Section 18

Substantive examination and grant or refusal of patent

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18.-(1) Where the conditions imposed by section 17(1) above for the comptroller to refer an application to an examiner for a search are satisfied and at the time of the request under that subsection or within the prescribed period [Rule 28: within 6 months of s16 publication; Rule 68(4): 33 months from priority for international applications, or 2 months from start of national phase; extendable under Rule 108] -

  • (a) a request is made by the applicant to the Patent Office in the prescribed form for a substantive examination; and
  • (b) the prescribed fee is paid for the examination,

the comptroller shall refer the application to an examiner for a substantive examination; and if no such request is made or the prescribed fee is not paid within that period, the application shall be treated as having been withdrawn at the end of that period.

(1A) If the examiner forms the view that a supplementary search under section 17 above is required for which a fee is payable, he shall inform the comptroller, who may decide that the substantive examination should not proceed until the fee is paid; and if he so decides, then unless within such period as he may allow -

  • (a) the fee is paid, or
  • (b) the application is amended so as to render the supplementary search unnecessary, he may refuse the application.


(2) On a substantive examination of an application the examiner shall investigate, to such extent as he considers necessary in view of any examination carried out under section 15A above and search carried out under section 17 above, whether the application complies with the requirements of this Act and the rules and shall determine that question and report his determination to the comptroller.

(3) If the examiner reports that any of those requirements are not complied with, the comptroller shall give the applicant an opportunity within a specified period to make observations on the report and to amend the application so as to comply with those requirements (subject, however, to section 76 below), and if the applicant fails to satisfy the comptroller that those requirements are complied with, or to amend the application so as to comply with them, the comptroller may refuse the application. [Extensions under s117B: 2 months as of right; further extensions discretionary]

(4) If the examiner reports that the application, whether as originally filed or as amended in pursuance of section 15A above, this section or section 19 below, complies with those requirements at any time before the end of the prescribed period [Rule 30], the comptroller shall notify the applicant of that fact and, subject to subsection (5) and sections 19 and 22 below and on payment within the prescribed period [Rule 30: 4 years 6 months or 12 months from first report] of any fee prescribed for the grant, grant him a patent1.

(5) Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the comptroller may on that ground refuse to grant a patent in pursuance of more than one of the applications.

Notes:
Rule 28 applies (request for substantive examination).

Compare with EPO requirement of 6 months from search report, not publication.
Normally 6 months for first report, 4 months for second and 2 months thereafter, but may vary, e.g. be shortened if approaching end of r34 period. See Manual of Patent Practice 18.49. Note: practice now appears to be 4 months for first report.
For definition of "same invention", see s73: revocation on Comptroller's own initiative

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