Patent Office practice regarding multiple examiner's requisitions

Note: This is an update of the September 2, 2003 notice

April 2, 2004 — The Patent Office takes the position that a single Examiner's Report may contain more than one separate requisition and that failure to reply in good faith to any one of the requisitions will result in the application being deemed to be abandoned pursuant to paragraph 73(1)(a) of the Patent Act. For example, an Examiner's Report may contain a requisition under subsection 30(2) of the Patent Rules concerning defects in the application and, in addition, contain one or more separate requisitions under:

• section 29 of the Patent Rules (regarding information or documents in respect of applications for a patent filed in or for any country describing the same invention in the application being examined);
  
  
• section 89 of the Patent Rules (regarding the filing of a certified copy of the previously regularly filed application and a certification of the actual date of its filing); or
  
  
• section 104.1 of the Patent Rules (regarding the inclusion of the date of the original deposit of biological material with an international depositary authority in the description of the application).

In the case of an Examiner's report containing such multiple requisitions and, in order to avoid abandonment pursuant to paragraph 73(1)(a) of the Patent Act, the response to the Report must include a reply in good faith to each requisition. Responses that are completely silent in respect of any of the requisitions in the examiner's report will not be considered as replying in good faith to that particular requisition and the application will be deemed to be abandoned. Where a response is completely silent in respect of more than one requisition, or where no response to the examiner's report has been received in a timely manner, the application will be considered to be separately abandoned in respect of each failure to reply.

To reinstate an application that has been abandoned as a result of more than one failure to reply to a requisition, the applicant must in accordance with section 98 of the Patent Rules, in respect of each such failure: make a request for reinstatement to the Commissioner; take the action that should have been taken in order to avoid the deemed abandonment; and pay the fee set out in item 7 of Schedule II, before the expiry of the twelve-month period after the date on which the application is deemed to be abandoned as a result of that failure.

Details of this Patent Office Practice are found in sections 19.07.02 and 19.07.03 of the new chapter 19 of the Manual of Patent Office Practice (M.O.P.O.P.).