisional application, twelve months from the date of issue of the first report on the earliest ‘parent’ application). Provided that the relevant checkbox is ticked confirming that this is the first examination report for the case, Prose will add the ELC4 letter clause automatically during creation of EL1 letters created more than 3 years and 6 months from the earliest date. As discussed above, for such letters, the period for response should normally be set to the Prose default period of 2 months. If ELC4 is not added during creation of the letter it can still be added to the letter after creation. If ELC4 was omitted from a first examination letter issued later than three years and six months from the earliest date, then the applicant or agent should be informed of the correct compliance date at the earliest possible opportunity, and the examiner should arrange for the compliance date to be set correctly on Optics. If this mistake becomes apparent at the second examination, then a clause should be added to the EL2 letter to inform the applicant that the normal unextended period allowed for complying fully with the requirements of the Act will end 12 months after the date that the first substantive examination report was sent.

[ Whenever the specification includes amendments not previously reported on, RC8 or SC1, as and when appropriate (see 18.08), should usually be the first item in the report, indicating the date of the letter which accompanied the amendments. When documents are formally cited in support of an objection of lack of novelty or inventive step, RC1 or RC3 should be used (or RC5 if the claims are obscure), with RC1A, RC1B, RC1C, RC1D, RC3A or RC3B added if appropriate (see 18.15 to 18.16).

[ Documents cited or otherwise referred to in a s.18(3) report should be itemised by number etc, and passages considered to be relevant by the substantive examiner should also be identified, so that the report is complete without recourse to the search report under s.17. References to published or reported judgments and decisions should fully and clearly identify the report etc in question in the normal way, such as in the Table of Cases of this Manual.

[ The examiner should produce the examination (covering) letter and the s.18(3) report using numbered paragraphs and descriptive sub-headings as appropriate. Examination letter clauses should be inserted in the examination letter after the paragraph relating to the need to file amendments or make observations on the report.

[ The examination report should not refer (except in certain limited cases relating to divisional applications) to objections which might arise if a presently unpublished application by the same applicant (or otherwise) that the examiner may be aware of were to be published. In these circumstances the examiner should create a minute and raise the objection if and when the other application is published. See 118.16.

[ After preparation of the s.18(3) report and examination (covering) letter, the substantive examiner should send the appropriate PDAX message to their revising officer, Deputy Director or Examination Support Officer, as appropriate. Any additional instructions to the Examination Support Officer should be written on the checklist in Prose. The Examination Support Officer should then import the examination report(s) and covering letter(s) into the dossier and issue the required copies of each to the applicant.

[ When a substantive examiner forwards a case for issue of a preliminary report (see 18.39, 18.43.1, and 18.48), he should send the appropriate PDAX message to his Deputy Director.

[ When, during substantive examination, a letter is to issue which does not embody a report under s.18 (eg an answer to an agent’s enquiry, or the offer of a hearing), the substantive examiner should ensure that the letter is headed “Patents Act 1977”, the application number is identified and, if appropriate, the latest date for reply is specified.

18.47.1

If an examination opinion identifying major defects (see 17.83.3) has been issued at search stage and no response has been filed, the first report under s.18(3) should take the form of an abbreviated examination report (AER) which essentially reproduces the examination opinion. For international applications entering the national phase where the International Search Report or International Preliminary Report on Patentability (IPRP) indicate that major amendment is required, if the examiner is in agreement, an AER based upon information in these reports should be issued at the same time as reviewing the IPC and applying the CPC classification prior to re-publication of the application (see 89A.14.1) or when national phase examination takes place (see 89B.15.1. Where an AER is issued, the top-up search should be deferred (if required – see 89B.12.1) until the application has been amended.

[Letters EL1A or EL1B should be used to accompany an abbreviated examination report (AER), while letter EL1C itself acts as an AER. The reply period is usually two months for EL1A (AER issued following no response to an examination opinion), and four months for EL1B (AER issued for PCT applications without an international preliminary report) and EL1C (AER based upon an international preliminary report on patentability). A shorter reply period for EL1B and EL1C may be specified by the examiner if this is considered more appropriate. Where the EL1C letter is issued more than 3 years and 6 months from priority, the reply period should be two months. The AER should use clauses selected from EC1 to EC8. If an AER based on an examination opinion or an International Preliminary Examination Report is issued more than 3 years and 6 months from the priority or filing date, ELC4 should be added to the EL1A or EL1C letter to set the correct compliance period; Prose will do this automatically if the relevant checkbox is ticked.]

[As the first action under s.18(3), the issue of an abbreviated examination report (AER) should be booked out as a completed examination (see 89A.14.2).]

18.47.2

For applications that qualify for combined search and examination but for which search would not serve a useful purpose (see 17.94-17.101), an abbreviated examination report should be issued. This combined report under s.17(5)(b) and s.18(3) should inform the applicant of the reasons why the application has not been searched. Once the report is issued there will be no refund of the search or examination fee, therefore consideration should be given as to whether action before combined search and examination or action under s.17(5)(b) is most appropriate (see 17.94.5).

[Letter SE2 should accompany the AER. The period specified for reply should be set to expire two years after the priority date, or if there is none, the filing date.]

18.48

Occasionally the substantive examiner may decide that the specification is so obscure that useful examination is impossible. In such a case, he should report to this effect under s.18(3), stating briefly the nature and extent of the obscurity and saying that further examination is deferred pending amendment. In such a case the period specified for reply should be four months or for combined search and examination cases set to expire two years after the priority date, or if there is none, the filing date (see 18.49 below).

Period specified for response

18.49

Under s.18(3) the comptroller has power to refuse an application where the applicant fails to file a satisfactory response to an official report within the period specified therein. This period is set at the examiner’s discretion, but there are certain standard periods which should normally be set unless the circumstances dictate otherwise. Our practice on periods of response for first examination reports is set out in a Practice Notice issued on 6 December 2010, and reproduced in the “Relevant Official Notices and Directions” part of this Manual. For first examination reports (other than combined search and examinations) issued less than 3½ years after the earliest date of the application, the standard period for response is four months from issue of the examination report. Where the first examination report is issued 3½ years or more after the earliest date of the application, the standard period for response is two months from the date of issue of the examination report. The reason for this shorter period for response is that in these cases the applicant has only 12 months to get the application in order, and so a longer response period is likely to lead to a very compressed timetable in subsequent actions, particularly as such periods are extendible as-of-right by 2 months – see 18.53. These norms of four months and two months are not rigid ones, and longer or shorter periods may be set if the circumstances warrant it; for example, first examinations issued very close to 3½ years after the earliest date also clearly give rise to the same risk of problems with a compressed timetable for getting the case in order.

Second or subsequent examination reports have a standard response period of two months, although again this should be altered if the circumstances require it. Thus the period of two months could be increased to three months if a major objection was inadvertently not previously raised, or if a document is cited for the first time. Alternatively a shorter period may be set if only minor objections are made in a second or later examination report. It is imperative that the remaining compliance period is considered when setting response periods for further examination reports. When the unexpired portion of the normal compliance period is less than twice the appropriate s.18(3) period, only one half of the remaining time should be specified rounded down to the nearest month or, when less than six months remain, down to the nearest week. In this latter case the period should be specified in weeks and not in fractions of a month. When less than six weeks remain, the substantive examiner should use his discretion.

For combined search and examination cases (other than divisional applications – see 15.46) the period for response to a first report under s.18(3) should be set to expire two years after the priority date, or if none, the filing date. The periods set for response to any further reports under s.18(3) should normally be two months (following the approach described above), unless any such period would expire before the date previously set for reply to the first report. In that case the period once again should be set to expire two years from the priority date, or if none, the filing date. It is possible for a late declaration of priority to be made (see 5.26) after a combined search and examination report has issued, in which case the examiner should reissue the report under s.18(3) bearing a reply-by date calculated from the newly declared priority date. The relevance of citations should not be re-assessed at this point but will need to be considered when a response to the report is received. Where s.21 observations are filed near to the end of the compliance period, that period may be extended as described in 20.02.1 and, if so, the report should inform the applicant of the extension and the period for response should be set accordingly.

[When the specified period is to differ from the default period set by PROSE, the substantive examiner should determine the correct period and adjust the latest date set for reply accordingly.]

18.50

Occasionally a further report under s.18(3) may be sent raising additional points before a reply to an earlier report is received. This may happen if an agent’s letter crosses with the report or if a further citation is found. When this occurs the applicant should not only be informed of the period for reply to the further report but also be reminded of the period for reply to the earlier report. When the two reports are on the same or related matters it is preferable that the two periods should be arranged to expire at the same time. Thus, if there is sufficient of the period already specified remaining, the period for reply to the further report may be set to expire at the end of the period already specified for the earlier report. Alternatively, in appropriate cases, the first period may be extended to the end of the period specified for the further action. Only exceptionally should the period specified in respect of the further action expire before the end of the period specified for the earlier action.

18.51

[Deleted]

18.52

CoP is also relevant

Although s.18(3) gives the comptroller the power to refuse the application if he is not satisfied that any objections have been overcome, this power will not be exercised where the applicant has made, within the specified period, an attempt to advance the case towards a final decision as to its allowability; this attempt can be argument, amendment, a request for hearing or a request for interview. Merely filing requests for further searches under s.17(6) does not address objections raised under s.18, and therefore is not an attempt to advance the case. Similarly where a report under s.18(3) is accompanied by the offer of a hearing, a response which merely declines the offer is not an attempt to advance the case (see also 18.80.1). Normally a proposal to amend the claims only (leaving consequential amendment of the description and drawings to be done when the claims are settled) would be regarded as such an attempt. A request to defer amendment of the description until the independent claims have been agreed upon should therefore be considered favourably. If however the response to the examination report is such that it cannot be regarded as such an attempt the applicant should be warned in writing that refusal is contemplated unless the outstanding matters are addressed within two months of the expiry of the period for reply originally specified (or the compliance date if that is sooner). If this fails to elicit a satisfactory response, he should be formally advised that it is proposed to refuse the application as provided by s.18(3), but that before this is done he will be given an opportunity to be heard in the matter, and a hearing may be appointed (see 18.79-18.80 for the relevant guidance). If no reply is received to the offer of a hearing the application may be allowed to lapse at the compliance date (see 18.79 and 20.03 for further details).

18.52.1

If a third party requests in writing that an application be refused because the applicant has failed to file a satisfactory response to an official report within the period specified therein (taking into account all possible extensions of time), the applicant should be advised that since they have failed to respond within the period for response the comptroller proposes to refuse the application. The third party’s letter should also be drawn to the applicant’s attention. A final decision to refuse an application should be made with regard to all the facts of the case, and the applicant should therefore be offered the opportunity to provide reasons for their lack of response and/or request a Hearing. See procedure in 18.54.

18.52.2

If, however, an enquiry is received from a third party, merely asking whether the application will be refused, the comptroller should respond to the third party to inform them of the compliance date of the application in question and that our normal practice would be to treat the application as refused at the compliance date if no response has been received from the applicant.

Extension of the period (an aide-memoire is provided in Annex B)

18.53

r.109(2), s.117B(3), r.109(1), s.117B(4) and s.123(3A) are also relevant

An automatic extension of two months (or to the end of the compliance period, as prescribed by rule 30 for the purposes of section 20, if this expires sooner) to the period set in an official report can be obtained by requesting it in writing (see also 18.53.1). The request must be received before the end of the period as extended. Only one extension of this type is available. Further extensions may be available at the examiner’s discretion if an automatic two month extension has already been granted. Any request for a further extension must be made before the end of the period as already extended and an adequate reason must be given (see 18.56 to 18.57.1). Under Rule 109 of the Patents Rules 2007, there is no longer a requirement for a request for a further extension under s.117B(4)(b) to be made in writing. However this may be required if the examiner feels that a written request is appropriate in the circumstances. A discretionary extension of one month (in addition to the automatic two months) may be granted readily however any longer or further extensions should be accompanied by a very good reason. Evidence to substantiate any reason given can always be requested if considered necessary.

[ When an automatic extension of two months is requested the formalities examiner should create a minute noting that a request has been made, and add it to the dossier. If the request is filed within the two month period the application will be processed in the normal way. Where a response to an examination report is made outside the extended period the application should be referred to the substantive examiner for consideration. He may exercise the discretion provided by section 18(3) to accept the late response rather than moving to refuse the application.]

[ A request for a further extension is referred to the substantive examiner, who should not hesitate to consult his Deputy Director. In reaching a decision whether or not to exercise discretion to extend the period, each case should be considered on its own merits and the contents of 18.54-18.57.1 should be regarded as guidelines rather than rigid rules. The request should normally be answered by telephone or by electronic mail and a minute (or the telephone report or email) added to the dossier. A concise report of the telephone conversation should always be sent and a copy placed on the open part of the file. A report of an email correspondence need not be sent unless specifically requested or if it is necessary to clarify the reasons for refusing an extension, but a record of the email exchange should be placed on the open part of the file. The report should clearly state the extension allowed or the reason(s) for refusal which should be carefully worded bearing in mind the possibility of appeal against a decision to refuse. If the report is necessarily lengthy it is preferable to issue a letter instead of a telephone or email report. In all cases, the reason for the request should appear on the open file, eg in the applicant’s or agent’s letter or s.18 report or telephone or email report. When, after a period for reply under s.18(3) has been specified, the criteria used for determining the period are changed (for example the compliance period is extended or one of the norms set out in paragraph 18.49 is altered) such that if the new criteria has been applied a longer period would have been specified, a request by the applicant for an extension of time to make the specified period up to the longer period should be allowed.]

18.53.1

Requests for extensions of time may be made by email and the Comptroller has directed that such requests be made to the email address pateot@ipo.gov.uk. The Office does not guarantee to recognise requests sent to any other email address.

[All requests sent to the ‘pateot’ email address will receive an automated acknowledgment confirming receipt: requests for an automatic extension will receive no further response because the act of validly requesting the extension is all that is necessary for it to be obtained; when a request for a discretionary extension is received, the Examination Support Officer will send the appropriate PDAX message to the substantive examiner for consideration. Email requests will be noted and imported into the dossier by the Examination Support Officer. They will also check to see if the request has been made on time and that it appears to come from the applicant or appointed agent. If a request is made out of time or apparently not by the applicant or his representative then the procedure of the following paragraph should be followed.]

18.54

s.101 and s.20A is relevant

When a reply is received after the expiry of the specified period and the automatic extension period of two months has passed, the reason, if not already given, should be asked for. If no reason is forthcoming the late response cannot be accepted. Where a reason is provided, the examiner may exercise discretion under s.18(3) to accept the late response, even though no extension to the specified period can be granted. Discretion should be exercised favourably if the examiner is satisfied that the failure to respond was unintentional at the time that the specified period expired. This is consistent with the statutory test that applies to requests for reinstatement under s.20A (see 20A.13 to 16) for guidance on the meaning of unintentional). However, there is no statutory requirement that the failure to respond must have been unintentional in order for the late response to be accepted, and thus the discretion accorded by s.18(3) may be exercised in appropriate circumstances even if this criterion is not met.

18.54.1

After considering the matter (see 18.56-18.57.1) the substantive examiner should report either that the application should be allowed to proceed or that the application should be refused for non-compliance with s.18(3) within the specified period. If the substantive examiner is minded to refuse the application, the applicant should be forthwith informed of the fact and told that, if he wishes, an opportunity will be given to hear him in the matter. A month should be given for reply. If no reply is received the application will be treated as refused under s.18(3) at the end of the compliance period. Where however the applicant asks to be heard, the Deputy Director will take the hearing and may decide either to refuse the application or to allow it to proceed subject to such conditions as he thinks fit. Where an application is refused, and a hearing has taken place, the applicant should be notified in a formal written decision signed by the Deputy Director acting for the comptroller.

[ When a reply is received outside the automatic two month extension period and no request for extension is received, the formalities examiner should add a minute to the dossier and send the appropriate PDAX message to the substantive examiner, who should if necessary consult their group head. In the interests of uniform practice, consultation with the Divisional Director should be freely resorted to. If the two month extension period is exceeded by not more than a de minimis period and the reason given for late response is acceptable the application should be allowed to proceed. If however, the date is substantially exceeded the reason for the late reply should, if not already given, be asked for. If no adequate reason is forthcoming, a report under s.18(3) should issue informing the applicant that the application will be refused unless observations are forthcoming or a hearing is requested.]

18.55

It should be borne in mind that the periods normally specified for response to the first s.18(3) report were determined having regard to all normal conditions, including the availability of an automatic two month extension. While every case must be decided on its merits, the decision in Jaskowski’s Application, [1981] RPC 197, furnishes some guidance in this matter. In that case the applicant’s agent sought an extension on the grounds that delays were inevitably caused by the need to consult US Patent Attorneys who in turn had to seek instructions from the applicant. The hearing officer, in refusing the request, stated “s.18(3) clearly gives the comptroller discretion to extend the specified period but unless a coach and horses is to be driven through the subsection he must have some adequate reason for exercising that discretion which is peculiar to the particular applicant or application in suit. I can see nothing abnormal in the chain of communications in this case… which could be regarded as an adequate reason for extending the specified period”.

18.56

r.109(2) is also relevant

It follows that factors which may be considered normal in relation to all or particular categories of application, eg, the distance of applicant’s location from the UK, the complexity of the subject matter of the application or objections thereto, absence on business or holiday (see Decker’s Application BL O/10/96), and a preference of the applicant to defer response until reports of parallel applications abroad have been received do not constitute good grounds for an extension of the specified period; on the other hand, extreme complexity or remoteness, such incidents as illness of or serious accident to applicant or agent, also fire and explosion, wars, revolutions, etc, and natural calamities, which destroy documents or dislocate normal operations, may do so. Further, when it is necessary for the applicant to adduce technical evidence an extension may be allowed in appropriate cases.

In McDonald’s Application (BL O/71/96), after expiry of the normal period for putting the application in order, the agent requested allowance of a late response to a first s.18(3) report on the grounds that the applicant had been awaiting the results of searches and examinations on corresponding applications filed elsewhere, that he (the agent) was unfamiliar with examination procedures before the Office and that there had been delays because of overseas travel and family illness. In refusing the request the hearing officer noted that family illness might provide an adequate reason but took no account of it because this difficulty arose well outside the period set for response and none of the other reasons put forward for the delay up to that point were sufficient. Extensions of time to await the issue of reports on corresponding applications were also refused in Smart Card Solutions’ Applications [2004] RPC 12. In this case, the hearing officer did not consider that the potential cost savings to the applicant as a small business in avoiding separate responses to the UK and PCT applications by deferring response until issue of the International Search Report an adequate reason for extension as this was not peculiar to the applicant. The hearing officer also pointed out that the public interest should be protected “by ensuring that any uncertainty involving a patent application is resolved as quickly as possible” by not allowing the examination process to be drawn out without good reason for the delay. A particular category of adequate reason is that the applicant is a German firm which has the inventor as an employee and which does not wish to proceed with the application but by German law is obliged to give the employee the opportunity of proceeding with the application on his own behalf, within a mandatory period before terminating the application.

A further, but restricted, category of adequate reason is that where an applicant requests an extension of a specified period (possibly of several months) to carry beyond the date of expiry of the nine months opposition period running in respect of a granted European Patent (UK) equivalent and has indicated that he will not proceed with the UK application if no opposition to the European Patent (UK) equivalent is entered. Provided that sufficient of the compliance period would still remain in order to deal with any objections outstanding on the UK application if it should have to proceed, the request may be allowed to avoid an unnecessary waste of Office and the applicant’s time. So far as delays in (or failures of) communication services are concerned, some protection to applicants may be afforded by r.111, under which ad hoc interruptions and dislocations to a communication service by which documents may be sent and delivered (including the postal service, electronic communications, and courier services) may justify an extension to a period of time specified in the Act or Rules.

[Where correspondence from the Office is reported as never having arrived at its intended destination, or is reported as being misdirected or delayed, this fact should be recorded by sending a minute to the relevant formalities group with any relevant details. Use of r.111 to extend a deadline may only be authorised by the relevant Head of Administration (see 123.47.1).]

18.57

In Jaskowski’s Application, (see 18.55) the agent was seeking an extension without having received instructions from the applicant. The hearing officer indicated that it is the applicant’s responsibility to respond to the examiner’s report. However a failure on the part of the agent to respond within the specified period may be an adequate reason if the failure was due to an exceptional factor as exemplified in paragraph 18.56. It may also be an adequate reason if it is established on the evidence filed that the failure to take appropriate action was due to the fault of the agent.

18.57.1

It is however recognised that even a well-organised system will break down occasionally. An isolated slip in office procedure by the applicant, his agent or his servants may be a good ground as would unusual congestion of urgent work. Account may also be taken of temporary difficulties, such as financial problems faced by an applicant, with a view to avoiding early refusal of an application against the longer term best interests of the applicant. Nevertheless, further extensions of time beyond the automatic two months available (see 18.53) should be the exception rather than the rule. Consequently, the following should be taken as a guideline:

(a) A reason should always be required, but a single further extension of up to a month will generally be given even if the reason is not one of the sort which would be acceptable according to 18.56 above.

(b) Additional requests for extensions of time (whether at the same action or a later one) require a very strong reason and should normally be no longer than a week or the minimum required to overcome the problem encountered.

(c) Extensions of time should be refused or require evidence where an agent or applicant consistently requests extensions to the period for response without good reason being given.

18.58

The length of further extensions in addition to the automatic two month extension is in many cases indicated by the reason for making the request; otherwise a month’s extension is generally appropriate for a further extension. The substantive examiner should, of course, always take into account how much of the compliance period remains.

18.59

s.101 and s.20(1) is also relevant

If a request for an extension is refused, the applicant may request a hearing. If the hearing officer refuses to allow the extension and the specified period has expired the application will be refused under s.18(3). If the period has not expired at the time of the hearing, or if no hearing is requested, no action should be taken until a response to the outstanding objections is received (see 18.53). If no response is received before the compliance date the application will be treated as having been refused (see 20.03) unless both an extension of the compliance period under r.108(2) or (3) and (4) to (7) (see 123.34- 41) and an extension of the s.18(3) reply period are sought and granted.

[Where extension of the compliance period is sought under r.108(3), the Deputy Director should decide that question together with the request for extension of the s.18(3) reply period. The Deputy Director should feel free to consult the Deputy Director of PD/CL about the decision under r.108(3).]

18.60

In order that applicants who simply respond outside the automatic two month extended period should not have an advantage over those who request an extension of time before the end of the extended period, it is essential that the question of an extension should be treated as distinct from that of the content of the response, and should be settled before any amendments and/or observations submitted are considered.

Re-examination

Amendments

18.61

CoP is also relevant

Normally the applicant or agent responds to a report under s.18(3) by filing amendments, and/or observations. Amendments may be filed in electronic form if they are submitted via the Office website, or using the secure online filing system provided by EPO Online Services if the filer has completed the enrolment procedure for that service. Office policy is that amended pages should not be accepted by email. While it is possible under section 124A(3) to exercise discretion to accept documents submitted by email, this should only be allowed in exceptional circumstances and should not be encouraged. The amendments should normally be in the form of new pages or sheets of drawings to be incorporated into the specification. It is helpful if a further copy of the amended pages is provided indicating the changes made either in manuscript on the original pages or using standard word-processing features since this aids identification by the examiner of the changes and where support is provided for them in the description. However minor amendments may be submitted in manuscript on photocopy pages or may be requested in a letter and be effected by the substantive examiner, provided they can be regarded as de minimis (see 14.37-38). Minor amendments to drawings, eg the insertion of a reference numeral, which can be regarded as de minimis may also be effected by the substantive examiner if requested in a letter and in accordance with 14.28 and 14.40-45. Amendments may also be submitted informally, with a view to filing retyped pages when the allowability of the amendments has been confirmed; this practice should not normally be continued in subsequent actions. When no other matters are outstanding and the substantive examiner asks for new pages to be filed, one month should be specified for reply (unexpired compliance period permitting).

[ Care must be taken to ensure that all letters etc are placed on the correct file. Where there are inter-partes proceedings in relation to a patent application (principally proceedings under s.8, 10 or 12) there is a separate Litigation Section file for those proceedings. In such cases, there should be a warning label on the dossier cover and a warning sheet in the dossier table of contents.

[ Amended or new claims received before the preparations for publication are completed are included in the published application (16.16 to 16.19, 19.15 to 19.16). To ensure that the application as filed is published, any amendments of the description, drawings or claims should be annotated appropriately in the table of contents. The substantive examiner should not enter amendments on the original specification before s.16 publication. As with any application on which amended or new claims are filed before the completion of preparations for publication, the formalities examiner should carry out the necessary checks on the new or amended claims. The amended claims should be annotated and a PDAX message, which includes the date on which the amendments were received in the Office, sent to the substantive examiner. The examiner may make manuscript amendments once the application has been published.

[ Any replacement pages filed after publication should be imported into the dossier by Index and Scanning. The formalities examiner will create a new description, claims and or drawings, which will be appropriately labelled, before the case is sent to the substantive examiner. Duplicate new pages should be kept with the letter which accompanied them.

[ When retyped pages are filed solely to meet the requirements of r.14 and Schedule 2, either at the first response or following deferment permitted by the substantive examiner, they should be checked by the formalities examiner for textual consistency with the pages they replace. If the formalities examiner is in doubt as to the authentic text against which to check he should refer the file to the substantive examiner who should either identify the correct text or, if he prefers,carry out the necessary check himself. The formalities examiner will not check the text of the replacement pages when they incorporate amendments which have not previously been written into the specification, or when they have been filed in response to a report containing substantive as well as r.14 objections; in these cases it will be necessary for the substantive examiner to determine whether or not there is added matter or errors.

[The substantive examiner should decide whether any discrepancies noted during checking, either by himself or the formalities examiner, are such as to require a further report under s.18(3). If they are merely minor typographical errors or omissions to which the de minimis rule can be applied he may ignore them or correct them with the applicant’s agreement. Otherwise, new pages should be requested.]

[ Any incoming correspondence on published applications should be checked by the formalities examiner, who should redact certain personal or sensitive information from documents which may be made available for online inspection via Ipsum (the Office’s online patent information and document inspection service). In addition, if the substantive examiner becomes aware of any personal information in any incoming correspondence received after 1 March 2011, he should redact it as necessary. The Enhance feature on PDAX may be used to redact any such personal information. Once this has been done, the following steps need to be taken: “set handle” the redacted version; annotate it as “OLFI”, remove any OLFI annotation from the interim or original version of the letter (and close any interim version); and send a SET PUBLIC message to the formalities group team mailbox and save or close the dossier.]

18.62

Where the amendments do not meet the substantive objections, the substantive examiner should use his discretion in deciding whether to allow compliance with r.14 to be deferred further, having regard to the nature and extent of the amendments required and the unexpired compliance period remaining. If further deferment is allowed, the examiner should include in his next s.18(3) report a reminder that the r.14 objections are outstanding and that compliance will be required as soon as the substantive objections have been met. If, on the other hand, no further deferment is to be permitted, the examiner should state in his s.18(3) report that all further amendments must be filed on new pages complying with r.14.

[ In the case of private applicant cases, if after a request the applicant fails to submit pages complying with r.14 and Schedule 2 and the application is otherwise in order for grant, the application should be referred to the Formalities Manager to approve any necessary retyping in the Office. The applicant should be advised of such retyping and informed that the application will proceed to grant unless an objection to what has been done is lodged within four weeks.]

18.63

s.76(2) is also relevant

The form of the amendments is entirely a matter for the applicant, so long CoP as they do not add subject-matter. However, a full response should be made to each and every objection raised in an examination report through amendment and/or argument so as to progress the application towards grant. (For amendment other than in response to an examiner’s objections, and the timing of such amendments, see 19.13 to 19.22).

18.63.1

CoP is also relevant

Where objections are to be met by amendment, an appropriate explanation should be provided, in particular, how the amendment meets the objection, and how it is supported by the specification as originally filed. The covering letter accompanying the amendments should explain how each objection has been overcome. Where major objections related to novelty, inventive step and other patentability issues have been raised, the letter should point out where support for the amendments lies and give reasons why the amended claims overcome the objections, for example, by stating what is considered to constitute the inventive step in the independent claims.

18.63.2

CoP is also relevant

If the applicant considers an objection in an examination report to be unfounded, detailed reasons which adequately address the issue should be provided in the response. In particular, when responding to an objection to lack of inventive step, the response should assist the examiner in understanding the perspective of the skilled person at the priority date of the invention. Rebuttals which include comments such as “the invention is not obvious because no-one has done it before” and “the examiner has fallen into the trap of ex post facto analysis” and provide no technical information to enable the examiner to determine what would have been obvious to the person skilled in the art will not adequately address the objection.

18.63.3

The application may formally contain only one set of claims at any one time. Applicants sometimes file auxiliary sets of claims, which are alternative claims filed in addition to the main set of claims, for consideration in the event that the examiner has objections to the main claim set. An examiner is under no obligation to consider such auxiliary claims, but may be prepared to consider one or a small number of auxiliary claim sets if the examiner considers that they help the efficient processing of the application towards grant. It should be borne in mind that these auxiliary claims do not overcome any objections until the amendment is formally effected. Where an applicant suggests alternative claim wording without filing formal replacement pages, amendment will only be effected when replacement pages are formally filed. Where the applicant provides clear instructions informing the examiner that an auxiliary set of claims, in the form of replacement pages, should be treated as formally filed if the main claim set is found objectionable, the examiner may make the amendment to incorporate these claims without additional replacement pages being filed, but only after he has confirmed this course of action with the applicant or agent eg by telephone. The examiner should record the outcome of any such telephone conversation with the applicant or agent (see 18.74-18.78). Where more than one claim set is filed close to the compliance date but not examined until afterwards and the main claim set is objectionable, the application will not meet the requirements of the Act, since it is not possible to effect the amendment once the compliance period has expired (see Fisher Rosemount Systems’ Application BL O/238/12)). In this situation the examiner will only be able to consider such auxiliary claims if Patents Form 52 is filed to extend the compliance date.

18.64

The examiner should consider a response to a s.18(3) report within half the time remaining of the compliance period. That is, within that time, the examiner should either issue a further report under s.18(3) (or other correspondence concerning outstanding matters), or send the application forward to grant. For example, if (when the applicant’s response is received in the office) two years remain until the compliance period ends, then the examiner should re-examine the application within one year. If eight months remain, then re-examination should take place within four months.

[ Where an application has undergone accelerated examination or accelerated CSE, any amendments received by the latest date for response should be processed as a matter of urgency, and at the latest within one month of receipt. Such amendments should be sent to the examiner as an ‘URGENT AMENDMENT’ on PDAX, with the high priority marker set. Where the as-of-right extension to the latest date for response has been requested and amendments for an accelerated examination or CSE are received during the extended period for filing a response (or later) it will be assumed that the applicant is no longer interested in expediting the prosecution of their application. In this circumstance amendments will be processed within the usual unaccelerated timescales.]

Where, prior to receiving the response to the first s.18(3) report on the application, the substantive examiner is made aware by the applicant of any document cited in a search report for a patent application on the same invention made in another patent office that has not previously been considered, the document should be considered by the examiner as soon as possible after it has been received unless the response to the s.18(3) report is due imminently. An amended s.18(3) report should be issued if the document would give rise to a further objection. Even when the response is received before s.16 publication, the formalities examiner should refer the file to the appropriate examining group.

[Deleted]

Whether before or after s.16 publication, if the substantive examiner finds that the objections have not been met or that there are further objections, he should write a further report to be issued to the applicant (but see 18.73).

Consideration should be given as to whether the search previously made is adequate, and so whether any necessary supplementary search should be performed (see 17.115-17.117). The examiner should also consider checking to see if any further useful equivalent cases have come to light since any previous check, and consider checking the status of these (and any previously identified equivalents) using online file inspection (see 18.10.3-18.10.4).

If any amendment or correction made by the applicant necessitates a supplementary search, an additional search fee may be payable under s.17(8) and s.18(1A) before substantive examination proceeds any further, see 17.120 to 123 and 18.03 to 18.03.4 If, either at this stage or after a subsequent action, there are no outstanding objections the application should be sent for grant provided that the “3 month rule” is satisfied in appropriate circumstances (see 18.07.2, 18.85-18.86).

[During the 5-week period of the publication cycle, Optics is locked and so won’t accept any changes to bibliographic data or processing status. However, an examination report can still be created and signed-off during this period; the checklist should set an Optics processing status of “Do not change processing status”. If there are any additional citations, these should be mentioned in the examination report, but any copies that are sent with the report will need to be manually ordered since an internal top-up search report cannot be generated; the checklist should also alert the ESO to the new citations. If this situation arises the case should then be diaried to a date after publication and any additional citations or fields of search entered directly to Prose and an Optics update then performed.]

18.65

When the applicant has restricted his claims to meet an objection to lack of novelty or of inventive step then, for the purpose of determining whether the objection has been met, the new claims must be looked at in the same way as they would have been if the specification had originally been filed with those claims. It is not sufficient for the applicant to add to his anticipated claim a feature disclosed in an example in the specification but which is no more than one of the alternative ways which the man skilled in the art would regard as available to him for carrying out the known concept originally claimed.

18.66

s.125(1) is also relevant

If the applicant argues that there is a distinction between his invention and the prior art, the substantive examiner should make sure that this distinction is reflected in the claims. If anything falling within the scope of a claim is known or obvious, that claim is bad.

18.67

s.2(2) is also relevant

An objection of lack of novelty or of inventive step based, wholly or in part, on a statement of prior art in the description should not be withdrawn solely because the applicant amends or deletes the statement, unless an adequate reason is given. For example if an applicant who has stated that a particular practice is known in the art now wishes to amend or withdraw that statement because he asserts that the practice was not publicly known and thus did not form part of the state of the art, then this assertion must be categorical and unambiguous and supported by evidence.

18.68

s.125(1) is also relevant

Objection must be raised when, as a result of amendment, there are specifically-described embodiments or statements in the description which are not consistent with the claims, since doubt is thrown on the scope of the claims. It is up to the applicant how this objection is overcome; normally the simplest course will be to delete the subject matter which is now outside the scope of the claims, but the matter may be retained provided it is made clear in the description that the matter does not constitute an embodiment of the invention. This could be the preferable course in a case where embodiments falling within the claims are partly described by reference to such matter; in such a case care must be taken that any omnibus claim does not embrace this matter. The title should be consistent with the invention claimed.

18.69

s.14(5)(c) and s.76(2 is also relevant

Consideration should be given as to whether claims which have been amended are supported by the description (see 14.142-14.156) and whether they entail added subject-matter (see 76.04 to 76.23). Applicants may seek to restrict the claims of an application having a proportion or property expressed as a range of values to a sub-range within the original range. (The same situation arises where the original range is in a parent application and the sub-range in a divisional). In assessing amendments which restrict the scope of independent claims, examiners should be aware of the potentially very serious consequences for the applicant should such amendments be held – post-grant – to add matter. In this situation s.76(3)(b) would prevent amendment to remove the additional matter, as this would extend the protection conferred by the patent; this is potentially an “inescapable trap” (G 01/93 Advanced Semiconductor Products, OJEPO 8/94 – see 76.27).

18.69.1

There have been various approaches to assessing whether a restricting amendment to a claim is supported or adds matter. At one extreme is the view that the mention of a range is the implicit disclosure of every item falling within the range, and accordingly any sub-range can be claimed if the requirements of Section 1(1) are met since there would be support for it. At the other extreme is the view that no sub-range can be claimed unless there was mention in the application as filed of the values concerned as end points of a preferred range. Pending guidance from the courts for practice under the 1977 Act, examiners should not adopt either extreme as an automatic rule of thumb approach suitable for all cases but should decide each case on its own merits by considering whether the sub-range claimed is supported by the description and does not extend the matter disclosed. The view point should be that of a skilled person reading the document. This will involve considering what is said about the values; it is not a question of just looking for any mention of a value but rather of assessing the teaching of the document about it. It will be necessary to consider the original disclosure closely to ascertain whether there is a sufficient disclosure to support values within the sub-range e.g. whether there is reference explicit or implicit to the special advantages obtained when values are selected in the sub-range. The above guidance only applies to considerations of support for an amended claim (or claim of a divisional application). The requirements of novelty and inventive step will also have to be met. The very nature of this approach is such that detailed rules to be rigidly applied in all circumstances cannot be given. Advice should therefore be freely sought from the relevant DD or head of examining group. In exceptional cases advice may also be sought from Legal Section.

18.70

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

Objection will have to be raised if, as a result of amendment, the claims lack unity of invention.

18.71

s.19(2) is also relevant

If, after objection has been raised, the applicant refuses or omits to acknowledge a Registered Trade Mark (see 14.70), the substantive examiner should amend the specification to acknowledge the Mark and inform the applicant that he has done so (see 19.24). If however the use of the Trade Mark is objectionable (see 14.137) the objection should be maintained.

[For procedure, see 19.24.]

18.72

The process of examination and re-examination in response to the agent’s or applicant’s replies continues until the substantive examiner is satisfied that the application complies with all requirements of the Act, or that a point is reached where disagreement between the applicant and the examiner is such that a hearing must be appointed and the matter resolved, or the application is withdrawn or refused. In the usual event, where the substantive examiner (or Deputy Director after a hearing) is satisfied that no further objections are outstanding, the grant of a patent follows automatically (see 18.85-18.86).

18.72.1

CoP is also relevant

Letters and faxes filed close to the end of the compliance period should be marked prominently “urgent - compliance period expires on (date)”

[To identify applications near to the end of the normal compliance period, a warning label will be displayed on the dossier cover of applications with four months or less to the end of the compliance period, and the appropriate PDAX message should be sent to the substantive examiner.

[Deleted]

[If a substantive examiner requires urgent action on a file not covered by an Urgent label, then the substantive examiner should ensure that any PDAX message sent has the appropriate urgent warning at the beginning of the message.

[Deleted]

[It also sometimes occurs when time is short that a letter is filed direct with the substantive examiner by the applicant or agent. If the letter is accompanied by a copy thereof and it is requested that the copy be endorsed and returned to serve as a receipt, the substantive examiner should glance at the two letters to check that they are the same and then endorse the copy by hand before returning it. (Some agents have adopted the practice of filing copies of letters for use as receipts; they are normally stamped and returned.) In some instances where letters are not accompanied by a copy, the agent or applicant merely asks in the letter for its receipt to be acknowledged. This is normally done automatically by the formalities examiner and the issue of the receipt is indicated by a hand-written number at the bottom right-hand corner of the letter. If this action should ever have been omitted, the substantive examiner should ask the appropriate formalities group to arrange for it to be done. Where such a letter is filed direct with the substantive examiner, he may instead make a photocopy for endorsement by hand as above. The substantive examiner can send the letter to formalities who should forward it to Index and Scanning for incorporation into the dossier.]

Interviews and telephone conversations

18.73

Any objections at all which need to be raised at the first substantive examination should be set out in writing (except where the only objection is that a Trade Mark has not been acknowledged - see paragraph 18.82). When an objection needs to be raised in a subsequent action however, the examiner may attempt to resolve the matter either over the telephone or at an interview. Recourse to the telephone should particularly be considered if there is something clearly amiss with the application (e.g. the wrong pages have been filed), the applicant or agent has particularly welcomed telephone contact, or it seems likely from the written exchanges that the examiner and the applicant or agent may be at cross-purposes. A telephone or interview report which sets out the remaining objections to grant of the patent application, and specifies a period for response, can itself constitute a report under section 18(3); there is no requirement to create a separate s.18(3) report and covering letter. If the telephone or interview report is intended to be a report under s.18(3) then for the avoidance of doubt this should be explicitly stated in the report.

[In the case of a private applicant, an interview may be suggested using ELC19PA.]

[Anyone is entitled under s.22 of the Welsh Language Act 1993 to have legal proceedings held in Wales conducted in Welsh without advance notice. If the applicant or his agent insists on conducting an interview in Welsh the substantive examiner should obtain the services of an interpreter. ARD hold a list of Office personnel willing and able to act as interpreters in Welsh.]

18.74

r.51 is also relevant

A record should be made of anything said or agreed during an interview or telephone discussion which might materially affect or throw light on the prosecution of the application, and should ideally be brief. It should not contain non-essential information, or comments which the applicant or the agent wish to make off the record and which are not germane to the conclusion reached. The record will be open to public inspection and should, together with the other papers on the open part of the file, present a continuous narrative of the proceedings. It should state the outcome of the discussion - for example, that a particular amended form of claim was accepted. If thought appropriate the reasons should be briefly indicated - for instance if it has been agreed that a particular form of claim is distinguished from the cited prior art, but it is not self evident why this should be so. When an objection is withdrawn as a result of fresh or further argument put forward in the discussion, the record should briefly outline the argument. If the applicant or agent puts forward an argument but indicates that he does not wish it to be made public, he must be told that it must either be recorded or disregarded. Amendments or arguments put forward during the discussion which are subsequently withdrawn or become irrelevant during the course of the same discussion need not be recorded.

[Comment by the agent which might be interpreted as critical of the applicant (or vice versa), or anything critical of a third party, should not be recorded. Time should not be spent in trying to obtain an agreed record of the Discussion.]

18.75

Any document cited and withdrawn during the course of a single discussion should nevertheless be recorded (see 18.85) unless the discussion revealed its citation to have been misconceived, eg based on a misunderstanding.

18.76

As discussed above (18.73), a telephone or interview report can itself constitute a report under section 18(3). Whether or not this is the case, if further action has been agreed at the end of the discussion, for example if the agent is to seek the applicant’s agreement to an amended claim, or is to make consequential amendments to the description, or if the substantive examiner has promised to put an argument in writing, this should be made clear in the record, as should any time limit set.

18.77

As a general rule a copy of the record should be sent to the applicant or agent with whom the discussion was held, who should be informed that any disagreement he may have should be communicated in writing. [It should be apparent from the open part of the file whether or not a copy of the record has been sent to the applicant. In any event a reference to the record should be entered as a minute on the dossier. The substantive examiner should adopt whatever method appears most suitable for communicating a record of an interview or telephone conversation to the agent or applicant. In most cases, this will be a report of the telephone conversation (quoting the agent’s file reference and addressed to the applicant, c/o the agent in the usual way). However other procedures may sometimes be appropriate; for example a paragraph indicating that a requested amendment has been made could be added to a letter or report. Exceptionally in the case of interviews, the need to communicate a record may be avoided by obtaining the signature of the agent or applicant to a minute of the interview which is then placed on the open part of the file.]

18.78

Any doubt about whether to make a record of a discussion should be resolved in favour of making the record.

Failure to reach agreement

18.79

s.101 is also relevant

Where the substantive examiner is unable to obtain a satisfactory response, an offer of a hearing should be made. Under most circumstances, an offer should not be made until an objection is repeated, or the application is close to the end of the compliance period with unresolved matters outstanding. Where the compliance period has been extended under r.108(2) and a response filed at or very near the end of the extended period fails to overcome the outstanding objections, it may be necessary to issue EL5 (see 20.06). However, for applications relating to methods of doing business with major patentability objections, a hearing may be offered upon receiving the first response from the applicant if the examiner remains of the opinion that there is no prospect of a patent being granted. Since the comptroller must give to a party to any proceeding before him an opportunity to be heard before exercising adversely any discretion, the offer of a hearing is a prerequisite to refusing an application under s.18(3). If no reply is received to the offer the application may be allowed to lapse at the compliance date (see 20.03). (For hearings, see 101.02-101.07 Chapter 4 of the Litigation Manual and Chapter 6 of the Patent Hearings Manual.

[Senior Examiners may offer a hearing but Examiners should obtain the approval of their senior officer before a hearing is offered. Normally the offer will be made in writing, if time permits; where the matter is urgent however the offer should first be made by telephone and then confirmed in writing unless the applicant or agent agrees to the immediate appointment of a hearing. The applicant should be informed that if they choose to respond to the offer of a hearing with further amendments or arguments but do not request to be heard then their application may be passed to a Hearing Officer for a decision on the papers (see 18.80). A date for response should be set.]

[The examiner should include in the checklist accompanying the letter instructions to the ESO to include a hearings guidance leaflet when issuing the letter]

18.79.1

After the offer of a hearing has been accepted, the examiner should issue a final communication to the applicant. This letter should define all the issues to be considered at the hearing, setting out the relevant arguments on each one. It must also adequately brief the hearing officer and any assistant on the case without the need for any further prehearing report. Any outstanding matters or actions that have been deferred and will need to be addressed after the hearing if the application is not refused should be mentioned in this communication.

[If the applicant requests to be heard the examiner should arrange the hearing by creating a minute addressed to Litigation Section requesting that a hearing be appointed and sending a PDAX message to the Hearings team mailbox entitled “Please see hearing request”. Where less than two months of the unextended compliance period remain, the minute should instruct the hearings clerk to arrange the hearing as soon as possible.]

18.80

An applicant, instead of taking up an offer of a hearing may seek to continue filing observations or amendments which the examiner considers do not satisfactorily meet the objections. If this occurs near to the end of the compliance period the examiner may consider it most efficient to respond with a further report under s.18(3). The accompanying exam letter should reiterate the offer of a hearing and include appropriate reminders of the compliance date as detailed in 18.47. Exam letter EL5 may be used if the report is issued after the end of the extended compliance period (see 20.06). If the compliance period has passed, but has not been extended, an EL5 letter (modified as appropriate) may be used to tell the applicant that the application will be treated as having been refused unless he submits observations and/or requests a hearing to demonstrate that the application was in fact in order (or requests an extension of the compliance period under r.108).

However, where the offer of a hearing was made early in the examination process and no saving amendment appears possible, it is desirable to avoid multiple unproductive amendment rounds which do not progress the case towards grant. In such instances the applicant should be told in a letter that the application does not meet the requirements of s.18(3) and that a formal decision as to whether the application should be refused will be issued unless a hearing is requested or the application is withdrawn. The applicant should be informed that the application will be passed to a Hearing Officer for consideration two weeks after the date of the letter. The letter should also define all the issues to be considered in the Hearing Officer’s decision, setting out the relevant arguments on each one. It must also adequately brief the hearing officer and any assistant on the case without the need for any further pre-hearing report.

[Once two weeks have passed since the date of the letter, the examiner should create a minute addressed to Litigation Section requesting that the application be forwarded to a Hearing Officer for a decision on the papers and send a PDAX message to the HEARINGS team mailbox entitled “Please see decision request”. ]

18.80.1

If the offer of a hearing is refused and no further amendment or argument is provided the response cannot be considered an attempt to advance the case. The applicant should therefore be warned in writing that refusal is contemplated unless the outstanding matters are addressed within two months of the expiry of the period for reply originally specified (or the compliance date if that is sooner). If further arguments or amendments are filed in response to this letter and the applicant continues to decline the offer of a hearing, the procedure set out in 18.80 should be followed.

 
Section 18(4)
If the examiner reports that the application, whether as originally filed or as amended in pursuance of section 15A above, this section or section 19 below, complies with those requirements at any time before the end of the prescribed period, the comptroller shall notify the applicant of that fact and, subject to subsection (5) and sections 19 and 22 below and on payment within the prescribed period of any fee prescribed for the grant, grant him a patent.

Application in order at first examination

18.81

r.31(4)(a), r.19(3)(a) and r.108(1) are also relevant

Provided that at least a full search under s.2(2) has been made for documents published before the priority date of the invention and that an adequate opportunity has been given for s.21 observations (see 18.07.2) for discussion of the exceptions to the “3-month rule”), when it is found at the first substantive examination that the application, whether as filed or as subsequently amended, complies with the requirements of the Act and Rules then the applicant must be informed of this fact. In the same report he is informed that voluntary amendments and/or a divisional application may be made within two months of the date of the letter. This letter acts as a notification of intention to grant and indicates that the application will be sent for grant shortly after the two-month period has expired. No divisional application or voluntary amendments can be made once the application has been granted (and, in addition, after the two-month period has expired voluntary amendments can only be made with the consent of the comptroller). The application is not normally sent for grant until the two month period has expired (see 18.84). However, if in response to the report the applicant confirms in writing that he wishes to waive the opportunity under rr.19 and 31(4)(a) to file any divisional applications or amendments, the pre-grant procedure (see 18.85-86 instead commences forthwith. The facility for expediting grant by waiving the two month period does not extend to late-filed (eg divisional) applications where grant is necessarily delayed until after s.16 publication. It is not possible for the applicant to request a delay to grant.

[The substantive examiner should issue EL3 (or EL3PA for private applicants) when the application is found to be in order at first examination. (However, in relation to applications filed prior to 1 January 2005 where a translation of the priority document (or equivalent declaration - see 5.11) is still outstanding EL7 (or EL7PA) should be issued instead. This letter asks for the translation or declaration to be filed by the end of the two month period for filing amendments and/or a divisional application. There is therefore no need for Formalities to request the filing of the translation or declaration in these circumstances.)]

[Where amendments have been filed, they should be acknowledged.]

[ELC4 should be added when a first s.18 examination report is issued more than 3 years and 6 months after the earliest date; PROSE will add the ELC4 letter clause during creation of the EL3 or EL7 letter if the relevant checkbox is ticked, as discussed in 18.47. Similarly, ELC5 should be added to a first examination report on a divisional application when the first report on the parent application was/is issued later than 3 years 6 months from the parent’s earliest date. The use of these clauses will ensure that the compliance date is set correctly on Optics and will also inform the applicant of the compliance date (see 20.02).]

[To ensure that an application on which EL3 (or EL3PA) has been issued, and on which amendments or a response waiving the two month period are not filed, is referred to him after the expiry of the two month period the substantive examiner should set up an entry in the PD electronic diary. This should allow time for an extension of the two month period to be requested (see 18.84) and for the time taken by the formalities group to process any amendments filed - three months from the date of the report would seem appropriate. A diary action should also be added to the PDAX dossier. If for any reason the diary entry becomes unnecessary before the “bring forward” date, then the entry should be marked as done.]

18.82

s.19(2) is also relevant

Where the only objection outstanding at the first examination is that a Registered Trade Mark, while allowable, is unacknowledged, the substantive examiner should amend the specification to acknowledge the Trade Mark, inform the applicant that he has done so and (for non-combined search and examination cases) issue a report as in paragraph 18.81.

[The procedure for both non-CS&E and CS&E cases is set out in 19.24-19.26.]

18.83

If amendments are filed within the prescribed two-month period the amended specification should be re-examined in the same way as a specification amended after a report under s.18(3). If as a result of the amendments the specification no longer complies with the Act and Rules a report under s.18(3) should be issued, specifying four months for reply provided sufficient of the compliance period remains. For the procedure to be followed when amendments are filed, see 19.18.

18.84

r.108(1) is also relevant

If after the end of the two month period the application has not been amended, or, if amended, it is still in order, it should be sent for grant (see 18.85-18.86.3). The two-month period is prescribed by r.19(4)(b) and 31(4)(a) and therefore cannot be automatically extended by two months under s.117B(3), as that section applies only to periods specified by the comptroller. However, a request for a discretionary extension of the two month period may be made under r.108(1) and should be allowed if accompanied by an adequate reason. This request may be filed retrospectively. The criterion applied in determining the adequacy of the reason should be the same as that applied when considering a request for an extension of the period specified for response to a report under s.18(3) (see 18.56-18.57).

18.84.1

The substantive examiner should defer issuing an examination report under s.18(4) if he finds no objections to the application when the first substantive examination is made before the search under s.2(2) has been completed for documents published before the priority date of the application and before an adequate opportunity has been given after s.16 publication for observations under s.21 (see 18.07.2 for situations where the three month period after publication can be waived). This is most likely to occur when combined search and examination has been requested, and the first substantive examination reveals no objections. The applicant should be informed that while the initial stage of the s.18 investigation has not revealed any objections, the investigation cannot be completed and a report under s.18 cannot issue until three months after publication, when the examiner will have considered the outcome of a supplementary search under s.17(7) and any third party observations filed under s.21. The application should not be sent to grant until after a report under s.18 has issued (see 18.84.2). The substantive examiner should diary the file for return at an estimated date three months after s.16 publication, using the PD electronic diary. A diary action should also be added to the PDAX dossier.

[When no objections are raised at the first examination stage following combined search and examination, the search report should be issued with SE3. SE3 doesnot constitute a report to the comptroller or the applicant under s.18 and does not set any period for response. Any supplementary report on the search should be added to SE3 under an appropriate sub-heading but before the passage about publication of the application. ]

18.84.2

On return of the file under the diary system the substantive examiner should update the search and consider any voluntary amendments made by the applicant and any third party observations. If no objections are found at this time, a first substantive report under section 18(4) should be issued following the procedure set out in 18.81-18.84. On no account should the application simply be sent for grant.

18.84.3

On the other hand if there are one or more objections, for example as a result of amendments or the top-up search, a first substantive report under s.18(3) should be issued following the procedure set out in 18.47 18.80, although the period set for reply to the first or any subsequent reports should not expire earlier than two years from the priority date, or if none, the filing date. The date for completing the first substantive examination report may be deferred at the applicant’s request, without a reason being necessary, to approximately the date on which other applications, which are of the same date, normally become due for first examination under s.18.

Final procedure

18.85

As soon as there are no objections outstanding, the search is complete in respect of s.2(2) art and third parties have had an adequate opportunity to file observations under s.21 (and provided, if the examiner’s first report was made under s.18(4), at least two months have elapsed since that report or the applicant has waived the two month period), the substantive examiner should ensure that the recorded bibliographic data (classification, cited documents, field of search) required for publication of the granted specification are correct and up to date. If less than 21 months have elapsed from the priority date or the substantive examiner is not otherwise satisfied that the search is complete in respect of s.2(3) art, the application should be diaried for return after grant in order to complete this search and the applicant should be informed accordingly (see 17.118). An entry should be created in the PD electronic diary system, and the substantive examiner should remember to add the diary action to the dossier in PDAX. However, if the filing of a divisional application is possible and has been foreshadowed by the applicant in their most recent letter, the above action should be deferred and a short period given within which a divisional application may be filed (see 15.46).

[Before issuing an intention to grant letter the examiner should check if any further equivalent applications have become available, and consider checking the status of these (and any previously identified equivalents) using online file inspection (see 18.10.3-18.10.4).

[Except as noted in 18.07.2 no application should be marked in order for grant until three months after s.16 publication so as to allow the opportunity for s.21 observations and a top-up search. If during this period the substantive examiner is content that previous objections have been resolved and no new ones arise, they should add a minute to the dossier accordingly, and create an entry in the PD electronic diary for return of the file at an estimated date three months after publication so that the search can be updated. A diary action should also be added to the PDAX dossier. If the diary entry is for more than one month from the date of receipt of the last response by the applicant, the examiner should also issue EL32 to acknowledge the response. Any third party observations filed in the intervening period should be copied to the applicant and considered by the examiner without delay.

[For revision of classification, see 18.86 and the Classification and Documentation Manual (Chapter 4). Any document cited (formally or otherwise) or new field searched which was not listed on the A document should be recorded on Prose as soon as possible, for eventual inclusion on the front page of the B document. For procedure when action deferred to await filing of a divisional application, see 15.46.

18.86

s.14(9) and S.19 is also relevant

The examiner should then complete the necessary pre-grant steps.

[ When the substantive examiner is satisfied that there are no objections outstanding and that the application may go forward to grant, he should add a minute to the PDAX dossier explaining why major objections were dropped (perhaps due to an amendment or an argument made by the agent or perhaps because the examiner has reconsidered the matter). The examiner should either add the title “In Order – for grant” to the minute to that effect or add an “In Order – for grant” action. (The abstract is not published as part of the granted patent; therefore no revision or amendment of the abstract by the substantive examiner is necessary at this stage. Moreover if amendment to the abstract is filed no action should be taken except as referred to in 14.191).

[ The examiner should enter the grant title and update the field of search, classification and citations in Prose. The full data for Optics that has to be entered (or revised) on Prose to allow the case to proceed to grant and ‘B’ publication is:

  • grant title
  • applicant’s reference
  • field of Search
  • citations
  • IPC and CPC classification
  • processing status

[ All IPC and CPC classification symbols should be revised to ensure they are current and appropriate at B stage, due to possible changes to classification schemes and/or amendments giving rise to changes in the identified invention information. Where necessary, such revision will include the entry of new classification symbols.]

[ ClassTool should be used to revise/enter IPC and CPC classification data.

[ Field of search and citations might already have been entered into Prose and Optics, e.g. if an ISR-TOP has been created and signed off on Prose previously. To record that there are no additional fields of search, the examiner should select the ‘Other’ field of search tab on Prose, right-click in the grey space, select ‘Edit’, right click in the white area and select ‘Record no additional fields for B’.

[ The title from the first page of the latest version of the specification should be entered into the Grant title field in the Details area on Prose. The applicant’s reference field should also be corrected if it is different from that in the most recent correspondence from the applicant.

[ The examiner should ensure that the 5 data markers have been activated at the bottom right of the Prose screen.

[ If the grant title exceeds 158 characters the examiner must seek the applicant’s agreement to a shorter one (because Optics cannot accept longer titles). If the application is otherwise ready to proceed to grant, this should be done by telephone (see also 18.42). A grant checklist should be generated to instruct the ESO to set the Optics status to “12 – Ready for Grant” on Prose and forward the case onto Formalities for “Grant”.

[ For applications filed before 1 January 2005 where the substantive examiner has no outstanding objections, and the case is ready for grant, but a required translation of the priority document (or an equivalent declaration - see 5.13) is still outstanding, the substantive examiner should mark the case ‘in order’ in the usual way and enter the grant title and update the field of search and classification in Prose as above. However, a “no translation” checklist should be generated for the ESO to set Optics status “15” on Prose rather than “12” and send to Formalities as “Awaiting Translation”. Formalities will then take the necessary action and there will be no need for the case to be returned to the examiner.

[ For those cases where classification has still to be considered, made or revised in another heading, the case should be forwarded to the formalities group for grant via the appropriate examining group for such action. When an application is to be routed through one or more further groups for revision of supplementary classification before grant, it should be made clear in a minute that the application is merely in transit from one group to another. Only the final marking to Formalities should refer to grant. The application should not be referred back to the primary group for any classification checking except when special circumstances arise

[ It is the substantive examiner’s responsibility to see that the documents going forward for grant have been properly assembled. The specification sent to Publishing Section should contain only those pages which are to form part of the published B document, the Formalities Examiner having placed a “P” against the documents ready for B publication and marked them each as “Working Copy”. Any necessary re-numbering of the pages will be carried out by the formalities examiner before grant (see 14.34). If one or more, but not all, of the figures on a sheet of drawings have been cancelled, Publishing Section will blank out the cancelled figures. In order to ensure that this is done, the substantive examiner should add a minute to the PDAX dossier highlighting which figures are to be cancelled. It is possible that the specification going forward for grant will still contain a heading or other redundant wording on pages of new or amended claims filed for inclusion in the A document, if they have not been superseded by replacement pages during substantive examination. Since the B publication should not contain such extraneous matter, Publishing Section will blank it out. In order to ensure that this is done, the substantive examiner should add a minute to the dossier.

[ Where a request for amendment is filed after the case has been sent for grant but before issue of the grant letter (also known as the B-publication letter), action should be taken as in 14.206 mutatis mutandis. Grant should if possible be stopped to allow the request to be dealt with, but if it is too late to prevent production or issue of the grant letter it may be necessary to rescind grant. The need to rescind grant should if possible be avoided by dealing with the request sufficiently quickly for the granted patent (including any amendment allowed) still to be published on the date foreshadowed in the grant letter.]

18.86.1

If the application was found to be in order for grant at first examination, and remains in order after the relevant period has passed (see 18.84), the application should be sent for grant.

[A grant checklist should be generated to instruct the ESO to set the OPTICS status to “12 – Ready for Grant” on PROSE and to forward the case onto Formalities for “Grant”.]

18.86.2

If the application is found to be in order for grant at a later examination stage, then an intention to grant letter should be issued.

[The examiner should create an EL34 (or EL34PA) bundle. This will include the intention to grant letter and checklist. They should then send an “Intention to grant checklist” message to the ESO.]

[The ESO should action the checklist to issue the intention to grant letter and update PAFS and OPTICS (to status 9: Disposed of – In Order).]

[The team of Examination Assistants will be provided with a list of applications on which an EL34 or EL34PA letter has issued one month plus two days earlier (to allow time for processing of any documents filed). If no new documents have been filed since issue of the EL34, the Examination Assistant should update OPTICS to status 12: Ready for Grant and send a “Grant checklist” message to the relevant Formalities group. If new documents have been filed, the Examination Assistant will check with the examiner whether the application can proceed to grant and record the situation in a minute.]

[If a request is received from the applicant to send the application to grant sooner than the date indicated in the EL34 (thus waiving the opportunity to file any divisional applications or voluntary amendments), an “Early grant request” message should be sent to the EA mailbox. The Examiner Assistant will instigate grant action without delay by taking the steps outlined above.]

18.86.3

A grant letter is then issued informing the applicant under s.18(4) that the application complies with the requirements of the Act and Rules and that a patent is therefore granted. The date of this letter is the date of grant for all provisions of the Act prior to s.25(1); in particular, the application may not be withdrawn or amended on or after this date (for amendment of a granted patent, see s.27). In the same letter, the applicant is informed of the date when notice of the grant will be published in the Journal. This practice was confirmed by the Hearing Officer in ITT Industries Inc’s Application [1984] RPC 23 (see especially page 27 line 20 onwards).

18.87

All applications when placed in order for grant enter the next grant cycle within a week. During each grant cycle, which lasts five weeks, the various grant procedures outlined in 18.86 and 24.01 to 24.04 take place. If an applicant has requested accelerated examination and desires grant for a particular date, and the request for the former is accepted by the substantive examiner, an effort should be made to achieve B -publication (see 24.04 and 25.02) by the desired date but it will be impossible to guarantee to do so. The applicant should be told that publication will, if possible, occur by the requested date and should also be told if it proves impossible to do so.

[Any case which has undergone accelerated substantive examination, should be identified by the appropriate label on the dossier cover. If grant by a particular date has been requested, a PDAX message should be sent to the substantive examiner alerting him to the request outlined in the minute. When the case is in order, after updating the data in PROSE but before setting the status “Ready for Grant”, the examiner should check with the publication liaison officer for their division whether that date can be met. If it cannot, it should be noted that there are no established Office procedures for providing “instant” grant of a patent, or for shortening the 5week B-publication cycle. To make the most of the B-publication cycle, Group ESOs and Examination Assistants need to set “Ready for Grant” by the end of Thursday. DIS PRO should be checked by the examiner on the following day to make sure the case has been picked. If “Ready for B picklist” is still displayed, contact PD/A3 immediately.]

Action after issue of a report under S.18(4)

18.88

As a consequence of the terms of s.18(4), once a notification of intention to grant has issued (see 18.81 ) and 18.86.2 informing the applicant that his application complies with the requirements of the Act and Rules then, unless the application has in the meantime been amended in such a way that it no longer complies, a patent must be granted. Grant cannot be withheld because prior art subsequently comes to light (e.g. because of action within the Office, as the result of observations from a third party, or where the applicant makes the office aware of documents cited against a patent application for the same invention made in another patent office) which casts doubt on patentability. (Nokia Mobile Phones (UK) Ltd’s Application - [1996] RPC 733). If there is no doubt that new prior art found by the examiner would have given rise to a major objection the applicant should be informed of it since he may wish to amend either before grant (if the grant letter referred to in 18.86.3 has not yet issued) or after grant. Likewise any third party observations should be copied to the applicant (see 21.15, 21.16). The applicant should be informed that grant will be delayed for two months (in order to give him time to decide whether to amend) unless he requests earlier grant. If the applicant chooses not to amend, the new prior art should not be listed on the front page of the B publication since this might suggest that it had been properly considered and the application considered acceptable over it. If any of the new prior art forms part of the state of the art by virtue of s.2(3) and is citable against lack of novelty, the applicant should be warned that action may be taken after grant (see 73.02). If a divisional application is filed on the application in suit, see 15.46.

Limited circumstances in which grant or a s.18(4) report may be rescinded

18.89

r.107 and r.33(5) are also relevant

The legislation provides no possibility to rescind grant or a s.18(4) report other than in circumstances where there has been an irregularity in Office procedure falling within the terms of r.107. Requests from applicants to rescind grant simply in order to allow the filing of voluntary amendments or a divisional application (that was not clearly foreshadowed) cannot therefore be acceded to if there has been no such irregularity. Applicants should be advised of possible actions open to them after grant, for example, amendments under section 27. Irregularities in the grant procedure which may justify rescinding grant may occur when:

r.33(4) is also relevant

(i) third party observations, which the examiner considers give rise to a wellfounded objection, were received before issue of the intention to grant letter or s.18(4) report, but too late to prevent its issue; or

(ii) a request by the applicant to withdraw the application or to file voluntary amendments was received in the Office prior to issuing the grant letter, but too late to prevent its issue; or

(iii) the examiner agreed that amendment to the description could be attended to at a later date pending the examiner’s acceptance of the claims, but the case was then inadvertently sent for grant before such amendments were made.

18.90

If it is necessary to rescind grant or a notification of intention to grant made under s.18(4) was made in error and is rescinded. If the grant letter has issued (see 18.86) it will also be necessary to cancel the grant. A report should then be made under s.18(3) setting out the objection and specifying two months (or six months if the examiner’s report under s.18(4) was the first report under s.18) for reply, unless the time available makes a shorter period appropriate; this may be increased to four months if major amendment is required and sufficient of the compliance period remains. If s.21 observations were filed near to the end of the compliance period, that period may have been extended as described in 20.02.1.

[Cancellation of the grant may only be initiated by contacting the publication liaison officer, who will call a meeting of all the interested parties (see 14.206). The letter rescinding the grant letter and/or report made under s.18(4) should identify the writer and provide a contact telephone number. A fresh report should be made for communication to the applicant. When the remaining time is so short as to require urgent action, the applicant should if possible be given forewarning by telephone to provide opportunity for the filing of Patents Form 52.]

 
Section 18(5)
Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the comptroller may on that ground refuse to grant a patent in pursuance of more than one of the applications.

18.91

s.130(1), s.89(1), s.78(2) and s.73(2) are also relevant

For this subsection to have effect the conflicting applications must be applications for patents under this Act, including international applications designating the UK which have entered the national phase as domestic applications under the provisions of s.89. It does not apply to conflict with an application for a European patent (UK), since this is not treated as an application under the Act for the purposes of s.18(5); such conflict can only be dealt with under s.73(2) when each of the relevant patents have been granted (see 73.05-73.09).

18.92

The stricture of s.18(5) applies not only when the conflicting applications have identical applicants or groups of applicants, but also when the applications have an applicant in common, or when an applicant in one case derives his right to be granted a patent from a person who is an applicant in the other case, for example by assignment or by contract of employment, or in any other way.

18.93

For the grant to be refused on an application which conflicts with another, the priority dates in question must be the same, including the case where one application claims priority from the other, or where one is divided from the other and claims the same priority. It should be borne in mind that it is the priority dates of the respective inventions (see 5.20-5.24) which must be considered, rather than the declared priority dates of the applications. (If the priority dates of the respective inventions are not the same, then one may form part of the state of the art in respect of the other; if so, appropriate action under s.18(3) or s.73(1) should be considered).

18.94

Conflict between applications should be drawn to the attention of the applicant as soon as it is detected (but not before the first substantive examination), since it is desirable that the matter be dealt with before any of the patents has been granted, so that the applicant may decide how he wishes the conflict to be resolved, for example by amending to distinguish the inventions from one another or by deciding which application should proceed. Once a patent has been granted on one of the applications, conflict can still be avoided either by amendment of the outstanding application or by amendment under s.27 in respect of the granted patent, since an amendment under s.27 has effect retrospectively from the date of grant. However, the situation cannot be saved by surrendering the granted patent, since this action is not retrospective (IBM Corporation (Barclay and Bigar’s) Application [1983] RPC 283). There is no provision for dealing with a conflict between patents having the same priority date and granted to the same applicant, other than in the particular circumstances dealt with by s.73(2).

18.95

The tests for determining under s.18(5) whether two UK applications relate to the same invention are the same as for deciding under s.73(2) whether a UK patent conflicts with a European patent (UK). The phrase “for the same invention” under both s.18(5) and s.73(2) is regarded as embodying the long-standing principle that the same monopoly should not be granted twice over. Thus it covers not only the situation where respective applications contain claims explicitly including all of the same features (including the case where these are claims dependent on quite distinct main claims) but also where the claims differ in their wording but their scope does not differ in substance. The degree of overlap which is allowable must be decided on the facts of the case, having regard to the state of the art, and the applicant may be able to show that there is a significant distinction between apparently conflicting claims.

18.96

Maag Gear Wheel and Machine Co Ltd’s Patent [1985] RPC 572 was a decision of the comptroller which related to an objection under s.73(2). In this case, which concerned a pivoted pad journal bearing for a shaft, each of the features contained in claim 1 of the UK patent was specified, though in slightly different terminology, in claim 3 of the European patent (UK). However, claim 1 of the European patent (UK) (to which claim 3 was appendant) included additional “pad geometry” features not to be found in the claims of the UK patent. The hearing officer observed that, even though claim 1 of the UK patent was not explicitly limited to the pad geometry of claim 1 of the European patent (UK), that pad geometry was the only construction described and illustrated in the UK patent. Thus, he construed claim 1 of the UK patent as protecting a journal bearing including that pad geometry and accordingly found claim 1 (and its appendant claims 2 to 5 and omnibus claim 6) of the UK patent to be directed to the same invention as that claimed in claim 3 of the European patent (UK).

In IBM Corporation (Barclay and Bigar’s) Application [1983] RPC 283, before the comptroller, a claim to a solution containing a compound in a concentration “less than 0.03M and sufficiently low to give a perceptively lighter colour …..”, and a claim to a solution containing the same compound in a concentration “less than or equal to 0.02 Molar”, were also held to be for the same invention. In this case, although the wording of the claims differed, the wording of the claims led to the same result (because in order for the concentration in question to give the required perceptively lighter colour it would have to be less than or equal to 0.02M) and the scope of the claims therefore did not differ in substance.

In Marley (UK) Ltd’s Patent [1994] RPC 231 the Court of Appeal decided that the correct construction of s.73(2) was the literal one that the UK patent may be revoked if the claims of the UK and European (UK) patents are for the same invention. The court found that a claim to a product will conflict with a claim to the same product as produced by a specific process. In Marley, claim 1 of the UK patent related to concrete articles made of a particular composition and having particular qualities whilst claim 8 of the European patent (UK) related to such concrete articles, but produced by a particular process. Balcombe LJ held that claim 1 of the UK patent was for the same invention as claim 8 of the European patent. It is perhaps worth noting that, after the House of Lords’ judgment in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9, such a “product-by-process” claim would be construed as a claim to the product (see 14.121), thus also leading to the conclusion that the UK and European (UK) patents related to the same invention.

18.97

In Arrow Electric Switches Ltd’s Applications 61 RPC 1 (1944), it was decided under the 1949 Act that where the respective UK patent applications were directed to distinct inventions A and B, it is allowable for one of the applications to contain a claim to the combination of A and B. (However, it would not have been allowable for both applications to contain such a claim.) In this case, one application was a divisional of the other application, as a consequence of a plurality objection. Invention A was an electric switch and invention B was a means for operating an electric switch. The question of double jeopardy from infringement arising out of a single act was considered by Morton J. in the Arrow case and he concluded that it would be unduly hard on inventors if protection for the combination A and B were denied because its unauthorised use could result in a suit under both the patents.

In Kimberley-Clark Worldwide Inc’s Patent (BL O/279/04), in relation to s.73(2), claims comprising feature A in the UK patent were held not to be the same invention as the claims in the European patent (UK) comprising features A and B. In the case in question the hearing officer considered that the inclusion of feature B in the European patent (UK) lead to a difference in substance between the two claims, and therefore no revocation action was taken. In SeeReal Technologies SA (BL O/261/12) the Hearing Officer, when assessing conflict between claim 1 of a divisional application and claim 1 of the parent application, confirmed the practice followed in Kimberley-Clark Worldwide Inc’s Patent (BL O/279/04). The decision in SeeReal Technologies SA (BL O/261/12) also highlighted the importance of claim construction when assessing conflict, with reference to Maag Gear Wheel and Machine Co Ltd’s Patent [1985] RPC 572.

The assessment of conflict under sections 18(5) and 73(2) is unaffected by the judgment in Koninklijke Philips Electronics n.v. v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) because this judgment is directed only to the discretion to allow post-grant amendments (see 75.05.1).

18.97.1

The EPO Technical Boards of Appeal in T 1790/12 and T 879/12 held that a divisional application with second medical use claims of the form “Substance X for use in the treatment of disease Y” did not conflict with a parent application with “Swiss-type” second medical use claims of the form “The use of substance X in the manufacture of a medicament to treat disease Y”. Although s.18(5) and s.73(2) are not derived from provisions of the EPC, in view of this EPO case law, no objection should be raised under s.18(5) or s.73(2) to conflict between applications including the new form of second medical use claim and granted GB or EP patents which protect the same medical use solely through Swiss-type claims (see 4A.27.1).

Annex A to section 18 of the Manual - Combined Search and Examination

18.98

Sections 17 and 18 of the Manual refer at various points to the process of combined search and examination. In particular, references are to be found at 17.35, 17.94.10, 17.108, 17.115, 18.03, 18.06, 18.08,18.39-41, 18.47-49, 18.82, 18.84.1-18.84.3 and 19.26.

[Examiners in particular should be aware of the different procedures which apply when processing combined search and examination cases. Of particular help will be the examiners’ aide-memoire for combined search and examination cases, the contents of which are reproduced below.

[Combined search and examination (CS&E):Aide-memoire

Identifying CS&E cases

1). The OPTICS CS&E flag is automatically set to YES when Forms 9 & 10 are filed on the same day. If Forms 9 and 10 are filed together but the applicant states that CS&E is not wanted, or if, before the search is started, Form 10 is filed after Form 9 with a written request for CS&E, CHA CSE is used to reset the flag appropriately. CHA CSE is also used to reset the flag to NO on all searched PCT cases filed with Forms 9 and 10.

2). All CS&E applications are identified by the appropriate label on the dossier cover.

3). Where a request for CS&E is made too late the applicant is informed and if necessary the CS&E flag is reset to NO using CHA CSE.

Action on arrival in an examining group

4). Combined Search and Exam is recorded on PAFS when a CS&E case is booked into an examining group but only after consultation with the examiner when CS&E has been requested late. CS&E cases take their place with applications awaiting search unless accelerated search and examination has been requested (see 20, below).

Search and First Substantive Examination

5). Where examination reveals objections the search and examination reports are issued together with SE1 (SE1PA) setting a latest date for reply 2 years from the priority/filing date. Before the case is booked out the appropriate value is set for the OPTICS status field (normally either 5 - “May be s.16 published” or 3 - “Searched but not 5”). When the case is booked out PAFS will count 2.9 work units.

6). Where examination does not reveal any objection only the search report is issued with SE3 (SE3PA). Before the case leaves the group the appropriate value is set for the OPTICS status field. The case counts as 2.9 work units when booked out and is diaried for return to the examiner 3 months after A-publication.

7). When the file is diaried back to the examiner three months after Apublication the search is topped up and any voluntary amendments considered. A first examination report is then issued under s.18(4) using EL3 (EL3PA) or under s.18(3) using EL1 (EL1PA) with RC8, if appropriate, as the case may be. On no account should the application simply be sent for grant. The latest date for reply is based on the normal 2 months for EL3 (EL3PA) and the later of 4 months from the date of the letter or 2 years from the priority/filing date for EL1 (EL1PA).

Acknowledgement of Registered Trade Marks

8). The examiner should check at first examination stage whether any unacknowledged terms are registered trade marks. If the examination has not revealed any objections, the examiner should amend the specification to acknowledge the mark (see 19.23-19.26) and inform the applicant by adding SC2 to SE3 (SE3PA). If other objections are to be raised, the applicant should be asked to acknowledge the mark, using RC11 added to the first s.18(3) report.

Amendments

9). Amendment before the issue of the search report is allowable with the Comptroller’s consent and account should be taken of any such amendment during CS&E.

10). New or amended claims filed voluntarily or as part of a full response to the examination report before preparations for publication are complete are published in the A-document in the normal way.

11). [Deleted]

12). A response to an examination report received after A-publication is considered in the normal way.

13). If a further examination report is issued the period for reply is set to expire two years from the priority/filing date or after the normal four or two months, whichever is later.

14). No application is to be marked In Order until three months after Apublication. If all earlier objections are met before this date, then the file is diaried for return to the examiner at the end of that period. EL32 is issued if the diaried date is for more than one month ahead.

A-publication

15). On publication the main OPTICS processing status for CS&E cases is set automatically to 10 – “Disposed of - not in order”. This is reset using REC PRO at the next OPTICS action if it does not reflect the true status of the case.

Third party observations

16). Any third party observations are copied to the applicant immediately. With applications diaried because no objections are outstanding the examiner also considers them without delay. On applications where a response to an examination report is awaited the examiner has the usual option of deferring consideration until the response is filed.

Extension of periods specified at CS&E stage or later

17). Requests for extension of the period for reply given in a substantive examination report should be treated in the normal way. If requested, on cases where no examination report is issued at CS&E, the issue of the first s.18 report can be deferred until applications not subject to CS&E are expected to receive their first s.18 examination.

Top-up searches

18). Examiners complete the search for s.2(2) art and if possible also for s.2(3) art as soon as practical and certainly before issue of EL3 (EL3PA) or in other circumstances immediately before grant. Online databases are generally sufficiently up to date 3 months from the priority/filing date for the s.2(2) field and 21 months from the priority/filing date for the s.2(3) field.

19). Where an application is sent to grant before 21 months or the s.2(3) search is otherwise not complete, the examiner diaries it for return at some appropriate time after grant to complete the search. Any s.2(3) objection arising is made under s.73(1) in the normal way.

Accelerated search and examination

20). The normal procedure for accelerated search should be followed but with the examination done at the same time as the search.

Early grant

21). This depends on the applicant requesting early publication (which is handled normally), otherwise the procedure is the same as with any other CS&E case.

Divisional applications

22). If a divisional application qualifies for CS&E the search and examination are done together even if this was not the case for the parent application and /or the search has effectively been done following a request on the parent. If the parent application has not been substantively examined this may be done at the same time as the divisional (provided Form 10 has been filed) unless the applicant or agent agrees otherwise. The need to delay grant for 3 months after publication can be waived, in accordance with normal practice, if the divisional invention was claimed in a sufficiently earlier published parent.

Refunds

23). Normally no refunds should be made if the search and examination reports or just the search report have been issued.]

Annex B to section 18 of the Manual - Extensions of time aide-memoire

18.99

The following aide-memoire for examiners reflects the practice described in 18.53-18.60.

Extensions of time: substantive examination reports

An as-of-right extension of two months, or until the compliance date if sooner, is available to the period for reply specified in s.18 examination reports. The extension:

  • must be requested in writing, preferably in the covering letter accompanying the response or, alternatively, by email to pateot@ipo.gov.uk (telephone requests are not allowable)
  • may be requested retrospectively up to the expiry of the extended period
  • is available only once for any given report round
  • must be for two months, or until the compliance date if sooner, whether or not it is needed or wanted; extensions for shorter time periods are not available.

An extension further to the as-of-right extension may be requested but:

  • is only available if the as-of-right extension was requested
  • the request must be made before the expiry of the period as extended by right
  • is discretionary, but one single extension of up to one month on a given period is generally allowable.
  • does not usually need to be requested in writing
  • must give an adequate reason; if no reason is given, one should be asked for
  • may be requested at the same time as the as-of-right extension
  • must take into account how much time is left of the compliance period

Requests for additional further extensions:

  • must be made before expiry of the period as already extended.
  • require a strong reason to be allowed.
  • should be for the minimum required (normally < 1 month) to fix the problem.

Where a late reply is received and no extension is available because the period for requesting an extension has expired, the reply should be referred to the examiner:

  • If no reason is given for the late reply, the examiner should ask for one; if no reason is forthcoming, the application will be refused
  • If a reason is given, the examiner should consider it and decide whether to exercise the discretion provided under section 18(3) to accept the late reply (despite it falling outside the specified period)

Administrative points:

  • requests for all extensions (i.e. as-of-right and discretionary) may be emailed to [pateot@ipo.gov.uk] – an automatic reply will be sent. We do not guarantee to recognise requests sent to any other email address

  • requests for extensions emailed direct to examiners should be handled as follows:

email requests for as-of-right extensions should be forwarded to the group FSO to be put on file. You have discretion whether or not to reply but if you do, you should encourage the agent to use the pateot@ipo.gov.uk service.

in the case of a discretionary request, you should consider the request and respond, ensuring copies of all correspondence are placed on file.

  • no telephone requests for as-of-right extensions are allowable – encourage agent/applicant to use above dedicated email address rather than write a letter

  • replies to requests for discretionary extensions may be dealt with by telephone or in writing but ensure audit trail is complete. In all cases, a complete record (letter, telephone or email report) of events and reason for the request must be on file.