Knowledge Development Box (Certification of Inventions) Act 2017

Amendment of section 29 of Act of 1992

27. Section 29 of the Act of 1992 is amended—

(a) in subsection (1), by the substitution of “(in this section referred as the ‘section 29 fee’), cause a report incorporating a written opinion as to patentability to be prepared in relation to the invention (in this section and section 30 referred to as the ‘section 29 report and opinion’). Rules made under this Act may specify who shall prepare the section 29 report and opinion (including any part thereof) and the scope thereof.” for “(‘the search fee’) cause a search to be undertaken in relation to the invention and a report (a ‘search report’) of the results of the search to be prepared. The rules may specify by whom the search report shall be prepared and the scope thereof.”,

(b) by the substitution of the following subsection for subsection (2):

“(2) If it appears, in the course of the preparation of the section 29 report and opinion, that an application discloses more than one invention, the section 29 report and opinion shall be prepared in relation only to the first invention specified in the claims. A further section 29 report and opinion may be prepared in relation to any additional invention if the applicant, within the time allowed by the Controller for the purpose, submits a request to that effect accompanied by the section 29 fee.”,

(c) in subsection (3), by the substitution of “section 29 report and opinion” for “search report”,

(d) by the substitution of the following subsection for subsection (4):

“(4) If the application is not withdrawn, the Controller shall allow the applicant an opportunity to amend the application in light of the section 29 reports and opinions. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, to submit either amendments to the application, or a statement setting out the applicant’s reasons why the applicant considers that no such amendments are necessary, the application may, subject to section 90, be refused by the Controller. An application to which subsection (2) applies shall be amended so as to confine it to one invention only.”,

and

(e) by the insertion of the following subsection after subsection (4):

“(5) If the applicant, in pursuance of subsection (4), submits amendments or a statement referred to in that subsection within the prescribed period, the Controller shall cause a substantive examination of the application to be carried out. Such substantive examination shall have regard to the application as originally filed together with any amendments or statement furnished under subsection (4) and shall investigate if the application complies with the requirements of this Act and of rules made under this Act.”.