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1. MORE THAN ONE INVENTION DISCLOSED

 

 

When filing a new patent application, it is imperative that all essential components of an invention are to be disclosed in the Specific Description if the resultant scope of the Claims in a Granted Patent are to be commercially worthwhile.

 

It is no use being cagey and only disclosing that which you consider to be sufficient to obtain protection for your development.

 

If in doubt, it is most advantageous to use the services of a Patent Attorney and to disclose to them every facet of your development without exception. This will enable the Patent Attorney to draft the Specific description and Claims as widely as possible in order to obtain protection of the widest scope possible for your product and/or process.

 

Thus, in undertaking the drafting of the Specification and Claims of a complex development, it may be possible that more than one invention will be disclosed and claimed in the disclosure filed at the Patent Office.

 

 

 

 

2. SEARCH UNDER SECTION 17 of the PATENTS ACT 1977

 

In effecting a Novelty Search under Section17 of the Patents Act 1977, it is often    the case that the Examiner will report that his search has only been carried out against certain Claims and that other Claims refer to one or more other inventions.

 

In such cases, it is possible upon payment of a further Novelty Search fee to receive reports from the Examiner in relation to the other inventions that are disclosed in the Specification as filed.

 

Depending upon the import of the main invention and/or the further inventions, you may choose to divide out the details of the further inventions and to prosecute the divided out disclosure as a separate Application.

 

It is also possible to leave the issue on hold until after the Substantive Examination when the results of the Examiner’s deliberations are known and the commercial worth of the main invention and any further inventions may be assessed before incurring further expense that may not be worthwhile.

 

 

3. SUBSTANTIVE EXAMINATION – PATENTS ACT 1977 – RULE (28)

 

In the normal scheme of things, a Patent Application that conforms to the required formalities will be published 18 months after the date of filing, i.e. the priority date.

 

Within six months of publication, the Applicant is afforded the opportunity to file a Request for Substantive Examination of the Application as filed together with any amendments that may have been filed following the results of the Novelty Search under Section 17 of the Patents Act 1977.

 

At this stage of the prosecution of the pending Patent Application, the Examiner will issue an Examination Report that may raise objections to the grant of a Patent or he may state that the Application is in order to proceed to Grant.

 

In either case, if there has been mention that more than one invention is described and claimed in the pending Application, the Examiner may warn the Applicant that any Divisional Patent Application must be filed before the actual grant of the Patent for the invention that was the subject of the Substantive Examination under Patent Act Rule (28).

 

If there is any doubt about how to proceed in such matters, professional advice and guidance may be obtained from the UK-IPO and/or a Patent Attorney.

 


*John Grant is Senior Patent Attorney at Trevor Baylis Brands (TBB) plc. TBB has provided advice to thousands of individuals and companies on the best way to develop their business and protect their intellectual property. Building Enterprise (BE) Ltd is a new development from TBB  offering a one-stop shop for innovation development,  helping to take initial ideas through to a successful commercial outcome.*

 

 

 

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