Patent Cooperation Treaty

Question 1

PCT - search report - special categories

What is the code for a document defining the general state of the art which is not considered to be of relevance?

Answer 1

A

Question 2

PCT - search report - special categories

What type of document is described by the special code “A”?

Answer 2

A document defining the general state of the art which is not considered to be of relevance.

Question 3

PCT - search report - special categories

What is the code for a document cited by the applicant in the international application?

Answer 3

D

Question 4

PCT - search report - special categories

What type of document is described by the special code “D”?

Answer 4

A document cited by the applicant in the international application.

Question 5

PCT - search report - special categories

What is the code for an earlier application or patent but published on or after the international filing date?

Answer 5

E

Question 6

PCT - search report - special categories

What type of document is described by the special code “E”?

Answer 6

An earlier application or patent but published on or after the international filing date.

Question 7

PCT - search report - special categories

What is the code for a document which may throw doubts on priority claim(s) or which is cited to establish the publication date of another citation or other special reason (as specified)?

Answer 7

L

Question 8

PCT - search report - special categories

What type of document is described by the special code “L”?

Answer 8

A document which may throw doubts on priority claim(s) or which is cited to establish the publication date of another citation or other special reason (as specified).

Question 9

PCT - search report - special categories

What is the code for a document referring to an oral disclosure, use, exhibition or other means?

Answer 9

O

Question 10

PCT - search report - special categories

What type of document is described by the special code “O”?

Answer 10

A document referring to an oral disclosure, use, exhibition or other means.

Question 11

PCT - search report - special categories

What is the code for a document published prior to the international filing date but later than the priority date claimed?

Answer 11

P

Question 12

PCT - search report - special categories

What type of document is described by the special code “P”?

Answer 12

A document published prior to the international filing date but later than the priority date claimed.

Question 13

PCT - search report - special categories

What is the code for a later document published after the international filing date or priority date and not in conflict with the application but cited to understand the principle or theory underlying the invention?

Answer 13

T

Question 14

PCT - search report - special categories

What type of document is described by the special code “T”?

Answer 14

A later document published after the international filing date or priority date and not in conflict with the application but cited to understand the principle or theory underlying the invention.

Question 15

PCT - search report - special categories

What is the code for a document of particular relevance; wherein the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is taken alone?

Answer 15

X

Question 16

PCT - search report - special categories

What type of document is described by the special code “X”?

Answer 16

A document of particular relevance where the claimed invention cannot be considered novel or cannot be considered to involve an inventive step when the document is considered alone.

Question 17

PCT - search report - special categories

What is the code for a document of particular relevant where the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art?

Answer 17

Y

Question 18

PCT - search report - special categories

What type of document is described by the special code “Y”?

Answer 18

A document of particular relevant where the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art.

Question 19

PCT - search report - special categories

What is the code for a document member of the same patent family?

Answer 19

&

Question 20

PCT - search report - special categories

What type of document is described by the special code “&”?

Answer 20

A document member of the same patent family.

Question 21

True or False

Under Rule 91 of the PCT (rectification of obvious mistakes), a mistake in the abstract can be rectified by the applicant.

Answer 21

False.

(g) A mistake shall not be rectifiable under this Rule if:

(i) the mistake lies in the omission of one or more entire elements of the international application referred to in Article 3(2) or one or more entire sheets of the international application;

(ii) the mistake is in the abstract;

(iii) the mistake is in an amendment under Article 19, unless the International Preliminary Examining Authority is competent to authorize the rectification of such mistake under paragraph (b)(iii); or

(iv) the mistake is in a priority claim or in a notice correcting or adding a priority claim under Rule 26bis.1(a), where the rectification of the mistake would cause a change in the priority date;

Question 22

International Patent Application No. PCT/CA2019/XXXXX9 has a priority date of October 31, 2018 and was filed on October 31, 2019 by the Applicant, Kitty Classic Ltd. On October 15, 2021, the Applicant calls you in a panic advising that they missed the 30-month deadline for national phase entry in Canada for PCT/CA2019/XXXXX9 but they understand that they can still enter national phase late in Canada. Are you permitted to enter national phase late in Canada? Please explain the steps required, assuming regular requirements for national phase entry are met. Cite the relevant sections of the Patent Rules.

Answer 22

Yes. Pay the fee for reinstatement of rights set out in item 22 of Schedule 2 (i.e. $200) and request that the rights of the Applicant be reinstated and failure to enter the national phase by the 30-month due date was unintentional. Section 154(3) of the Patent Rules

Question 23

What is the PCT deadline for filing a Chapter II Demand?

Answer 23

3 months from the transmittal date of the ISR and WO, or 22 months from the priority date, whichever is later. - Reference: PCT Regulations, Rule 54bis

Question 24

What is the main difference between Article 19 and Article 34 amendments filed under the PCT?

Answer 24

Under Article 19, only claims can be amended while under Article 34, claims, description and drawings can be amended. - Reference: PCT Articles 19 and 34

Question 25

A PCT application was filed March 14, 2017, claiming priority from a United States provisional patent application filed March 17, 2016. If today is October 5, 2018, in which of the following countries would this application NOT be able to enter national phase? Provide only letter(s) as your answer. No authority or statutory support is required. a) Canada b) United States c) China d) Europe e) Taiwan

Answer 25

B and E

Question 26

You file a Canadian patent application on May 1, 2018 for your client, a Taiwanese individual inventor and resident in Taiwan. Your client tells you she has signed a license agreement with a Canadian company to produce her invention commercially. The license agreement requires that your client file a PCT application and name both the Canadian company and your client as co-Applicants. When entering national phase(s), the Canadian company will be the sole Applicant in Canada but a licensee for all other countries. Your client will then be the sole Applicant for all countries other than Canada. a) Are you permitted to file the PCT application in the Canadian Intellectual Property Office (CIPO)? Please explain. No authority or statutory support is required.

Answer 26

Yes. To file a PCT application in Canada, only one applicant needs to be a national or resident of a PCT contracting state (Canada). The Taiwanese inventor is not entitled, but the Canadian company is entitled.

Question 27

You file a Canadian patent application on May 1, 2018 for your client, a Taiwanese individual inventor and resident in Taiwan. Your client tells you she has signed a license agreement with a Canadian company to produce her invention commercially. The license agreement requires that your client file a PCT application and name both the Canadian company and your client as co-Applicants. When entering national phase(s), the Canadian company will be the sole Applicant in Canada but a licensee for all other countries. Your client will then be the sole Applicant for all countries other than Canada. b) Can you record the license before the International Bureau? Please explain. No authority or statutory support is required.

Answer 27

b) PCT contains no provisions for registration of licenses. This must be done with national or regional offices upon national/regional phase entry, if possible with those offices.

Question 28

Following the transmittal of the ISR and WO-ISA, the applicant may submit claim amendments under Article 19 of the PCT. What is the time limit to submit an Article 19 amendment to the International Bureau?

Answer 28

The later of: * 2 months from the transmittal of the ISR or WO-ISA; or * 16 months from the priority date. Reference: PCT Rule 46.1