As part of the patent application process before the UK IPO, all applications undergo Substantive Examination. This is the process whereby a UK IPO Examiner reviews the patent application in detail and considers the substantive issues of novelty and inventive step, as well as other issues such as added matter and clarity.
The applicant, or his professional representative, is given at least one opportunity to address the Examiner’s concerns and does so typically using a combination of amendments and supporting argumentation. The aim is to convince the Examiner that a patent should be granted for the invention. A successful Examination phase will result in grant of the patent and an unsuccessful Examination phase will ultimately lead to the patent application being rejected.
To start the Examination process, the applicant, or his representative, must submit a request for Substantive Examination within 6 months of publication of the application. Therefore, normally the request is submitted around 2 years after the filing date of the application. The UK IPO will then issue the first Examination Report in due course. Up until now, the standard period for response to the Examination Report was 4 months from issue of the report. This deadline was extendible as of right by 2 months on provision of a written request.
However, the UK IPO has recently issued a practice notice relating to the periods for response to first Examination Report. In brief, if the first Examination Report is issued more than 3 ½ years from the filing date, the deadline for response is now 2 months. If the first Examination Report is issued less than 3 ½ years from the filing date, the period of response remains at 4 months. Both of these deadlines are extendible as of right, as before.
The reason behind this change is that in the UK, there is a compliance period for “putting an application in order”, which is the later of (a) 4 years 6 months from the “earliest date” (the earliest priority date, or the filing date, if there is no claim to priority) or (b) 12 months from the issue of the first Examination Report. The compliance period is effectively the period for addressing all of the Examiner’s concerns. Previously, when the first Examination Report was issued more than 3 ½ years from the earliest date, an applicant had 4 months to file a response and could extend this deadline by 2 months as of right. This meant that any subsequent rounds of Examination had to be compressed into the remaining 6 months of the compliance period. This was clearly undesirable for both the applicant and the UK IPO, hence the need for a change in policy.