GovWire

Chapter 9: Post publication formalities examination

Intellectual Property Office

January 22
15:47 2025

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9.01

The following checks should be made when you receive the A Published message from Publication Section to confirm;

a) that the A letter and published specification have been correctly imported on the dossier;

b) all documents open to public inspection, should be marked as YES in the Public column of the TOC;

c) that OLFI actions and annotations have been made where necessary

d) that the details on the published specification (ADOC) accurately reflect the information on file and that all pages have been printed (including amended claims and further search reports if filed). If this is not the case, the details can be corrected. An erratum is not normally issued at this stage unless the agent requests it;

e) whether an unactioned F10 is on the dossier

f) whether it is a Combined Search and Examination case see 9.26 9.29

g) whether the case is a Divisional see 9.30

h) Where amended claims have been published alongside the existing claims they will have the code ACLMS in the TOC. There should be another copy of the amended claims on file which should have the code CLMS and annotated Working Copy after pub. The annotation should then be changed to Working Copy and the ACLMS cancelled.

Patents form 10 not filed

9.02

If a case does not have a Form 10 filed when it is returned from publication, the applicant has 6 months from the date of publication during which to file the form. The filing period for the Form 10 can be extended for 2 months under r.108(2). Further extensions under r.108(3) may be possible and details of procedures relating to this can be found at chapter 10.

Details for terminating the application if the Form10 is still not filed can be found at 11.36

9.03

As no further work will be done on the case unless a Form 10 is filed, any amendments to the specification, claims, or the drawings that have been filed on the application, before or during the publication cycle, are incorporated but not forwarded to an Examiner until a Form 10 is filed.

Patents form 10 filed

9.04

Cases with a Form 10 filed after publication should be checked to ensure that the form has been filed within the prescribed 6 month period from the date of publication with the correct fees (this can be extended by 2 months by filing Form 52 and appropriate fee). Follow the guidelines for processing a Form 10 (as set out in 7.01. Note, if the correct fee (for Form 10 and excess description pages) has not been paid after the prescribed time limit has expired, the fee will be refunded and the application terminated for failure to file a Form 10.

Important - COPS status must remain as A PUBLISHED - AWAIT FORM10 if any underpayment is made, so that the application will appear on the Form 10 termination list if the underpayment is not made.

If the above requirements are met then the Form 10 filed box can be ticked on the Formalities Post Publication checklist.

COPS action for cases ready for substantive examination

9.05

A newly filed Form 10 should be de-logged on COPS using the function REC PRE. This will automatically set the processing status to Ready for Examination.

9.06

If the Form 10 was already in the dossier (but it is not a CS&E case) the Formalities Examiner should go into REC PRO and change the status from A published to Ready for Examination (if the form has been delogged and the correct fees have been paid).

Amendments

9.07

The application should be checked for any amendments to the specification that have been filed. These may take a number of forms as outlined below:

a) voluntary amendments filed with an applicants letter (such as replacement pages, drawings etc);

b) amended claims filed that have been added to the specification for publication;

c) amendments on PCT cases where the IB have sent pages that have been amended in the International phase of the application;

Amendments filed with an applicants letter

9.08

Once voluntary amendments to the application have been identified the Formalities Examiner should check to ensure that the pages have been filed within the period specified in the last s.18 report. If the amendment has been filed outside this period the Formalities Examiner should check the covering letter to see if an extension under r109 has been requested.

An extension of up to two months is available under this rule if the request is in writing. Amendments filed outside this two month extended period and any amendment filed out of time with no request for extension should be forwarded to the Patent Examiner for consideration as a Late Filed Response.

9.09

If the amendments have been filed in time they will need to be incorporate

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