Patents Act 1977: Periods for response to first examination reports and timescales for further examination reports

1. This Notice concerns a change to the standard period specified for response to the first substantive examination report issued in relation to a patent application, in those cases where the first examination report is issued 3½ years or more after the earliest date of the application. In parallel with this change, the Notice sets out a commitment by the Intellectual Property Office concerning the timescale for re-examination following receipt of amendments or observations in response to an examination report. Both of these changes have received positive consideration by the Patent Practice Working Group (PPWG), representing the user community.

Background

2. The compliance period under section 20 of the Patents Act 1977 for putting an application in order is set out in rule 30 of the Patents Rules 2007 and is (i) 4 years and 6 months calculated from the “earliest date” (i.e. the earliest priority date or, where there is none, the filing date) of the application; or (ii) 12 months calculated from the date that the first substantive examination report is sent to the applicant, whichever expires the later. All applications (other than divisional applications) where the first substantive examination report is issued 3½ years or more after the earliest date of the application therefore have 12 months to meet the requirements of the Patents Act and Rules.

3. For all examination reports, the patent examiner specifies a suitable period for response; this period is set at the examiner’s discretion, but examiners generally follow standard periods, as set out in the Manual of Patent Practice. Until now, the standard period for response for most first examination reports has been 4 months from issue of the report. However, applicants are entitled to extend this period under section 117B by 2 months as of right on provision of a written request, as set out in rule 109(2). For first examinations issued 3½ years or more from the earliest date this means that a response to the first examination report may not be received by the examiner until there are fewer than 6 months remaining of the compliance period, with the result that later rounds of amendments and Office actions become very compressed. This is clearly undesirable for both the applicant and the Office.

Response periods for first examination reports

4. Where the first examination report on an application is issued under section 18(3) 3½ years or more after the earliest date of the application, the standard period for response will now be 2 months from issue of the examination report. This period may be extended as of right by 2 months by providing a written request.

5. Where the first examination report on an application is issued less than 3½ years after the earliest date of the application, the standard period for response will remain the same as previously, namely 4 months from issue of the examination report or, for combined search and examination cases, 2 years from the earliest date. This period may also be extended as of right by 2 months by providing a written request.

6. Patent examiners will continue to use their judgement to determine whether these standard periods for response are appropriate for the circumstances of a given case. For example, first examination reports on divisional applications received close to the compliance date of the parent application may have a shorter response period.

Timescales for further examination reports

7. From now on, the Office will aim to deal with responses to examination reports under section 18(3) (i.e. amendments and/or observations) within 2 months of receipt of the applicant’s or agent’s response. That is, the aim is that within 2 months the examiner will either issue a further report under section 18(3) (or other correspondence concerning outstanding matters), or send the application forward for grant.

Enquiries

8. If you have any enquiries about this Practice Notice, please contact:

Patents Legal Section
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel:  +44 (0) 1633 813536
Fax: +44 (0) 1633 814491

Sean Dennehey
Director of Patents
Intellectual Property Office
6 December 2010