2.19.7 Considering Parent File During Examination

Date Published

Examiners must consider the parent case file during examination and check whether the application for a patent of addition complies with the necessary requirements; see:

Note: Examiners must not accept an application for a patent of addition until the parent application has been accepted (see Examination Practice).

Parent Case Under Opposition or Re-Examination, or Contains a Section 27 Notice

Where the parent case is under opposition or re-examination, or contains a sec 27 notice, examiners should consider any available material or documentary evidence filed in those proceedings at each report stage. Examiners should also consider any issues raised in the material on the parent file and check whether these apply to the application for a patent of addition. Taking the available material into account, examiners are to report in the usual way, but should avoid making comments which prejudge the outcome of any proceedings in respect of the parent case.

However, the fact that the parent case may be subject to proceedings, e.g. opposition, and those proceedings have not concluded, does not mean that examination of the application for a patent of addition should be delayed, provided that prejudging the outcome of the opposition does not occur. Where the circumstances are such that this condition cannot be met, the case must be referred to the Assistant General Manager (OEP).

It is particularly important that examiners consider the potential relevance of any decision which has issued in respect of the parent application.