Legislative Implementation of Flexibilities - United Kingdom
| Title: | Sections 15A-18 of the Patents Act of 1977, consolidated version of 01/01/2010 |
| Field of IP: | Patents |
| Type of flexibility: | Substantive examination |
| Summary table: |  |
Provisions of Law
Preliminary examination
15A.-(1) The comptroller shall refer an application for a patent to an examiner for a preliminary examination if -
(a) the application has a date of filing;
(b) the application has not been withdrawn or treated as withdrawn; and
(c) the application fee has been paid.
(2) On a preliminary examination of an application the examiner shall -
(a) determine whether the application complies with those requirements of this Act and the rules which are designated by the rules as formal requirements for the purposes of this Act; and
(b) determine whether any requirements under section 13(2) or 15(10) above remain to be complied with.
(3) The examiner shall report to the comptroller his determinations under subsection (2) above.
(4) If on the preliminary examination of an application it is found that -
(a) any drawing referred to in the application, or
(b) part of the description of the invention for which the patent is sought, is missing from the application, then the examiner shall include this finding in his report under subsection (3) above.
(5) Subsections (6) to (8) below apply if a report is made to the comptroller under subsection (3) above that not all the formal requirements have been complied with.
(6) The comptroller shall specify a period during which the applicant shall have the opportunity
(a) to make observations on the report, and
(b) to amend the application so as to comply with those requirements (subject to section 76 below).
(7) The comptroller may refuse the application if the applicant fails to amend the application as mentioned in subsection (6)(b) above before the end of the period specified by the comptroller under that subsection.
(8) Subsection (7) above does not apply if
(a) the applicant makes observations as mentioned in subsection (6)(a) above before the end of the period specified by the comptroller under that subsection, and
(b) as a result of the observations, the comptroller is satisfied that the formal requirements have been complied with.
(9) If a report is made to the comptroller under subsection (3) above
(a) that any requirement of section 13(2) or 15(10) above has not been complied with; or
(b) that a drawing or part of the description of the invention has been found to be missing, then the comptroller shall notify the applicant accordingly.
Publication of application
16.-(1) Subject to section 22 below and to any prescribed restrictions, where an application has a date of filing, then, as soon as possible after the end of the prescribed period, the comptroller shall, unless the application is withdrawn or refused before preparations for its publication have been completed by the Patent Office, publish it as filed (including not only the original claims but also any amendments of those claims and new claims subsisting immediately before the completion of those preparations) and he may, if so requested by the applicant, publish it as aforesaid during that period, and in either event shall advertise the fact and date of its publication in the journal.
(2) The comptroller may omit from the specification of a published application for a patent any matter
(a) which in his opinion disparages any person in a way likely to damage him, or
(b) the publication or exploitation of which would in his opinion be generally expected to encourage offensive, immoral or antisocial behaviour.
Search
17.-(1) The comptroller shall refer an application for a patent to an examiner for a search if, and only if
(a) the comptroller has referred the application to an examiner for a preliminary examination under section 15A(1) above;
(b) the application has not been withdrawn or treated as withdrawn;
(c) before the end of the prescribed period -
(i) the applicant makes a request to the Patent Office in the prescribed form for a search; and
(ii) the fee prescribed for the search ("the search fee") is paid;
(d) the application includes
(i) a description of the invention for which a patent is sought; and
(ii) one or more claims; and
(e) the description and each of the claims comply with the requirements of rules as to language.
(2) [repealed]
(3) [repealed]
(4) Subject to subsections (5) and (6) below, on a search requested under this section, the examiner shall make such investigation as in his opinion is reasonably practicable and necessary for him to identify the documents which he thinks will be needed to decide, on a substantive examination under section 18 below, whether the invention for which a patent is sought is new and involves an inventive step.
(5) On any such search the examiner shall determine whether or not the search would serve any useful purpose on the application as for the time being constituted and -
(a) if he determines that it would serve such a purpose in relation to the whole or part of the application, he shall proceed to conduct the search so far as it would serve such a purpose and shall report on the results of the search to the comptroller; and
(b) if he determines that the search would not serve such a purpose in relation to the whole or part of the application, he shall report accordingly to the comptroller;
and in either event the applicant shall be informed of the examiner's report.
(6) If it appears to the examiner, either before or on conducting a search under this section, that an application relates to two or more inventions, but that they are not so linked as to form a single inventive concept, he shall initially only conduct a search in relation to the first invention specified in the claims of the application, but may proceed to conduct a search in relation to another invention so specified if the applicant pays the search fee in respect of the application so far as it relates to that other invention.
(7) After a search has been requested under this section for an application the comptroller may at any time refer the application to an examiner for a supplementary search, and subsections (4) and (5) above shall apply in relation to a supplementary search as they apply in relation to any other search under this section.
(8) A reference for a supplementary search in consequence of
(a) an amendment of the application made by the applicant under section 18(3) or 19(1) below, or
(b) a correction of the application, or of a document filed in connection with the application, under section 117 below, shall be made only on payment of the prescribed fee, unless the comptroller directs otherwise.
Substantive examination and grant or refusal of patent
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.
(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.
(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.
(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.
(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.
(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.