Substantive examination is requested using Patents Form
During substantive examination, an examiner will
consider whether the application fulfils all of the requirements of the
Patents Act and Rules. A top-up search will be carried out, and the
examiner will consider, in particular, whether all of the claims in the
application are novel and inventive having regard to all of the prior art
which has been found.
If the examiner has any objections, the applicant is
given an opportunity to argue with the examiner and/or to amend the
application, for example by limiting the scope of the claims. It should be
remembered, however, that it is not possible to add any new technical
information into the application in order to distinguish the claimed
invention from the prior art.
It is therefore
important that the original application includes all the information which
the applicant may subsequently need to rely on to obtain a patent.
If the applicant and examiner cannot agree, which is
rare, a formal hearing before the Comptroller of the Patent Office or one
of her hearing officers can be arranged, whereupon the application will
either be allowed or refused. If refused, an appeal can be made to the
Patents Court, and in some circumstances further appeals to the Court of
Appeal and even the House of Lords.