Section 89B: Adaptation of provisions in relation to international application
Sections (89B.01 - 89B.18) updated January 2023.
89B.01
This is the third and last section concerned specifically with international applications for patents (UK), and was introduced by the CDP Act. It modifies the requirements to be met by the application under the 1977 Act in view of its status as an international application. Section 89 makes provision for an international application for a patent (UK) to be treated as an application under the 1977 Act, subject to sections 89A and 89B (see 89.01-05).
| Section 89B(1) |
| Where an international application for a patent (UK) is accorded a filing date under the Patent Co-operation Treaty - (a) that date, or if the application is re-dated under the Treaty to a later date that later date, shall be treated as the date of filing the application under this Act, (b) any declaration of priority made under the Treaty shall be treated as made under section 5(2) above, and where in accordance with the Treaty any extra days are allowed, the period of 12 months allowed under section 5(2A) above shall be treated as altered accordingly, and (c) any statement of the name of the inventor under the Treaty shall be treated as a statement filed under section 13(2) above. |
89B.02
r.3 is also relevant
Subsection (1) provides for various acts (concerning filing, priority and naming of the inventor) done under the PCT to be treated as having been done under the 1977 Act. With regard to subsection (1)(b), the declaration of priority must have been made under Article 8 of the PCT, must not have been lost or abandoned and must fulfil certain requirements of the PCT Rules (see 5.10). Note that if a priority right was restored by a another receiving office under the PCT ‘‘due care criterion’’, no new request needs to be filed with the IPO following entry into the GB national phase as the office will treat the period of 12 months allowed under section 5(2A) as altered accordingly. With regards to whether, under subsection (1)(c), information concerning the inventor given under Article 4 of the PCT obviates the need for filing of Form 7, see 13.12.1, 89A.12 and 89A.18.
[ See section 117 for the procedure for correcting an error made by the receiving office under the PCT whereby an international application for a patent (UK) has been accorded an incorrect date of filing, or where the declaration made under Article 8(1) of the PCT (ie claiming priority) has been considered not to have been made by the receiving office or by the International Bureau because of an error made by that office or Bureau. Alternatively, rule 108 may be applicable.]
89B.03
r.25(3) is also relevant
Certain of the UK national formal requirements concerning the form and manner of presentation of the drawings and other documents included in an international application, as well as the filing of a request for grant, are treated as having been complied with provided that the corresponding provisions of the PCT Regulations have been fulfilled (see 15A.10). However, any translations which are filed at this Office by the applicant and are to be included in the re-published application (see 89A.14.2) (including drawings re-executed because the originals contained textual matter in a foreign language) must comply with the UK national rules, especially rule 14. All amendments filed after entry into the national phase are subject to the UK national rules. (see 19.15.1 for voluntary amendments filed after entry into the national phase and before issue of the first examination report).
| Section 89B(2) |
| If the application, not having been published under this Act, is published in accordance with the Treaty it shall be treated, for purposes other than those mentioned in subsection (3), as published under section 16 above when the national phase of the application begins or, if later, when published in accordance with the Treaty. |
89B.04
r.66(1) is also relevant
Subsection (2) provides for publication under the PCT to be treated for most purposes as publication under s.16 of the 1977 Act when the conditions for entering the national phase (as set out in subsection (3) of section 89A) are met. An international application published under the PCT thus becomes part of the state of the art under s.2(3) upon entering the national phase (whether this occurs on expiry of the prescribed 31 month period (see 89A.05) or occurs early at the applicant’s request (see 89A.16 to 89A.21). The file and register entry become open to public inspection at the same time. There is then no need for the specification to be republished in full in the UK, since publication under s.16 is deemed to have already taken place. Instead, the administrative act of re-publication takes place (see 89A.14.2). If an application has not been published under the PCT when it enters the national phase, the application is not treated as published under section 16 until it is either published under the PCT or published in full under s.16 following a request from the applicant for accelerated publication upon early entry to the national phase (see 89A.20.1).
| Section 89B(3) |
| For the purposes of section 55 (use of invention for service of the Crown) and section 69 (infringement of rights conferred by publication) the application, not having been published under this Act, shall be treated as published under section 16 above - (a) if it is published in accordance with the Treaty in English, on its being so published; and (b) if it is so published in a language other than English (i) on the publication of a translation of the application in accordance with section 89A(6) above, or (ii) on the service by the applicant of a translation into English of the specification of the application on the government department concerned or, as the case may be, on the person committing the infringing act. The reference in paragraph (b) (ii) to the service of a translation on a government department or other person is to its being sent by post or delivered to that department or person. |
89B.05
The purposes excepted under subsection (2) are those mentioned in subsection (3). The latter relates to the provision of the text of the application in English in order to secure certain rights regarding Crown use and infringement, and is substantially a continuation of the provisions of the old section 89(7). For the purposes of sections 55 and 69, the publication of the international application by the International Bureau is, if it is in English, considered to constitute publication under section 16. If in any other language, it is not treated as published under section 16 for the purposes of sections 55 and 69 until a translation of the application under section 89A(6) is published (see 89A.26). It is therefore necessary to file a written request with the prescribed fee that publication for the purposes of s.89A(6) is sought in order to obtain the rights in question in this way. These rights may also be obtained in relation to use or acts done before publication of that translation from the date on which the applicant sends a translation to the government department or potential infringer in question under section 55 or 69 respectively.
| Section 89B(4) |
| During the international phase of the application, section 8 above does not apply (determination of questions of entitlement in relation to application under this Act) and section 12 above (determination of entitlement in relation to foreign and convention patents) applies notwithstanding the application; but after the end of the international phase, section 8 applies and section 12 does not. |
89B.06
Subsection (4) sets out which sections of the 1977 Act apply to any disputes about entitlement to the application during and after the international phase. Prior to entry into the national phase, questions about entitlement to the international application may be determined under s.12. Upon entry, s.12 ceases to be applicable and such questions become subject to ss.8 to 11.
| Section 89B(5) |
| When the national phase begins the comptroller shall refer the application for so much of the examination and search under sections 15A, 17 and 18 above as he considers appropriate in view of any examination or search carried out under the Treaty. |
89B.07
Subsection (5) provides for preliminary examination, search and substantive examination of the application after it enters the national phase.
89B.07.1
s. 13(2), s. 89B(5) and r.25 is also relevant
Rule 25(1) designates certain requirements of the rules as formal requirements. Under rule 25(3), an international application is treated as complying with these formal requirements to the extent that it complies with any corresponding provisions of the PCT. However, preliminary examination under section 15A covers not just the formal requirements but also the requirements under section 13(2) [in respect of the inventor(s)] and under section 15(10) (see 15.50). Section 89B(5) permits an examiner to determine, during the national phase, whether these requirements are met (see Thaler’s application O/447/22).
89B.08
r.106(2)(a) is also relevant
Filing of a Form 9A with the appropriate fee, including any excess claims fees, is required. There is a lower fee for a search under section 17(1) where the application has already been the subject of a search by the International Searching Authority before the request for search is made. If the International Search Authority has issued a declaration under article 17(2) of the PCT that no international search has been established, the application is considered to have been “subject of a search” and the lower fee applies. If neither an international search nor a declaration that no international search has been established has been issued by the date of request for search, the full fee is payable (see also 89A.19-20.1). If the lower fee has been paid apparently without justification, the applicant should be contacted to establish whether or not a search has been performed. If not, the full fee should be requested. In the event that an international search report becomes available before the examiner commences the search, then the examiner should use the information from the international search report and arrange for the excess fee to be refunded. Similarly, if in other circumstances the larger fee has been paid unnecessarily, the excess should be refunded before the application is forwarded to the examiner. These are the only situations in which rule 106(2)(a) can be used to provide a refund, under no circumstances can rule 106(2)(a) be used to refund the reduced search fee. If the application is withdrawn prior to substantive examination, the whole of the search fee may be refunded unless it has been necessary to perform a search within the Office. If an international search report has been established on the application, but the claims are amended so that a supplementary search is necessary under s.17(8), a full supplementary search fee in addition to the reduced search fee is payable – no refund of the latter can be given.
[At the examination stage, where the examiner performs a search beyond the topup search (see 89B.12), whether or not a full search fee has been paid, there is no requirement to produce an external search report on the application. Any new citations found should be included in the substantive examination report issued to the applicant. For procedures to be followed when a full search is to be carried out, see 89A.18-21.]
89B.09
r.68(4) is also relevant
Patents Form 10 must be filed together with the appropriate fee, including any excess claims fees, within 33 months of the priority date or, if none, the filing date of the application, or within two months of the date on which the national phase begins, whichever expires the later. This period may be extended in two month tranches, but any extension is not available after the end of the period of two months beginning immediately after the expiry of the period to be extended, in accordance with r.108(2) or (3) and (4) to (7) - see 123.34-41.
Substantive examination
PCT r.44bis. 1(a) are also relevant
89B.10
When Form 10 has been filed, and after re-publication or publication under s.16, r.44bis.1(a) the application is referred to the appropriate examining group, where it ranks with national applications of the same priority date, for its substantive examination. If the application is withdrawn prior to substantive examination, the examination fee may be refunded. The examination process is much like that for any other UK application (see section 18) except for the regard paid to the results of the International Search Report, any Supplementary International Search Reports and the International Preliminary Report on Patentability (IPRP). The examiner should check Patentscope for the presence of an International Search Report, any Supplementary International Search Reports and an International Preliminary Report on Patentability (IPRP), where these have not already been received from the International Bureau and imported onto the PDAX dossier. If such documents are found, a minute should be added to the PDAX dossier, with an appropriate title (e.g. EXR IPRP), detailing what the document is, along with when and where it was found. A Supplementary International Search Report will only be present if the applicant requested such a search in the international phase (see 89.03). It should be noted that the “written opinion” issued to the applicant on every PCT application has the same contents as the IPRP if the applicant has not requested international preliminary examination (IPE) under Chapter II of the PCT. If IPE has been requested, the written opinion will have been superseded by an IPRP issued under Chapter II. There should therefore be no need to check the contents of the written opinion as long as the IPRP has been referred to. If accelerated processing under the PCT(UK) Fast Track is requested, the procedure described in 89B.17 should be followed.
[ The application should be checked to confirm that re-publication has in fact taken place. Applications not re-published should be referred to Publishing Section (although if examination is due or overdue, sending for re-publication may be deferred until after examination).
The examination document will comprise the documents in the TOC with the codes DESC, CLMS and DRWG, each annotated as the “working copy”, which will have been assembled by Formalities.
[Deleted]
Care should be taken in the case of a translation that the translation of the application and not that of the priority document is examined. Serious errors discovered in PCT applications should be brought to the attention of the appropriate legal adviser in the Registered Rights Legal Team, who will liaise with the International Bureau if necessary. Other errors should be ignored. Where the wrong abstract has been published in the international phase, see 89A.14.2. ]
89B.11
r.113(5), (6) are also relevant
The International Search Report (and any Supplementary International Search Reports) should be inspected before examination becomes due and copies of cited documents ordered. If there are a large number of citations, the case may be referred to the examiner to confirm whether all of them are needed. A translation of the search report, when not in English, is available. Where a cited document is not in the English language, an equivalent which is in English should be obtained if available. Rule 113(5) allows the comptroller to request a translation of any document or part thereof which is in a language other than English and is referred to in an International Search Report or International Preliminary Report on Patentability, or cited in an International Preliminary Examination Report of the application. If the family of any document listed in the International Search Report as X or Y category does not include an English language equivalent, the application should be referred to the examiner prior to examination to determine whether they wish to make such a request. The examiner should bear in mind that translation costs can be a significant burden to the applicant and should not request a translation unless they believe that they will not otherwise easily be able to determine the relevance of the document to the patentability of the invention. The examiner may call for a partial translation, eg only of the claims, if that is felt likely to be sufficient. A fuller translation may be requested at a later stage if it is found to be necessary.
[Where the International Search Report includes a list of family members this can normally be relied on to identify any English language equivalents of cited documents. If there is no list of family members provided, they should be identified by using EPOQUE. In the case of recently published citations, the family listing by either of these routes may not be complete and it may be advisable to make a further inquiry when conducting the substantive examination if an English language equivalent was not identified earlier. ]
[Letter EL6 should be used for requesting a translation. ]
89B.12
The substantive examiner should consider the International Search Report (and any Supplementary International Search Reports) and should re-search the application only if they are reasonably sure that such a search will yield more pertinent art. Circumstances where re-searching might be needed include: if the examiner is already aware of documents that would be relevant (e.g. from an earlier case), or if a particularly relevant classification area has been created in the interim or otherwise missed in the international search. Such re-searching should not be done on a purely speculative basis – i.e. if the examiner is surprised that no relevant documents have been found. Otherwise, their searching will be restricted to the “top-up” search (if necessary in light of any top-up search performed in the international phase – see 89B.12.1) and any supplementary search under s.17(8) necessitated by allowable amendment of the claims, as with national applications (see 17.120-17.123).
89B.12.1
Where international preliminary examination under Chapter II of the PCT has been requested, and the request was made after 1 July 2014, a top-up search is normally performed as part of the international preliminary examination process. The International Preliminary Report on Patentability (IPRP) indicates whether a top-up search has been performed and includes any documents identified in this search that are relevant to patentability; a separate search report will not be issued by the International Preliminary Examining Authority. Where such a search has been performed, the examiner is not required to perform any further searching in the national phase, unless the top-up search was performed before 21 months from the priority date (in which case, a standard top-up search should be performed), or the circumstances in 89B.12 apply.
[All documents cited in the PCT top-up search should be recorded in PROSE by adding them to the Citations list, even if they are not relied upon in the examination report, as per 18.85.]
89B.12.2
Where the International Searching Authority (ISA) has issued a declaration under article 17(2) of the PCT that no International Search Report has been established, but the substantive examiner considers that the claims relate to a patentable invention, a full search should be performed but no additional fee may be requested from the applicant. If the substantive examiner disagrees with the ISA’s assessment of plurality, and as a result determines that further searching is needed (bearing in mind 89B.12), this should be carried out without requiring an additional fee. Where amendments have been made during the international or national phase which necessitate a supplementary search under s.17(8), a full supplementary search fee – in addition to the reduced search fee payable on entry to the national phase for all international applications with an International Search Report (see 89B.08) – is payable under ss.17(8), 19(1) and 89A(5).
89B.12.3
If any searching has been performed, no search report should be issued to the applicant; if additional citations are found, these should be brought to the applicant’s attention on the examination report. (This does not apply to a supplementary search under s.17(8), or to a UK application divided from an international application, for which the preparation and issue of a search report is necessary, see 15.38 and 17.121). Copies of additional documents cited by the UK examiner are issued to the applicant, but not copies of the documents cited in the international search report or the IPRP (see 17.104.1, 17.105.2).
[The examiner should record details of the top-up search in an internal search report. If no top-up searching is necessary, this should be recorded in the report instead. Otherwise, the report should include a search statement and details of subclasses searched additional to the international search report. Where only topup searching is done then there are no “additional fields of search”. However, where a full further search is conducted in areas not corresponding to areas covered by the international search then they should be recorded as “additional fields of search” for inclusion on the front page of the B document. ]
89B.13
PCT r.44bis.2 and PCT r.94.2 are also relevant
Where the UK has been elected under Chapter II of the PCT, a copy of the International Preliminary Report on Patentability (IPRP) issued under Chapter II together with any annexes (amendments) is communicated to the United Kingdom Office by the International Bureau. Similarly, where no election under Chapter II is made, a copy of the International Preliminary Report on Patentability (IPRP) issued under Chapter I is communicated to the United Kingdom Office by the International Bureau. The IPRP is either prepared in English or a translation into English is made available. If the report or translation into English is not on file, the examiner should check Patentscope for its presence. If such documents are found, a minute should be added to the PDAX dossier, with an appropriate title (e.g. EXR IPRP), detailing what the document is, along with when and where it was found. If the IPRP was issued under Chapter II, the examiner should check for the presence of amendments annexed to it and a minute should be sent to formalities asking them to import the IPRP (Chapter II) and any amendments into the dossier. If the document in question is not available via Patentscope, the examiner should ask Formalities to obtain it so that the report, and any amendments annexed to it, can be taken into account in the substantive examination (see 89B.15). (On the rare occasion that Formalities are unable to obtain the document, they should refer the request to the National Phase Officer so that the report can be ordered from WIPO). An EPO online file inspection could also be considered to view missing documents if the application has an equivalent going through the European regional phase. As a final resort, the agent for the applicant may be approached to obtain a missing report. In exceptional cases, the examiner may consider that it is necessary to see other documents, such as written opinions, kept on file at the international authority. The National Phase Officer should be asked to obtain a copy of the document(s) in question.
[The copy of the IPRP communicated by the International Bureau is added to the dossier and set as “open to public inspection”. Any other documents obtained from the IPEA at the examiner’s request are also added to the dossier and set as “open to public inspection”. ]
89B.14
Substantive examination of a PCT application after an IPRP is based on the PCT pamphlet as published (which may include new or amended claims) and as amended during the international phase and/or after entry into the national phase. Any amendments made during the international phase which have been taken into account in the IPRP will be attached as “annexes” to the IPRP. Under section 89A(5) amendments during the international phase are normally to be treated as if made under the Act provided that, if the amendments are not in English, the applicant has filed a translation (see 89A.25). If such a translation is not filed then those amendments, made under the PCT, should be “disregarded” as described in 89A.25 unless subsequently re-submitted under the Act. The first report under section 18 should indicate whether the international application examined has been amended since publication and if so which pages, so that the applicant can check whether the Office has the correct form of the specification.
[ If the specification has been amended during the international phase, copies of replacement pages embodying these amendments in their latest form are incorporated in the examination document by the formalities examiner before the case is forwarded to the substantive examiner (see under 89B.10). The substantive examiner should check that they are examining the latest version of the application, taking into account any amendments made during the international phase. If the substantive examiner notices that amendments made during the international phase have not been incorporated into the specification, a minute should be sent to formalities asking them to do this (as long as the required translation has been filed if the amendments are not in English). RC8A, RC8B and RC8C respectively should be used to indicate that an international application has not been, or has been, amended since publication; where the amendments are annexed to the IPRP, the date of the letter for RC8B is that given in the report. If amendment has occurred the new pages with their filing dates should be listed. ]
89B.14.1
Where a number of conflicting amendments are on file, the latest to be filed are considered unless they are to be disregarded (see 89A.25). The date of filing of any amendments is stated in the IPRP; if subsequently filed amendments or statements make the applicant’s intentions appear uncertain, then the matter should be cleared up before examination begins.
89B.15
Since the question of patentability will have been considered by the international examiner in the light of the international search report, any amendments filed during the international phase are probably a response to one or more written opinions of the international phase examiner. The IPRP (see 89B.13) contains an explicit statement for each claim examined in respect of novelty, inventive step and industrial applicability, and may also include observations on plurality of invention, clarity, support, and whether any amendment adds matter. It should be noted that documents which appear to be included in the state of the art as defined in section 2(3) are not part of the art for the purposes of any international opinion or preliminary examination on patentability: however such documents can be listed in the IPRP under the heading ‘certain published documents’. The IPRP is not binding, and the final responsibility for determining whether the application complies with the Act and Rules belongs to the UK examiner, who should, however, derive as much assistance as possible from the report to reduce the work of substantive examination and to avoid going over the same ground as the international phase examiner. For example, the claims should be considered first in the light of any citations and explanations in the IPRP and in the written opinions, if available. Similarly, other issues should be approached on the basis of any relevant observations in the IPRP. Where a report is issued under s.18(3) for the first time, the examiner should include a paragraph indicating that the IPRP has been considered. On no account, however, should an IPRP objection be repeated unless the examiner is satisfied it is proper under the UK law or practice.
89B.15.1
If the IPRP raises major objections, and the applicant has not responded to these either by amendment or argument, the examiner should consider whether to issue an abbreviated examination report (AER) as the first report under s.18(3).
89B.15.2
Consideration should be given to observations or objections on unity of invention in the international search report or IPRP, but as for other substantive issues, the examiner should raise an objection under s.14(5)(d) if it is considered justified under UK practice. The need for search of a second or later invention should then be considered in accordance with 89B.12, and in the light of the claims actually covered by the international search report.
Third party observations
89B.16
Where third party observations have been filed in the international phase, the substantive examiner should consider them in the same way as they would third party observations filed on a domestic application (see 21.12 and 21.21). However, there is no need to acknowledge the third party observations or bring them to the attention of the applicant, since this will have been done in the international phase. Any comments filed by the applicant in the international phase in response to the observations should also be considered. Depending on when they were received, the observations may have been considered by the International Searching Authority (ISA) and/or the International Preliminary Examining Authority (IPEA). When checking the International Preliminary Report on Patentability (IPRP) as part of the routine examination procedure, the substantive examiner should consider any comments regarding the observations and related prior art, but ultimately should come to their own view on their relevance. Where a PCT application enters the national phase early, third party observations may be received by the International Bureau (IB) and appear on Patentscope later, after the application has been received by the examiner. In such cases the examiner should consider any such observations they discover as part of their usual checks of Patentscope during the examination process.
[The National Phase Officer should have imported any third party observations and response documents from the applicant into the PDAX dossier and ordered copies of any non-patent literature referred to in the observations. However, if the substantive examiner comes across any third party observations and/or related comments on Patentscope that are not present on the PDAX dossier, they should import them to the dossier or create a minute giving details of the documents.]
[Just as for domestic applications, third party observations filed in the international phase are made available on IPSUM along with any response documents from the applicant. The formalities examiner should skim all documents for any personal information and redact if necessary, adding the OLFI annotation to the redacted versions as usual. It should not be necessary to check for libellous or offensive material as the IB carries out such a check before publishing the observations on Patentscope. However, if the formalities or substantive examiner notices any such material that has been missed by the IB, it should be redacted as it would be for observations received under s.21 of the Act (see 21.06).]
Accelerated processing – PCT(UK) Fast Track
89B.17
As set out in the Practice Notice issued on 8 June 2012, patent applicants can request accelerated examination in the UK national phase through the PCT(UK) Fast Track if their PCT application has received a positive International Preliminary Report on Patentability (IPRP) in respect of at least one claim, under either PCT Chapter I or Chapter II. If the IPRP has not yet been issued, a positive Written Opinion of the International Searching Authority (WO-ISA) is also acceptable, since the WO-ISA will later be re-issued as the IPRP under PCT Chapter I. In order to qualify for this service, all claims present in the application at the time of the request must sufficiently correspond to one or more claims that have been examined in the IPRP or WO-ISA and found to meet the requirements for novelty, inventive step and industrial applicability. The claim correspondence requirements are the same as those applied under the Office’s Patent Prosecution Highway (PPH) agreements. Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims on file in the UK national phase are:
(i) of the same or similar scope as the claims found acceptable in the IPRP or WOISA, or
(ii) narrower in scope than the claims found acceptable in the IPRP or WO-ISA.
With regard to (ii), a claim that is narrower in scope occurs when a claim found to be acceptable in the IPRP or WO-ISA is amended to be further limited by an additional feature that is supported in the specification (description and/or claims). A claim in the UK national phase which is in a new or different category from those claims indicated as acceptable in the IPRP or WO-ISA is not considered to “sufficiently correspond”. For example, where the acceptable claims relate to a process of manufacturing a product, then the claims in the UK national phase are not considered to sufficiently correspond if they introduce product claims that are dependent on the corresponding process claims.
To request accelerated treatment, the applicant must make a request in writing before UK examination has commenced, indicating that the claims currently on file sufficiently correspond to one or more claims that were indicated as acceptable in the IPRP or WOISA; no further reasons for acceleration are needed. Though it should be noted that accelerated examination cannot take place until the international search has been performed or the applicant pays the additional search fee and a search is performed (see 89B.08). If the request for accelerated treatment is accepted, the usual procedure for accelerated examination is followed (see 18.07-18.07.2). As with all PCT applications, the examiner is not bound by the IPRP or WO-ISA and may come to their own conclusion in respect of novelty, inventive step or industrial applicability. Other matters will require full consideration, taking into account any observations which have been made in the IPRP or WO-ISA. For restrictions on the earliest date a s.18(4) report may be issued, see 18.07.2.
[The Formalities Examiner should check all requests for accelerated processing and on identifying a PCT(UK) Fast Track request should apply the “PCT(UK) Fast Track” label to the PDAX dossier cover, in addition to the appropriate Acceleration label(s).]
[Where the IPRP (and any associated amendments) or any other necessary documents are not already available on the dossier, the formalities examiner should obtain them using Patentscope and import them into the dossier. If there is no IPRP, but there is a Written Opinion, then this should be imported into the dossier. Where the documents are not available on Patentscope, the Formalities Examiner should ask the National Phase Officer to request the IPRP or Written Opinion and any amendments from the International Bureau. If the documents are still unavailable they should be requested from the applicant/attorney.]
[If the application has not been published in the international phase (i.e. because the application is entering the national phase early) and the applicant has requested accelerated publication, the practice set out in 89A.20.1 should be followed.]
[The examiner should take a prima facie view as to whether all claims present in the application sufficiently correspond to one or more claims that have been examined and found to meet the requirements for novelty, inventive step and industrial applicability in the IPRP or WO-ISA. If Box III of the IPRP indicates that certain claims have not been examined, the request for acceleration may only be accepted if those claims have been deleted. However, where the ISA has made no attempt to assess the industrial applicability of certain claims because they consider them to relate to a method of treatment or diagnosis, but the IPRP or WOISA is positive in respect of the novelty and inventive step of those claims, this can be treated as an exception and the request for acceleration should be allowed if the claims in the application sufficiently correspond to those claims. If there are any objections in Box V to novelty, inventive step or industrial applicability, the request may only be accepted if those claims have been deleted or amended such that they sufficiently correspond to allowable claims. Where the claims have been narrowed in scope, there is no need for the examiner to check whether the limitations to the claims are supported by the specification when considering the request for acceleration; the request may be accepted as long as the examiner is satisfied that the claims are narrower that those found acceptable in the IPRP or WO-ISA. However, a full assessment of support should be performed at substantive examination. If it is not clear from the request how the claims correspond to those indicated as acceptable in the IPRP or WO-ISA, the examiner may contact the applicant to request further clarification. Outstanding matters raised in the IPRP in relation to other issues, such as clarity, support or formal requirements, do not need to have been overcome for acceleration to be allowed.]
[If the application is in the publication or republication cycle an examination report can still issue – see 18.64 square brackets].
[If the request is refused, the examiner should write to the applicant explaining the reasons for the refusal (PROSE letter EL29 may be adjusted for this purpose) and remove the accelerated examination label from the PDAX dossier, but leave the PCT(UK) Fast TRACK label active]
Grant
89B.18
r.30 is also relevant
The process of examination and re-examination in response to the agent’s or applicant’s replies continues in the same way as for any other UK application until, if the examiner is satisfied that the application complies with all the requirements of the Act within the appropriate period, the grant of a patent follows. That period (and permissible extensions of the period) is as set out in 20.02 except that any reference to the priority date or date of filing is taken to refer to the priority date or date of filing of the PCT application see 89B.02. For restrictions on the earliest date a s.18(4) report may be issued, including allowing time for third party observations, see 18.07.2.