Patents Act 1977
1977 CHAPTER 37
The Patents Act 1977 (and amending legislation) is reproduced under the terms of Crown Copyright Policy Guidance issued by HMSO.
An Act to establish a new law of patents applicable to future patents and applications for patents; to amend the law of patents applicable to existing patents and applications for patents; to give effect to certain international conventions on patents; and for connected purposes. [29th July 1977]
BE IT ENACTED by the Queen's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows
PART I - NEW DOMESTIC LAW
PATENTABILITY
Manual of Patent Practice Chapter
Section 1:Patentable inventions
1.- (1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say -
(a) the invention is new;
(b) it involves an
inventive step;
(c) it is capable of
industrial application;
(d) the grant of a
patent for it is not excluded by subsections (2) and (3) below;
and references in this Act to a patentable invention shall be construed accordingly.
(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -
(a)
a discovery, scientific theory or mathematical method;
(b) a literary,
dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or
method for performing a mental act, playing a game or doing business, or a
program for a computer;
(d) the presentation of
information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.
(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.
(4) For the purposes of subsection (3) above behaviour shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.
(5) The Secretary of State may by order vary the provisions of subsection (2) above for the purpose of maintaining them in conformity with developments in science and technology; and no such order shall be made unless a draft of the order has been laid before, and approved by resolution of, each House of Parliament.
Notes & References
Relevant EPC Article(s):52, 53
Relevant PCT
Article(s): 33(1)
Relevant TRIPS
Article(s): 27
EU Directive 98/44/EC
on biotechnological inventions
Relevant Paris
Convention Article(s): 4quater
Similar 1949 Act
Section(s): 10(1)(b),
101, 32(1)(d)
Manual of Patent Practice Chapter
2.- (1) An invention shall be taken to be new if it does not form part of the state of the art.
(2) The state of the art in the case of
an invention shall be taken to comprise all matter (whether a product, a
process, information about either, or anything else) which has at any time
before the priority date
of that invention been made available to the public (whether in the United
Kingdom or elsewhere) by written or oral description, by use or in any other
way.
(3) The state of the art in the case of
an invention to which an application for a patent or a patent relates shall be
taken also to comprise matter contained in an application for another patent
which was published on
or after the priority date
of that invention, if the following conditions are satisfied, that is to say -
(a) that matter was contained in the application for that
other patent both as filed and as published;
and
(b) the priority date of that matter is earlier than that
of the invention.
(4) For the purposes of this section the disclosure of matter constituting an invention shall be disregarded in the case of a patent or an application for a patent if occurring later than the beginning of the period of six months immediately preceding the date of filing the application for the patent and either -
(a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person -
(i) from the inventor or from any other person to whom
the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to
obtain it; or
(ii) from any other
person to whom the matter was made available in confidence by any person
mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained
it from any person so mentioned because he or the person from whom he obtained
it believed that he was entitled to obtain it;
(b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor ; or
(c) the disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.
(5) In this section references to the inventor include references to any proprietor of the invention for the time being.
(6) In the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.
Notes & References
Relevant EPC Article(s): 54,55,139
Relevant CPC
Article(s): 36 , 78
Relevant Rule(s): 5
Relevant PCT
Article(s): 33(2), Rule 33
Similar 1949 Act
Section(s): 14(1)(b),
32(1)(e), 50, 101
Manual of Patent Practice Chapter
3.- An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).
Notes & References
Relevant EPC Article(s):56
Relevant PCT
Article(s): 33(3)
Similar 1949 Act
Section(s): 14(1)(e),
32(1)(f)
Manual of Patent Practice Chapter
Section 4: Industrial application
4.- (1) Subject to subsection (2) below, an invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture.
(2) An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application.
Notes & References
Relevant EPC Article(s): 57
Relevant PCT
Article(s): 33(4)
Relevant TRIPS
Article(s): 27.3
Similar 1949 Act
Section(s): 32(1)(g),
10(1)(a)
Manual of Patent Practice Chapter
5.- (1) For the purposes of this Act the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in any such application is, except as provided by the following provisions of this Act, the date of filing the application.
(2) If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his and each having a date of filing during the period of twelve months immediately preceding the date of filing the application in suit, then -
(a) if an invention to which the application in suit relates
is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of
being the date of filing
the application in suit be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed
in more than one relevant application, the earliest of them;
(b) the priority date of any matter contained in the
application in suit which was also disclosed in the earlier relevant
application or
applications shall be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed
in more than one relevant application, the earliest of them.
(3) Where an invention or other matter contained in the application in suit was also disclosed in two earlier relevant applications filed by the same applicant as in the case of the application in suit or a predecessor in title of his and the second of those relevant applications was specified in or in connection with the application in suit, the second of those relevant applications shall, so far as concerns that invention or matter, be disregarded unless -
(a) it was filed in or in respect of the same country as the
first; and
(b) not later than the date of filing the second, the first (whether or
not so specified) was unconditionally withdrawn, or was abandoned or refused,
without -
(i) having been made
available to the public (whether in the United Kingdom or elsewhere);
(ii) leaving any rights
outstanding; and
(iii) having served to
establish a priority date
in relation to another application, wherever made.
(4) The foregoing provisions of this section shall apply for determining the priority date of an invention for which a patent has been granted as they apply for determining the priority date of an invention to which an application for that patent relates.
(5) In this section "relevant application" means any of the following applications which has a date of filing, namely -
(a) an application for a patent under this Act;
(b) an application in
or for a convention country (specified under section 90 below) for protection in respect of
an invention or an application which, in accordance with the law of a
convention country or a treaty or international convention to which a
convention country is a party, is equivalent to such an application.
(6) References in subsection (5) above to a convention country include references to a country, other than the United Kingdom, which is a member of the World Trade Organisation.
Notes & References
Relevant EPC Article(s): 87, 89
Relevant Rule(s): 6
Relevant Paris
Convention Article(s): 4
Similar 1949 Act
Section(s): 5,
49
Manual of Patent Practice Chapter
Section 6: Disclosure of matter, etc, between earlier and later applications
6.- (1) It is hereby declared for the avoidance of doubt that where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 5(2) above in or in connection with that application specifying an earlier relevant application, the application in suit and any patent granted in pursuance of it shall not be invalidated by reason only of relevant intervening acts.
(2) In this section -
"relevant application" has the same meaning as in section 5 above; and
"relevant intervening acts" means acts done in relation to matter disclosed in an earlier relevant application between the dates of the earlier relevant application and the application in suit, as for example, filing another application for the invention for which the earlier relevant application was made, making information available to the public about that invention or that matter or working that invention, but disregarding any application, or the disclosure to the public of matter contained in any application, which is itself to be disregarded for the purposes of section 5(3) above.
Notes & References
Relevant Paris Convention
Article(s): 4B
Similar 1949 Act
Section(s): 52
Manual of Patent Practice Chapter
RIGHT TO APPLY FOR AND OBTAIN A PATENT
AND
BE MENTIONED AS INVENTOR
Manual of Patent Practice Chapter
Section 7: Right to apply for and obtain a patent
7.- (1) Any person may make an application for a patent either alone or jointly with another.
(2) A patent for an invention may be granted -
(a) primarily to the inventor or joint inventors;
(b) In preference to
the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law
or treaty or international convention, or by virtue of an enforceable term of
any agreement entered into with the inventor before the making of the invention,
was or were at the time of the making of the invention entitled to the whole of
the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to
the successor or successors in title of any person or persons mentioned in
paragraph (a) or (b) above or any person so mentioned and the successor or
successors in title of another person so mentioned; and to no other person.
(3) In this Act "inventor" in relation to an invention means the actual deviser of the invention and "joint inventor " shall be construed accordingly.
(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.
Notes & References
Relevant EPC Article(s): 60,138
Relevant PCT
Article(s): 9
Similar 1949 Act
Section(s): 1
Manual of Patent Practice Chapter
Section 8: Determination before grant of questions about entitlement to patents etc
8.- (1) At any time before a patent has been granted for an invention (whether or not an application has been made for it) -
(a) any person may refer to the Comptroller the question whether he is entitled
to be granted (alone or with any other persons) a patent for that invention or
has or would have any right in or under any patent so granted or any
application for such a patent; or
(b) any of two or more
co-proprietors of an application for a patent for that invention may so refer
the question whether any right in or under the application should be
transferred or granted to any other person; and the Comptroller shall determine the question and
may make such order as he thinks fit to give effect to the determination.
(2) Where a person refers a question relating to an invention under subsection (1)(a) above to the Comptroller after an application for a patent for the invention has been filed and before a patent is granted in pursuance of the application, then, unless the application is refused or withdrawn before the reference is disposed of by the Comptroller, the Comptroller may, without prejudice to the generality of subsection (1) above and subject to subsection (6) below -
(a) order that the application shall proceed in the name of
that person, either solely or jointly with that of any other applicant, instead
of in the name of the applicant or any specified applicant;
(b) where the reference
was made by two or more persons, order that the application shall proceed in
all their names jointly;
(c) refuse to grant a
patent in pursuance of the application or order the application to be amended
so as to exclude any of the matter in respect of which the question was
referred;
(d) make an order
transferring or granting any licence or other right in or under the application
and give directions to any person for carrying out the provisions of any such
order.
(3) Where a question is referred to the Comptroller under subsection (1)(a) above and -
(a) the Comptroller orders an application for a patent
for the invention to which the question relates to be so amended;
(b) any such
application is refused under subsection 2(c) above before the Comptroller has disposed of the reference
(whether the reference was made before or after the publication of the
application); or
(c) any such
application is refused under any other provision of this Act or is withdrawn
before the Comptroller has disposed of the reference, but after the publication of
the application; the Comptroller may order that any person by whom the reference was made
may within the prescribed period make a new application for a patent for the
whole or part of any matter comprised in the earlier application or, as the
case may be, for all or any of the matter excluded from the earlier
application, subject in either case to section 76 below, and in either case that, if
such a new application is made, it shall be treated as having been filed on the
date of
filing the earlier
application.
(4) Where a person refers a question under subsection (1)(b) above relating to an application, any order under subsection (1) above may contain directions to any person for transferring or granting any right in or under the application.
(5) If any person to whom directions have been given under subsection (2)(d) or (4) above fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the Comptroller may, on application made to him by any person in whose favour or on whose reference the directions were given, authorise him to do that thing on behalf of the person to whom the directions were given.
(6) Where on a reference under this section it is alleged that, by virtue of any transaction, instrument or event relating to an invention or an application for a patent, any person other than the inventor or the applicant for the patent has become entitled to be granted (whether alone or with any other persons) a patent for the invention or has or would have any right in or under any patent so granted or any application for any such patent, an order shall not be made under subsection (2)(a), (b) or (d) above on the reference unless notice of the reference is given to the applicant and any such person, except any of them who is a party to the reference.
(7) If it appears to the Comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the Court, he may decline to deal with it and, without prejudice to the Court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the Court in Scotland, the Court shall have jurisdiction to do so.
(8) No directions shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of deceased persons, or their rights or obligations as such.
Notes & References
Relevant EPC Article(s): 61
Relevant Rule(s): 7,8,9,10,11
Similar 1949 Act
Section(s): 56
Tribunal Practice Notice TPN 1/2000
on Patent Office Practice
Patent Court Practice Direction CPR
49E 13
Court of Session Rules Chapter 55,
55.9
Manual of Patent Practice Chapter
Section 9: Determination after grant of questions referred before grant
9.- If a question with respect to a patent or application is referred by any person to the Comptroller under section 8 above, whether before or after the making of an application for the patent, and is not determined before the time when the application is first in order for a grant of a patent in pursuance of the application, that fact shall not prevent the grant of a patent, but on its grant that person shall be treated as having referred to the Comptroller under section 37 below any question mentioned in that section which the Comptroller thinks appropriate.
Notes & Reference
Manual of Patent Practice Chapter
Section 10: Handling of application by joint applicants
10.- If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the Comptroller may, on a request made by any of the parties, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it shall be proceeded with, or for both those purposes, according as the case may require.
Notes & References
Relevant Rule(s): 12
Similar 1949 Act
Section(s): 17(5)
Manual of Patent Practice Chapter
Section 11: Effect of transfer of application under s.8 or 10
11.- (1) Where an order is made or directions are given under section 8 or 10 above that an application for a patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under either of those sections, continue in force and be treated as granted by the persons in whose name the application is to proceed.
(2) Where an order is made or directions are given under section 8 above that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant (on the ground that the original applicant or applicants was or were not entitled to be granted the patent), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under that section and subject to subsection
(3) If before registration of a reference under section 8 above resulting in the making of any order mentioned in subsection (2) above -
(a) the original applicant or any of the applicants, acting
in good faith, worked the invention in question in the United Kingdom or made
effective and serious preparations to do so; or
(b) a licensee of the
applicant, acting in good faith, worked the invention in the United Kingdom or
made effective and serious preparations to do so; that or those original
applicant or applicants or the licensee shall, on making a request within the
prescribed period to the person in whose name the application is to proceed, be
entitled to be granted a licence (but not an exclusive licence) to continue working or, as the
case may be, to work the invention
(4) Any such licence shall be granted for a reasonable period and on reasonable terms.
(5) Where an order is made as mentioned in subsection (2) above, the person in whose name the application is to proceed or any person claiming that he is entitled to be granted any such licence may refer to the Comptroller the question whether the latter is so entitled and whether any such period is or terms are reasonable, and the Comptroller shall determine the question and may, if he considers it appropriate, order the grant of such licence.
Notes & References
Relevant Rule(s): 13
Manual of Patent Practice Chapter
Section 12: Determination of questions about entitlement to foreign and convention patents, etc
12.- (1) At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made -
(a) any person may refer to the Comptroller the question whether he is entitled
to be granted (alone or with any other persons) any such patent for that
invention or has or would have any right in or under any such patent or an
application for such a patent; or
(b) any of two or more
co-proprietors of an application for such a patent for that invention may so
refer the question whether any right in or under the application should be
transferred or granted to any other person; and the Comptroller shall determine the question so far
as he is able to and may make such order as he thinks fit to give effect to the
determination.
(2) If it appears to the Comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the Court, he may decline to deal with it and, without prejudice to the Court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the Court in Scotland, the Court shall have jurisdiction to do so.
(3) subsection (1) above, in its application to a European patent and an application for any such patent, shall have effect subject to section 82 below.
(4) Section 10 above, except so much of it as enables the Comptroller to regulate the manner in which an application is to proceed, shall apply to disputes between joint applicants for any such patent as is mentioned in subsection (1) above as it applies to joint applicants for a patent under this Act.
(5)Section 11 above shall apply in relation to -
(a)
any orders made under subsection (1) above and any directions given under section 10 above by virtue of subsection (4)
above; and
(b) any orders made and
directions given by the relevant convention Court with respect to a question corresponding to any
question which may be determined under subsection (1) above; as it applies to
orders made and directions given apart from this section under section 8 or 10 above.
(6) In the following cases, that is to say -
(a) where an application for a European Patent (UK) is refused or withdrawn, or the
designation of the United Kingdom in the application is withdrawn, after
publication of the application but before a question relating to the right to
the patent has been referred to the Comptroller under subsection (1) above or
before proceedings relating to that right have begun before the relevant
convention Court;
(b) where an
application has been made for a European patent (UK) and on a reference under subsection
(1) above or any such proceedings as are mentioned in paragraph (a) above the Comptroller, the Court or the relevant convention Court determines by a final decision
(whether before or after publication of the application) that a person other
than the applicant has the right to the patent, but that person requests the European Patent
Office that the
application for the patent should be refused; or
(c) where an international
application for a patent (UK) is withdrawn, or the designation of the United Kingdom in the
application is withdrawn, whether before or after the making of any reference
under subsection (1) above but after publication of the application;
the Comptroller may order that any person (other than the applicant) appearing to him to be entitled to be granted a patent under this Act may within the prescribed period make an application for such a patent for the whole or part of any matter comprised in the earlier application (subject, however, to section 76 below) and that if the application for a patent under this Act is filed, it shall be treated as having been filed on the date of filing the earlier application.
(7) In this section -
(a) references to a patent and an application for a patent
include respectively references to protection in respect of an invention and an
application which, in accordance with the law of any country other than the
United Kingdom or any treaty or international convention, is equivalent to an
application for a patent or for such protection; and
(b) a decision shall be
taken to be final for the purposes of this section when the time for appealing
from it has expired without an appeal being brought or, where an appeal is
brought, when it is finally disposed of.
Notes & References
Relevant EPC Article(s): Protocol On Recognition , 61
Relevant Rule(s): 7,8,9,10,11,12,13
Similar 1949 Act
Section(s): 56
Tribunal Practice Notice TPN 1/2000
on Patent Office Practice
Patent Court Practice Direction CPR
49E 13
Court of Session Rules Chapter 55,
55.9
Manual of Patent Practice Chapter
Section 13: Mention of Inventor
13.- (1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.
(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement -
(a) identifying the person or persons whom he believes to be
the inventor or inventors; and
(b) where the applicant
is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his
or their right to be granted the patent; and, if he fails to do so, the
application shall be taken to be withdrawn.
(3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the Comptroller for a certificate to that effect, and the Comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above.
Notes & References
Relevant EPC Article(s): 62, 81
Relevant Rule(s): 14,15
Relevant PCT
Article(s): 4(1), 4(4)
Relevant Paris
Convention Article(s): 4ter
Similar 1949 Act
Section(s): 16
Manual of Patent Practice Chapter
APPLICATIONS
Manual of Patent Practice Chapter
Section 14: Making of application
14.- (1) Every application for a patent -
(a) shall be made in the prescribed form and shall be filed
at the Patent Office in the prescribed manner; and
(b) shall be
accompanied by the fee prescribed for the purposes of this subsection
(hereafter in this Act referred to as the filing fee).
(2) Every application for a patent shall contain -
(a) a request for the grant of a patent;
(b) a specification
containing a description of the invention, a claim or claims and any drawing
referred to in the description or any claim; and
(c) an abstract; but
the foregoing provision shall not prevent an application being initiated by
documents complying with section 15(1) below.
(3) The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.
(4) Repealed -see Section 125A
(5) The claim or claims shall -
(a) define the matter for which the applicant seeks
protection;
(b) be clear and
concise;
(c) be supported by the
description; and
(d) relate to one
invention or to a group of inventions which are so linked as to form a single
inventive concept.
(6) Without prejudice to the generality of subsection (5)(d) above, rules may provide for treating two or more inventions as being so linked as to form a single inventive concept for the purposes of this Act.
(7) The purpose of the abstract is to give technical information and on publication it shall not form part of the state of the art by virtue of section 2(3) above, and the Comptroller may determine whether the abstract adequately fulfils its purpose and, if it does not, may reframe it so that it does.
(8) Repealed -see Section 125A
(9) An application for a patent may be withdrawn at any time before the patent is granted and any withdrawal of such an application may not be revoked.
Notes & References
Relevant EPC Article(s): 75,78,82,83,84,85
Relevant Rule(s): 16,18,19,20,22
Relevant PCT
Article(s): 3,4,5,6,7,10
Relevant Paris
Convention Article(s): 4G
Relevant TRIPS
Article(s): 29.1
Similar 1949 Act
Section(s): 2,
4
Manual of Patent Practice Chapter
Section 15: Date of filing application
15.- (1) The date of filing an application for a patent shall, subject to the following provisions of this Act, be taken to be the earliest date on which the following conditions are satisfied in relation to the application, that is to say -
(a) the documents filed at the Patent Office contain an
indication that a patent is sought in pursuance of the application;
(b) those documents
identify the applicant or applicants for the patent;
(c) those documents
contain a description of the invention for which a patent is sought (whether or
not the description complies with the other provisions of this Act and with any
relevant rules); and
(d) the applicant pays
the filing
fee.
(2) If any drawing referred to in any such application is filed later than the date which by virtue of subsection (1) above is to be treated as the date of filing the application, but before the beginning of the preliminary examination of the application under section 17 below, the Comptroller shall give the applicant an opportunity of requesting within the prescribed period that the date on which the drawing is filed shall be treated for the purposes of this Act as the date of filing the application, and -
(a) if the applicant makes any such request, the date of filing the drawing shall be so treated;
but
(b) otherwise any
reference to the drawing in the application shall be treated as omitted.
(3) If on the preliminary examination of an application under section 17 below it is found that any drawing referred to in the application has not been filed, then -
(a) if the drawing is subsequently filed within the
prescribed period, the date on which it is filed shall be treated for the
purposes of this Act as the date of filing the application; but
(b) otherwise any
reference to the drawing in the application shall be treated as omitted.
(3A) Nothing in subsection (2) or (3)
above shall be construed as affecting the power of the Comptroller under section 117(1) below to correct errors or
mistakes with respect to the filing of drawings.
(4) Where, after an application for a
patent has been filed and before the patent is granted, a new application is
filed by the original applicant or his successor in title in accordance with
rules in respect of any part of the matter contained in the earlier application
and the conditions mentioned in subsection (1) above are satisfied in relation
to the new application (without the new application contravening section 76 below) the new application shall be
treated as having, as its date of filing, the date of filing the earlier application.
(5) An application which has a date of filing by virtue of the foregoing
provisions of this section shall be taken to be withdrawn at the end of the
relevant prescribed period, unless before that end the applicant -
(a)
files at the Patent Office one or more claims for the purposes of the
application and also the abstract; and
(b) makes a request for
a preliminary examination and search under the following provisions of this Act
and pays the search fee.
Notes & References
Relevant EPC Article(s): 80,91
Relevant Rule(s): 23,24,25,26
Relevant PCT
Article(s): 3, 11,14
Relevant Paris
Convention Article(s): 4A , 4G
Manual of Patent Practice Chapter
Section 16: Publication of application
16.- (1) Subject to section 22 below, 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 anti-social behaviour.
Notes & References
Relevant EPC Article(s): 93
Relevant Rule(s): 27
Relevant PCT
Article(s): 21,29
Manual of Patent Practice Chapter
EXAMINATION AND SEARCH
Manual of Patent Practice Chapter
Section 17: Preliminary examination and search
17.- (1) Where an application for a patent has a date of filing and is not withdrawn, and before the end of the prescribed period -
(a) a request is made by the applicant to the Patent Office
in the prescribed form for a preliminary examination and a search; and
(b) the prescribed fee
is paid for the examination and search (the search fee); the Comptroller shall refer the application to an
examiner for a preliminary examination and search, except that he shall not refer
the application for a search until it includes one or more claims.
(2) On a preliminary examination of an application the examiner shall 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 shall report his determination to the Comptroller.
(3) If it is reported to the Comptroller under subsection (2) above that not all the formal requirements are complied with, he shall give the applicant an opportunity to make observations on the report and to amend the application within a specified period (subject to section 15(5) above) so as to comply with those requirements (subject, however, to section 76 below), and if the applicant fails to do so the Comptroller may refuse the application.
(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.
Notes & References
Relevant EPC Article(s): 90, 91,92
Relevant TRIPS
Article(s): 62, 41
Relevant Rule(s): 28,29,31,32
Relevant PCT
Article(s): 14, 15
Similar 1949 Act
Section(s): 6,
7
Manual of Patent Practice Chapter
Section 18: 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 preliminary examination and 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 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 17 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.
Notes & References