Chapter 4: Description, claims and abstract

4.27

One or more claims and an abstract should be filed within 12 months of the earliest date of the application or within 2 months of the date of filing of the application, whichever is longer (s.15(10) and r.22(1)). The claims and abstract do not have to be filed together. An application must have one or more claims before the Patent Examiner can proceed with the search.

4.28

Where the Application Fee has been paid but no claims have been filed the Preliminary Examination Report should request claims be filed within the prescribed period.

If a request for search (Form 9A) has been made but no claims have been filed and no Application Fee paid, the Agent/Private applicant should be contacted by letter and advised of the discrepancy. The application should then be diarised for a suitable period to await filing of the claims.

4.29

Where claims have been filed after the initial filing date of the application but within the prescribed period, assuming the appropriate fees have been paid, a message should be sent to initiate the search or CSE. The Formalities Examiner should ensure that Footnote 3 of the printer’s instructions is recorded on COPS.

4.30

To extend the prescribed period for filing the claims and abstract an automatic 2 month extension period is allowed under the provisions of r.108(2) (see 10.24 -25). A further extension to the prescribed period may be available under Rule 108(3) if the period has previously been extended under rule 108(2), but not otherwise (see 10.31-44). The applicant/agent may apply for re-instatement (see 10.45 -61) if an extension of time is no longer available.

4.31

If amended and/or new claims are filed at any time before the date of completion of preparations for ‘A’ publication (PPC date) they will be included in the ‘A’ specification. If a CSE report has been previously issued then pre pub amendment message should be sent to the Patent Examiner.

If the new claims comply with r.14 and Sch 2 the Formalities Examiner should create two new sets of claims. One should have the doc code of ACLMS and should be headed “Amendments to the claims have been filed as follows” and re-numbered to follow from the original set of claims. This should also be annotated “for a-pub only”. The ESR, if on file, will also need renumbering.

The other set should be coded as CLMS and annotated as “Working Copy after a-pub” and the action log updated.

4.32

If the amended and/or new claims are filed after A-Publication as part of a full response to a Combined Search and Examination report. The case should then be forwarded to the Patent Examiner as an amendment in order that the Examiner may consider any suggested changes.

4.33

In the event that the amended and/or new pages of claims do not comply with r.14 and Sch 2 the applicant/agent should be informed. Publication should not be delayed to await any response.

4.34

If acceptable pages have been received after preparations for publication are complete the amended and/or new claims will not be included in the ‘A’ specification but will be made open to public inspection.

4.35

Where only the abstract is absent this does not prevent the application from proceeding to search if both the request for search (Form 9A) has been filed and the Application Fee has been paid. Where the Application Fee has been paid and the search has been requested, the lack of an abstract should be reported in the Preliminary Examination Report.

4.36

Where the search has been requested but no Application Fee has been paid the application cannot proceed to search and the agent should be contacted by telephone and advised of the deficiency.

4.37

Where no claims and/or an abstract have been filed within the prescribed period and the automatic 2 month extension allowed by r108(2) has expired, a WR4 letter should be drafted. The application should be referred to the Casework Lead for termination of the case (see Chapter 11.29-33).