DIFFICULT EPO ACTIONS · 2017. 3. 9. · Rule 161(2) and 162 • These forms are for PCT (EP)...

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Transcript of DIFFICULT EPO ACTIONS · 2017. 3. 9. · Rule 161(2) and 162 • These forms are for PCT (EP)...

Page 1: DIFFICULT EPO ACTIONS · 2017. 3. 9. · Rule 161(2) and 162 • These forms are for PCT (EP) applications • EPO Form 1226AA is issued if there has been a negative opinion by the
Page 2: DIFFICULT EPO ACTIONS · 2017. 3. 9. · Rule 161(2) and 162 • These forms are for PCT (EP) applications • EPO Form 1226AA is issued if there has been a negative opinion by the

DIFFICULT EPO ACTIONS TO DOCKET

uithe ReliabilityofyourIPDatayourIPDataIntegrity:

HowtoRuintheReliabilityofyourIPData

Page 3: DIFFICULT EPO ACTIONS · 2017. 3. 9. · Rule 161(2) and 162 • These forms are for PCT (EP) applications • EPO Form 1226AA is issued if there has been a negative opinion by the
Page 4: DIFFICULT EPO ACTIONS · 2017. 3. 9. · Rule 161(2) and 162 • These forms are for PCT (EP) applications • EPO Form 1226AA is issued if there has been a negative opinion by the
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DifficultEPODocketingItems

•Presentersandpanelists:o AnnMcCrackin,President,BlackHillsIP,LLCo KristiWheeler,ForeignFilingParalegal,Schwegman,Lundberg&Woessner,P.A.

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Topics

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§ EPConventionFiling§ PartialEPOSearchReportandExtendedEPOSearchReport

§ Rule164-- Form1507US,1507N,1507W§ InvitationtoProceed/ReportsESRPublicationDate

§ Rule70- Form1081,1082and1083

§ PCTEPFiling§ RespondtoObjectionsinWrittenOpinion

§ Rule161(2)and162– Forms1226AA,1226BBand1226CC§ SupplementalEPSearchReport

§ Rule70- Form1224

§ Publicationforms§ EPOcountriesissuingnewnumbersongrant

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EPConventionFiling

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SearchReport(form1507)

• Thereare3typeso PartialEPOsearch

• Form1507US• CanbeissuedforanEPorPCT(EP)• Applicantisinformedonlysomeclaimshavebeensearchedandoneormore

furthersearchfeescanbepaid• Deadline2monthsfromnotification(10dayruleapplies)• AForm1507Nwillfollowifadditionalfeespaidorifnot.

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SearchReport(form1507)

• anextended ESR– form1507N• AnopinionoftheexaminerisincludedandaRule70letterwillfollow

• anESR– 1507W• Noopinionoftheexaminerisincludedandanexamreport(Article94(3)letter)or

aRule71(3)allowancewillfollow.• IssuedonlyifyourequestPACEand/orwaivetheRule70communication.

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SearchReport(form1507)

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Rule70- Form1081,1082and1083• TheseformsareissuedforEPapplications.• The1081formisacombinedreportingofthe

publicationdateoftheESRwhichsetstheexamfeedeadlineandthedeadlineforpayingthedesignationfeesandrespondingtotheESRopinion

• The1082formisforwhentheexamfeewaspaidearliere.g.onfiling.TheforminvitestheapplicanttoconfirmthattheapplicationistocontinueandrespondtotheESRopinion.Adesignationfeereminderisincludedincasenotalreadypaid.

• DEADLINEIS6MONTHSFROMTHEPUBLICATIONDATE– NO10DAYSADDEDTODEADLINE

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Rule70- Form1081,1082and1083

• The1083formisforwhentheexamfeewaspaidearliere.g.onfilingandwhenaresponsehasalreadybeenfiledtothesearchopinion.Theformsimplyinformstheapplicantofthepublicationdateofthesearch.Adesignationfeereminderisincludedincasenotalreadypaid.

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Form1081

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PCTEPFiling

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PCTEPFILINGcont.

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Rule161(2)and162

• TheseformsareforPCT(EP)applications• EPOForm1226AAisissuediftherehasbeenanegativeopinion

bytheEPOintheISRandnoamendmentsorcommentshavebeenfiledonregionalphaseentry.Aresponsetothisformwithin6monthsismandatory(i.e.orelsetheapplicationisdeemedwithdrawn)andyourattentionisdrawntothisontheform.

• (Rule161(1))

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Rule161(2)and162

• EPOForm1226BBisissuediftherehasbeenanegativeopinionbytheEPOintheISRandamendmentsorcommentshavebeenfiledonregionalphaseentry.Aresponsetothisformwithin6monthsisvoluntary(i.e.theapplicationisNOTwithdrawnifyoudonotresponse).Thisisindicatedbythewording“youmaycomment….”.

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Rule161(2)and162

• EPOForm1226CCisissuedinothercases(e.g.non-EPOISA,orpositiveISRopinion).Aresponsetothisformwithin6 monthsisvoluntary(i.e.theapplicationisNOTwithdrawnifyoudonotresponse).

• Rule161(2)– responsetosearchopinion+Rule162– claimsfees• Notethecommunicationshavetwoindependentdeadlinesthatmustbecompliedwithintheresponse:Rule161(2)andRule162• DEADLINEISFROMTHEDATEOFNOTIFICATION-10DAYRULEAPPLIES

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Rule161(2)and162

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Rule70- Form1224

• ThisformisissuedtoPCT(EP)applicationsaftersupplementaryESR

• 6monthmandatorydeadlinefromthedateofnotification(10dayruleapplies)

• MustconfirmtheapplicationistoproceedandrespondtothesupplementaryESRopinion

• Notethecommunicationhastwoindependentdeadlinesthatmustbecompliedwithintheresponse:Rule70(1)andRule70a(2)• DEADLINEISFROMTHEDATEOFNOTIFICATION-10DAYRULEAPPLIES

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Rule70- Form1224

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EPOPublication

• Form1133– PublicationofanEP• Form1203– PublicationofthetranslationofaPCT(EP)• Form1219– PublicationofonlythebibliographicdataforaPCT(EP)

– notranslationofthePCTrequired

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Countriesthatissuenew#forEPOgrantedpatents

• Germany• Spain• Austria• Italy

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