UKIPO: Duty to Disclose Search Reports

Following my post on the supply of Search Results to the EPO, I thought it would be useful to clarify the procedure for the supply of related search reports at the UKIPO. This may be of particular use to US patent attorneys or agents.

The procedure at the UKIPO is not immediately apparent and requires a little investigation. I will summarise the procedure then provide links to the relevant legal basis.

The bottom-line is that all related search reports available at the time of replying to the first examination report should be supplied to the UKIPO.

Procedure

The procedure is as follows:

  1. The UK IPO issues a search report. The search report contains a standard paragraph requesting official search reports produced by other patent offices on corresponding applications (“related search reports”).
  2. The request can be met by filing a copy of the related search report(s) or by emailing the UKIPO the details of the citations in the search report(s) (see the issued search report for an email address). It is not necessary to supply the citations themselves.
  3. The request is time-limited and is active up to the time of responding to the first examination report. This means that you need to provide related search reports that have been issued up to the time of responding to the first examination report. As a guide the first examination report is typically issued 2 to 3 years from the effective (priority or filing) date of the application (if proceedings are not accelerated).

In practice, any related search reports available at the time should be filed together with the request for substantive examination (due six months after publication). This allows them to be taken into account during substantive examination. Any search reports issued after the request for substantive examination (if it is likely examination has already started) should be filed with the reply to the first examination report.

If the first examination report is a notice of allowance (issued under s.18(4)), search reports should still be filed. The cut-off date is two-months from the issue of the s.18(4) report.

Exemptions

The following search reports need not be filed:

  • search reports that show a nil response (i.e. no cited documents – it is not clear whether an “A” citation would be considered a “nil response”);
  • search reports that have been published by WIPO or EPO (i.e. in an International or European Search Report – the UK Examiner can obtain these via the EPO’s Online File Inspection System); and
  • search reports that have been provided on a parent application (i.e. a parent UK patent application if the present application is a divisional application).

Sanction

No sanction for failing to supply search reports on related applications is discussed. However, failing to supply search reports may be held against the proprietor of a patent in subsequent infringement proceedings in the UK (e.g. may limit damages available or prevent amendment – s.63(2) and s.75).

Basis for Requirement

The procedure was set out in a UKIPO Practice Notice first published in Patents and Designs Journal No.5993 on 31 March 2004. Helpfully, this Notice is not available in the Practice Notices section of the UKIPO website but can be found on page 30 of the Appendix to the Manual of Patent Practice. Paragraphs were added to search communications from 1 July 2004.

The legal basis for the request is given as:

82.—(1) Except where the Act or these Rules otherwise provide, the comptroller may give such directions as to the management of the proceedings as he thinks fit, and in particular he may

—(a) require a document, information or evidence to be filed;

[Patent Rules 2007]

As always if anyone has any comments or spots any inaccuracies please let me know using the form below.

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