Patents Act 1977: Changes to procedure for dealing with foreshadowed divisional applications
1. Following the Patents Court decision in Howmet Research Corp’s Application [2006] RPC 27, the Office has made changes to the procedure for dealing with foreshadowed divisionals in patent applications.
These changes take effect on 1 November 2006.
Search
2. Search letters highlighting plural inventions do not mention divisional applications, and there is no change to procedure here.
Examination
3. When an examiner initially raises an objection in an examination report that the claims in a patent application relate to plural inventions, the report will include a sentence reminding applicants that no automatic reminders will be issued regarding the filing of divisional applications. This new text is preceded by the word "warning" in a bold font.
4. When a plurality objection has been overcome but other objections remain, the examiner will include a new clause in the subsequent examination report which will remind applicants that they need to file divisional applications before the parent application is granted.
5. When the most recent applicant’s letter foreshadows a divisional application but there are no objections outstanding and no divisional has been filed, the examiner will defer re-examination and will send a letter to the applicant noting that a divisional has been foreshadowed but not filed. This letter will also inform the applicant that grant will take place in around two weeks. If a divisional is to be filed, it must take place before the application is granted.
6. Note that examiners will only issue reminders concerning divisional applications in the circumstances explained in pargraphs 3-5 above, No further reminders will be issued.
Further guidance
6. Further guidance on the new procedure can be found in the Manual of Patent Practice, paragraph 15.46.
Enquiries
7. Any enquiries about this notice should be made to:
Concept House
Cardiff Road
Newport
South
Wales
NP10
8QQ
United Kingdom
Tel:
+44(0)1633 813677
Fax: +44(0)1633 814491
Rosalind
Lyon
Patents Legal Section
1 November 2006
