MOPOP - Chapter 9 - Abandonment and Reinstatement of Patent Applications, Third Party Rights Flashcards
Name examples of why an application could be deemed abandoned under subsection 73(1) of the Patent Act.
An application for patent shall be deemed to be abandoned under subsection 73(1) of the Patent Act if:
a. the applicant does not reply in good faith to any requisition made by an examiner within four months of the date of the requisition;
b. the applicant does not comply with a compliance notice under subsection 27(6) of the Patent Act within three months after the date of the notice;
c. the maintenance fee and the late fee referred to in the notice sent under paragraph 27.1(2)(b) of the Patent Act are not paid before the later of six months after the maintenance fee due date and the end of two months after the date of the notice;
d. the request for examination referred to in the notice sent under paragraph 35(3)(b) of the Patent Act is not made and the fee and late fee are not paid before the end of two months after the date of the notice; and
e. the request for examination referred to in the notice sent under subsection 35(5) of the Patent Act is not made and the fee is not paid before the end of three months after the date of the notice.
Name examples of reasons why an application can be deemed to be abandoned under subsection 73(2) of the Patent Act (e.g., “Prescribed time”).
a. the applicant does not comply with a notice sent under subsection 15(4) of the Patent Rules to provide a translation within two months of the date of the notice;
b. the notice sent under section 31 of the Patent Rules to appoint a patent agent is not complied with within three months of the date of the notice;
c. the applicant does not respond in good faith to a request of the Commissioner for further drawings under 27(5.2) of the Patent Act within three months of the date of the request;
d. the applicant does not respond in good faith to a notice sent under section 65 of the Patent Rules requiring the applicant to modify the application in order to meet the requirements within the time limit specified in the notice;
e. the applicant does not make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3);
f. a notice of allowance is sent under subsection 86(1), (6), (10) or (12) and the applicant does not pay the final fee (see CIPO’s webpage on Patent Fees) within the time referred to in the applicable subsection;
g. the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner sent under subsection 86(1.1) and pay the final fee (see CIPO’s webpage on Patent Fees) within the time referred to in that subsection; and
h. the applicant does not comply with a notice of the Commissioner referred to in subsection 155.5(6) within the time referred to in that subsection.
If an application is deemed to be abandoned under subsection 73(1) or 73(2) of the Patent Act, how long after can a request for reinstatement be made?
12 months
If an application is deemed to be abandoned under subsection 73(1) or 73(2) of the Patent Act, a request for reinstatement can be made within 12 months of the date the application was deemed to be abandoned. What are the steps required to do so?
a. making a request for reinstatement to the Commissioner,
b. taking the action that should have been taken in order to avoid the abandonment; and
c. paying the reinstatement fee (see CIPO’s webpage on Patent Fees).
Note that the 12-month time period to reinstate and the reinstatement fee are prescribed by sections 133 and 134 of the Patent Rules.
True or False:
If an application is abandoned because the applicant failed to respond to an examiner’s requisition made by the examiner under subsection 86(2) or (5) of the Patent Rules and because they failed to request continued examination under subsection 85.1(3) of the Patent Rules, the applicant does not need to pay two fees to request reinstatement as long as both failures are mentioned in the reinstatement request.
True
True or False:
If an application is abandoned because the applicant failed to respond to an examiner’s requisition made by the examiner under subsection 86(2) or (5) of the Patent Rules and because they failed to request continued examination under subsection 85.1(3) of the Patent Rules, the applicant needs to pay two fees to request reinstatement.
False, the applicant does not need to pay two fees to request reinstatement as long as both failures are mentioned in the reinstatement request.
Certain reinstatements also have the added requirement for a positive determination by the Commissioner that the failure occurred in spite of the due care required by the circumstances having been taken under paragraph 73(3)(b) of the Patent Act.
Give examples.
The following requests for reinstatement of applications deemed abandoned require a positive determination of due care (as prescribed under section 135 of the Patent Rules):
a. failure to pay the maintenance fee (73(1)(c) of the Patent Act); and
b. failure to request examination, pay the fee (73(1)(d) of the Patent Act), when more than six months has elapsed after the due date to have made the request for examination under 35(2) of the Patent Act.
True or False:
If an application is abandoned because the applicant failed to respond to an examiner’s requisition made by the examiner under subsection 86(2) or (5) of the Patent Rules and because they failed to request continued examination under subsection 85.1(3) of the Patent Rules, the applicant needs to pay two fees to request reinstatement.
False, the applicant does not need to pay two fees as long as both failures are mentioned in the reinstatement request.
True or False:
Once a patent application is deemed to be abandoned, the applicant has 12 months to reinstate the application.
True
Reinstatement period.
An examiner’s requisition dated January 15 requires a response within four months; therefore the time limit for a response is May 15 of the same year. A response is not provided by May 15 and therefore the application is deemed abandoned on May 15. When does the reinstatement period end?
The reinstatement period ends on May 15 of the following year.
Reinstatement period.
The maintenance fee for an application is due on Aug 29, 30 or 31 and it is not paid by the due date. The Commissioner’s Notice is sent on September 15 requiring the applicant to pay the fee and late fee before the later of 2 months from the date of the notice or 6 months from the maintenance fee due date. When does the reinstatement period end?
The later date is 6 months from the maintenance fee due date or February 28 (or February 29 in leap years) of the following year. The maintenance fee and the late fee is not paid by February 28 (or February 29 in a leap year) and therefore the application is deemed abandoned on February 28 (or February 29 in a leap year). The reinstatement period ends on February 28 of the next year.
Reinstatement period.
A Commissioner’s notice sent under section 65 of the Patent Rules (application not complying with the Act or Rules upon filing date) requiring the applicant to comply within three months of the notice is sent on March 31. The applicant is required to respond by June 30. A response is not provided by the applicant by June 30. When does the reinstatement period end?
The application is deemed abandoned
on June 30. The reinstatement period ends on June 30 of the following year.
True or False
If an application is deemed to be abandoned for multiple failures, a single request to reinstate the application may be made so long as a reinstatement fee is paid in respect of each failure and all of the actions are taken to rectify all the failures that caused the abandonments.
True
In the case of a single request for multiple failures, the requests’ reinstatements must be made before the end of the first reinstatement period.
