Patent Must be in Force

Date Published

Section 81 does not explicitly preclude the filing of an application for a patent of addition where the parent application or patent is not in force. However, the requirement under sec 83 that the patent of addition remains in force for as long as the parent patent remains in force would render such an application meaningless.

Examiners are required to check at each report stage whether the parent application or patent is in force by checking the status and ‘In Force’ date on the ECase Summary screen in PAMS.  (Note: The ‘In Force’ date is the date up until which continuation or renewal fees have been paid).  In general, a parent that has an ‘In Force’ date that is in the future and a status of:

  • ‘FILED’ or ‘ACCEPTED’ in the case of an application;
  • ‘GRANTED’ in the case of a patent;

is in force.

A status of ‘LAPSED’, ‘REFUSED’ or ‘WITHDRAWN’ (in the case of an application), or ‘CEASED’ or ‘EXPIRED’ (in the case of a patent), indicates that the parent is not in force.  (Examiners should note that for the status of LAPSED, ‘REFUSED’ or ‘WITHDRAWN’, this is regardless of the ‘In Force’ date).  Where examiners have any doubts as to whether the parent is in force, they should consult a senior examiner.  If the parent application or patent is not in force (regardless of whether the 6 month grace period for paying a continuation or renewal fee has expired), then an objection should be taken that the application cannot proceed as a patent of addition. Opinion on all other matters should be reserved pending resolution of whether the application is to proceed as an application for a standard patent (see 2.19.3 "Improvement" and "Modification").

Note: In rare circumstances, a patent of addition may become independent of the parent patent.  These include where the parent patent is revoked (sec 85), or the term of the patent of addition is extended (sec 83; see also 3.12.5 Patents of Addition).  In either circumstance, examiners should refer the matter to Patent Oppositions.