Manual of Patent Practice – Section 18 : Substantive examination and grant or refusal of patent

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Section 18: Substantive Examination and Grant or Refusal of Patent

This section outlines the conditions necessary for an application to proceed to substantive examination, the examination process, and the requirements for granting or refusing a patent.

Key Points:

1. The applicant must request a substantive examination and pay the prescribed fee within the prescribed period.
2. The examiner will attempt to eliminate objections until the application can be granted.
3. The applicant must respond to the examiner's objections in a timely manner and provide adequate evidence to support their claims.
4. The Office recommends electronic filing for submitting amended pages or arguments in response to the examiner's objections.
5. Divisional applications should be filed early and must have a single claimed invention that is distinct from the parent application.
6. The Office sets a timetable for processing a patent application, and applicants and agents should use their best endeavours to act within the specified periods.
7. Changes to an application should be notified promptly and by the recommended method, and the distinction between amendment and correction should be appreciated.
8. Form 10 and the examination fee, including any excess pages fees, can be filed at any time before the end of the prescribed period.
9. Combined search and examination can be performed before publication under s.16, unless the applicant has explicitly stated that this is not wanted.

Additional Requirements:

1. The applicant must indicate whether they want a supplementary search under section 17 above, and if so, the fee payable.
2. The examiner may inform the comptroller that a supplementary search is required and the comptroller may decide that the substantive examination should not proceed until the fee is paid.
3. The applicant must provide a reason for requesting a refund of the examination fee and also of the search fee for combined search and examination cases.

Code of Practice:

1. Best practice points for patent applicants and agents include responding promptly to the examiner's objections, providing adequate evidence to support claims, and using electronic filing for submitting amended pages or arguments.
2. The Office recommends the use of certain forms and procedures, including Form 10, to facilitate the processing of patent applications.