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18.01.1

s.118(2) is also relevant

Combined search and examination actions are generally carried out before A publication, and accelerated examinations may also be performed before A publication. The guidance in this section therefore relates in part to pre-publication actions. Before A publication, the application, the search, examination or combined search and examination report, and any other documents or information concerning the content of the application (other than that prescribed under s.118(3)) must be protected and must not be communicated to anyone outside the Office other than the applicant or their designated representative see 118.16 to 118.16.1 for further guidance on these issues.

18.01.2

More generally, in all cases, whether pre-or post-publication, formalities examiners should ensure that any communications (including telephone conversations) are directed to the intended recipient.

[Where correspondence from the Office is reported as never having arrived at its intended destination, or is reported as being misdirected or delayed, this fact should be recorded by sending a minute to the relevant formalities group with any relevant details. Use of r.111 to extend a deadline may only be authorised by the relevant Head of Administration (see 123.47.1.]

18.01.3

The Code of Practice (the second part of which can be found below) identifies best practice points for patent applicants and agents, which if followed widely will lead to savings and efficiencies in the Office, and consequently to better service and better value. Examiners and other Office officials may on occasion draw the Code to the attention of the applicant or agent, and may ask for it to be complied with before the case is processed further if that would be more efficient.

18.01.4

However, it is not to be expected that best practice can always be adhered to. The Office has no right to demand compliance with the Code of Practice because the Code is advisory only and has no legal force.

18.01.5

If an application does not comply with one of the points of the Code of Practice then this does not necessarily justify an objection under the Patents Act or Rules. For example, an application having more than one independent claim in one category would not comply with code point 1e, but this would not usually justify an objection under s.14(5)(b). When drawing attention to non-compliance with the Code of Practice, examiners should therefore make it clear whether they are also raising a formal objection under the Act or Rules.

[Code of practice for applicants and agents]

This part of the Code of Practice relates to the prosecution of patent applications. The process of examination and amendment of patent applications ideally proceeds by eliminating objections until the application can be granted. To expedite the granting of an application, the substantive examiner will attempt to indicate all objections in the first report issued under s.18(3). The main exception to this will occur where only major objections (such as patentability issues) are raised and minor matters are deferred until the major points have been settled. This process of eliminating objections minimises the time taken conducting a comprehensive review of the specification as it will generally only be necessary to decide whether or not the amendments or arguments advanced meet the objections raised. However, for this process to be efficient for both sides it is necessary that the following points are observed.

• a) a full response should be made to each and every objection raised in an examination report through amendment and/or argument so as to progress the application towards grant see 18.63-18.63.3
• b) when objections are to be met by amendment, an appropriate explanation should be provided, in particular, as to how the amendment meets the objection and how it is supported by the specification as originally filed [see 18.63-18.63.3
• c) amendments must neither add new technical disclosure, nor broaden the scope of claims beyond the disclosure as originally filed (see 76.04 to 76.23)
• d) pages showing the amendments, in manuscript or distinctive type, should be filed in addition to the clean replacement pages for the specification (see 18.61)
• e) consequential amendment of the description may be deferred until the independent claims have been agreed upon (see 18.52)
• f) the Office recommends the use of electronic filing when submitting amended pages or arguments in response to the examiners objections, whether the original application was filed electronically or not. See Apply for a patent