Resolving objections within a short time frame

Oxford University Innovation Limited (OUI) is a wholly-owned subsidiary of the University of Oxford. OUI manages the University’s technology transfer and consulting activities and provides an innovation management service to clients around the world.

Dehns has been working with OUI for many decades and has been involved in many of the 100+ patent applications filed each year.

Issue

In 2012, Dehns Partner Philip Webber filed a patent application at the UK Intellectual Property Office (UKIPO) on behalf of OUI. The patent application related to medical imaging.  A Combined Search & Examination Report was issued by the UK Examiner in May 2013, and a response to this was timely filed by Philip Webber in February 2014. Nothing was heard further from the UK Examiner in 2014 or 2015.

Due to an unusual “oversight” in the UKIPO, the next communication from the Examiner was issued (with apologies from the Examiner) in May 2016, which was just 3 weeks before the compliance period (i.e. the final deadline for overcoming all of the Examiner’s objections).   Objections were raised on grounds of added matter, excluded matter, novelty, inventive step and clarity.  These objections would all need to be resolved and overcome before the patent application could proceed to grant.

Solution

Philip quickly reviewed the objections and the relevant areas of the patent application, and established ways in which these objections could be overcome. This included liaising directly with the UKIPO to clarify some of the objections and the issues which were raised.

Liaising with his contacts at OUI, he hastily arranged discussions with the relevant academics involved in the new technology and outlined his proposed response to the UKIPO.  Further work was required, involving dialogue with the academic inventors, before the response could be finalised and agreed.

A short extension of time of the compliance period was agreed with the UK IPO and two further examination reports were quickly dealt with by Philip during that time.

Result

All objections were eventually overcome, and the Examiner confirmed to Philip that the patent had been accepted 4 days before the final acceptance deadline.  The patent has now been granted.