From 1st July 2004 the UK Intellectual Property Office has been requesting the results of official searches produced by other patent offices to be disclosed. This page explains what needs to be done if such a request is made.
What needs to be disclosed?
Disclosure is requested of official search reports produced by other patent offices on corresponding applications. Reports of non-patent office searches are not required.
Search reports do not need to be disclosed if they:
i) show a nil response (i.e. no documents were cited in the search report);
ii) were published by WIPO or EPO; or
iii) in the case of a divisional application, if they have already been filed with the UK Intellectual Property Office in respect of the parent application.
The disclosure requirement can be fulfilled by filing a copy of the search report(s) or by sending details of the citations contained in the search report(s) to the patent office.
When should documents be disclosed?
A request to disclose the results of other patent office searches will usually be made when the UK search report issues. The request will remain active up to the time at which a response to the first examination report is filed.
In some cases, the first examination report may indicate that the application can proceed to grant. In that situation, and where no response is filed to the examination report, the results of other patent office searches must be filed within two months of the date of the examination report.
What action do you need to take?
In general, we suggest that you forward the results of other patent office searches to us as soon as possible after they become available.
In particular, when sending us instructions regarding matters raised in the first examination report, please forward the results of other patent office searches which are available.
When sending the results of other patent office searches to us, you need only to send a copy of the search report(s) or a list of citations. You do not need to send copies of the cited documents.
What happens if you don’t comply?
The consequences of failure to comply with this requirement are not certain and may depend on the reason for failure to comply and the relevance of the documents not brought to the attention of the IPO.
Amendment of a UK patent after grant is at the discretion of the court or comptroller. Previously, it was possible that failure to comply with the disclosure requirement could affect the ability to obtain amendment of the patent after grant. However, the comptroller or court are required to have regard to relevant principles applicable under the European Patent Convention in relation to post-grant amendment which do not provide for any discretion to be exercised in considering the allowability of the amendments.
This removes the extent to which the applicant’s conduct is taken into account when the court or the comptroller are exercising their discretion following a request for post-grant amendments. However, it is still unclear how this affects amendment practice in the UKIPO and so we do not recommend that you rely on this relaxation of the law.
This information is simplified and must not be taken as definitive statement of law or practice.