MOPOP - Chapter 3 - Filing a Patent Application Flashcards
Name the three types of patent applications.
- Regular Canadian patent Application (filed under the Patent Act)
- PCT National Phase Application (filed internationally under the Patent Cooperation Treaty (PCT), which subsequently enters the national phase in Canada under the Patent Rules)
- Divisional Application (separation of a distinct invention form an original patent application into a distinct application)
Name the requirements for securing a filing date under subsection 28(1) of the Patent Act.
The applicant needs to provide:
a. an indication that the elements submitted are intended to be an application for a patent;
b. information which allows the applicant to be identified;
c. information which allows the applicant to be contacted;
d. a document, IN ANY LANGUAGE, that on the face of it appears appears to be a description.
True or False. To secure a filing date, the description needs to be provided in English or in French.
False. The document describing the invention (the description) does not need to be in English or French to establish a filing date.
When filing an application, when the prescribed documents and information are submitted on different dates, what will be the filing date of the application?
The latest of those dates.
When filing a regular application, is submitting the application fee a requirement for securing a filing date?
False, submitting an application fee is not a requirement to secure a filing date. If the application fee is not submitted when the patent application is filed, the Commissionner will send the applicant a notice, as required by subsection 27(7) of the Patent Act, requiring the submission of the application fee and THE LATE FEE within THREE MONTHS of the DATE OF THE NOTICE. If the application fee and the late fee are not submitted within 3 months after the date of the notice, the application will be considered withdrawn (subsection 66(2) of the Patent Rules).
What happens if any of the required documents and/or information required to secure a filing date is not contained in the application?
The applicant will be notified (subsection 28(2) of the Patent Act) will be required to submit the outstanding documents or information within 2 MONTHS after the date of the notice.
What happens if the document describing the invention (the description) submitted to secure the filing date is not in English or French?
If the filing date is established using a foreign language description, the applicant is required to submit an English or French translation of any part of the specification or the drawings that, on the filing date, was not entirely in English or French. If the required translation is not submitted, the Commissioner will send the applicant a notice (subsection 15(4) of the Patent Rules) requiring the submission of the translated document to be submitted NO LATER than 2 MONTHS after the date of the notice.
A filing date is secured using a description that is not entirely in English or French. The Commissioner sends a notice to provide a translation of the document. What happens if the applicant does not submit the English or French translation within the prescribed time?
If the document is not submitted before the end of the 2 MONTHS period after the date of the notice, the application will be deemed to be ABANDONED under subsection 73(2) of the Patent Act (subsection 132(a) of the Patent Rules).
What section or subsection of the Patent Act permits an applicant to submit a reference statement to the Commissioner instead of the description in order to secure a filing date?
Subsection 27.01 of the Patent Act
True or False. A reference statement can be submitted instead of a description in order to secure a filing date.
True (Subsection 27.01 of the Patent Act). The reference statement must be in English or French and to the effect that a reference to a specified previously filed application for a patent is being submitted instead of all or part of the specification or drawing that is required to be contained in the application.
If submitting a reference to previously filed application instead of a description for securing a filing date, what is the prescribed period to make the reference statement?
The prescribed period to make a complete reference statement begins the date any document is received to establish a filing date and ends the earlier of:
i. two months from receipt of the earliest document or information required for establishing a filing date or, if a notice is sent under subsection 28(2) of the Patent Act, two months after the date of the notice; and
ii. the filing date.
True or False? A reference statement can be made to secure a filing date for a divisional application.
False.
True or False? A reference statement can’t be made to secure a filing date for a divisional application.
True
Name the elements that must be included when submitting a reference statement in place of a description when securing a filing date.
a. the name of the country or office of filing of the previously filed application; and
i. if it is known, the number of the previously filed application for a patent, or
ii. if the number of the previously filed application for a patent is not known, a statement which must indicate:
A. the provisional number of the previously filed application given by that office,
B. the date on which the previously filed application was sent to that office and the statement must be accompanied by a copy of the request portion of the application, or
C. the reference number given to the previously filed application by the applicant and indicated in it, the name and postal address of the applicant, the title of the invention and the date on which the previously filed application was sent to that office.
paragraph 67(2)(a) of the Patent Rules
In order to file a divisional application, what are the requirements to establish a presentation date?
A. An explicit or implicit indication that the granting of a patent is sought;
B. Information allowing the identity of the applicant to be established;
C. Information allowing the Commissioner to contact the applicant; and
D. A document that on its face, appears to be a description. (Description needs to be in English or French - Section 15(1) of the Rules)
