GB/PCT/EP

Question 1

When can vol. amendments be made for an EP appl?

Answer 1

i) can amend PCT(EP) in response to R161
ii) also after receipt of SR and before Art 94(3) Comm, can amend additionally
(applicant is given at least one opportunity to make voluntary amendments), inc. if necessary after an Art 94(3) comm

Question 2

When can vol. amendments be made for PCT appl?

Answer 2

i) amendment of claims only using Art 19 PCT
ii) can amend claims, desc & figs using Art 34 PCT

Question 3

Can further amendments be made after receiving Ch. II written opinion? Any further options for amendment under the PCT?

Answer 3

Yes - claims, desc and/or drawings can be further amended
Can also amend upon entry to national/regional phases

Question 4

Can the abstract and/or priority doc be used to provide basis for amendments in GB and EP?

Answer 4

No

Question 5

Can obvious mistake be corrected in the i) specification and ii) other forms for PCT applications?

Answer 5

Yes - obvious mistake may be corrected.
Correction evaluated in light of the relevant doc(s)
(Same applies for both i) and ii))

Question 6

Can inventor details be corrected on a GB application?

Answer 6

Yes - name or address can be corrected - file form (evidence may be required)

Question 7

Can inventor details be corrected on an EP application?

Answer 7

Yes - corrections can be non-obvious. Corrected on request only with consent of any wrongly designated inventor (i.e. in the event of a replacement)

Question 8

Can inventor details be corrected on a PCT application?

Answer 8

Yes - written request

Question 9

Can applicant details be corrected on a GB application?

Answer 9

Yes - name or address can be corrected - file form (evidence may be required)

Question 10

Can applicant details be corrected on EP application?

Answer 10

Yes - corrections can be non-obvious. Evidence may be required.

Question 11

Can applicant details be corrected on PCT application?

Answer 11

Yes - written request

Question 12

How does one change rep. on EP application?

Answer 12

i) previous rep. can write to EPO to request change; or
ii) file signed auth. for either a specific application or in general.

Question 13

How does one change rep. on PCT application?

Answer 13

Written request

Question 14

What is the procedure where lack of unity is found in ISR?

Answer 14

First invention searched.

Invited to pay further search fee within 1 mo from notification.

Can pay additional search fee, but do so under protest if you do not agree, 1mo to pay protest fee

Question 15

Can early publication be requested on PCT applications?

Answer 15

Yes

Question 16

When are preparations for publication completed on PCT applications?

Answer 16

15 days before 18mo period from priority date, if claimed, or filing date

Question 17

What are the fees due when filing a Demand? When are these due?

Answer 17

Prelim examination fee and handling fee (due 1mo from filing Demand, or 1mo from notification from IPEA + surcharge)

Question 18

What are the actions for GB national phase entry? When are these due? Extendible?

Answer 18

@31 months - file form + national fee, translation (if required) and publication fee for translation

@33 months - file search request (form + fee), exam request (form + fee) and designation of inventorship (form)

All extendable - by 2mo as of right (file form + fee), and further discretionary extension

NB - reinstatement preferable to R108(3) if R108(2) missed

Question 19

Is an extension available for responding to Examination Report?

Answer 19

Yes - S117B: request two-month extension (no fee, request in writing, can be done retroactively)

Question 20

Is it possible to request reinstatement if application lapses due to the S117B extended deadline for responding to an Examination Report missed?

Answer 20

No cannot reinstate if S117B deadline missed.

Question 21

When is Declaration of Inventorship due for GB applications?

Answer 21

16 months from filing date, or priority date, if claimed (file form)

Question 22

What if the EPO notices that parts of the application are missing?

Answer 22

Applicant given two months from notification to add missing parts without changing the filing date if they can be shown to be present in the priority document (if not present, then unless missing part withdrawn, application will be re-dated to date which missing part was filed)

Question 23

What is the deadline for filing a translation into an EPO official language?

Answer 23

2 months from notice to provide transL