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General Information Option Where An Applicant is not a National or Resident of Canada |
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Procedure for PCT Application Filing and Prosecution (continued) The International Preliminary Report on Patentability (Chapter I) Route If the applicant chooses to proceed with the PCT process but does not file a Demand for International Preliminary Examination, then the applicant is deemed automatically to have opted for the International Preliminary Report on Patentability (“IPRP”) (Chapter I) route. The applicant may submit comments on the Written Opinion to WIPO, which prepares the IPRP (Chapter I) based on the Written Opinion and forwards the IPRP (Chapter I) to any patent offices that request it, together with any comments submitted by the applicant. WIPO, the Canadian Patent Office and any other patent offices receiving these documents, are required to keep the documents confidential until 30 months from the priority date (unless the applicant commences the national phase of the application before then). The International Preliminary Examination (Chapter II) Route Rather than follow the Chapter I route, the applicant may demand International Preliminary Examination (IPE) by the Canadian Patent Office (in its capacity as the International Preliminary Examination Authority for applications filed by citizens or residents of Canada). IPE is a second evaluation of the patentability of the claims, in which it is possible for the applicant to actively participate and potentially influence the findings of the examiner before entering the national phase. At the end of the IPE, the Canadian Patent Office will issue an International Preliminary Report on Patentability (identified as “IPRP (Chapter II)” to distinguish it from the IPRP (Chapter I)” discussed above). To obtain IPE, a Demand must be filed before the expiry of the later of: three months from the date of transmittal to the applicant of the International Search Report and Written Opinion; and 22 months from the filing date or priority date (if priority is claimed). If the applicant opts for IPE, then within 22 months from the Convention priority date or one month from the date on which the Demand was submitted, the applicant must pay the preliminary examination fee (currently approximately $1,000, not including service charges, and again variable with prevailing exchange rates). With the Demand, the applicant may submit amendments (to the description and drawings, as well as the claims) and argument. During the IPE, there are typically additional instances in which further amendments and responses to opinions may be submitted to the Canadian Patent Office. These may be formal or informal, and the applicant is entitled to an interview with the Examiner. Usually, the IPRP (Chapter II) will be finalized and sent to the applicant no later than 28 months after the filing date (or priority date) of the application. If the applicant has been late in meeting the requirements for effecting a Demand, or if there have been delays in the preparation of the International Search Report and Written Opinion, the IPRP (Chapter II) may be delayed. The IPRP (Chapter II) will include details of: the Examiner’s review of prior art, a determination of inventive step or non-obviousness of the claims, and a determination of whether there is a lack of unity of invention, reasons for negating claims (if any), and mention of amendments. As with the IPRP (Chapter I), WIPO forwards the IPRP (Chapter II) to any patent offices that request it, and the IPRP (Chapter II) is kept confidential until 30 months from the priority date (unless the applicant commences the national phase of the application before then).
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| Nothing
here written constitutes legal advice. The accuracy of what is written
is not guaranteed. |
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