There is a particular aspect of UK Patent Law that often confuses patent applicants and exam candidates: the compliance period.
Section 20(1) provides that there is a period within which a UK patent application must comply with the UK Patent Act (PA) and Rules (PR), and sets out the consequence of not doing so:
If it is not determined that an application for a patent complies before the end of the prescribed period with all the requirements of this Act and the rules, the application shall be treated as having been refused by the comptroller at the end of that period…
Rule 30 PR sets this “prescribed period” as the “compliance period”, the last day of which is the “compliance date” . In most cases this “period” is 4.5 years from the priority/filing date or, if it occurs later, 1 year from the issue of the first examination report.
When an examination report is issued under Section 18(3) PA it sets a date by which to file a response and/or amendments, typically 2 or 4 months. It is the practice of the UK Intellectual Property Office (UKIPO) not to refuse the application if a response is not filed, but instead to refuse the application at the end of the compliance period.
This practice has led to a few cases where requests have been filed for reinstatement after refusal at the end of the compliance period, for example, where the failure to reply to the examination report was caused by an error. The law was considered in the case of Anning’s Application, which led to a subsequent practice note being issued. The practice note stated that it was not possible to amend the application if a case was reinstated after the compliance period, as the compliance period was not extended. Only arguments supporting the fact that the application was in compliance with the Act could be filed. This position was arguably unfair to an applicant, they could successfully reinstate an application but have no way of putting it in order for grant.
I was thus pleased to see a new Practice Note issued by the UKIPO on 15 March 2011 on this issue, which clarifies practice and enables the compliance period to be extended as well as offering a period to response to any outstanding examination report following reinstatement. The Note results from the recent case of Ali et al’s Application, which is worth a read for the clear explanation of the law in this area.