Re: Canadian Patents
elsoffe (elsoffe@ibm.net)
Thu, 10 Jul 1997 18:05:16 -0400
Simmons, Edlyn, HMR/US wrote:
>
> As far as I can tell from a cursory review of our patent files, Canada
> assigns a national patent application number only after the PCT
> application has entered the national examination phase. This is what
> most countries do, and publication of such a number serves as an
> indication that the applicant has filed an actual application for a
> patent to be granted in that country. That information is not in
> INPADOC - remember, the PCT transfer application I missed in WPI was
> also missing from INPADOC. And even for patents whose records are in
> the INPADOC file, only a handful (the US and the EPO countries) have
> detailed patent status information.
>
> Australia is an exception to the general rule: Australia has been
> assigning numbers to published WO documents whenever they designate
> Australia, and the numbers are assigned before the PCT mandates national
> filings. Here's an example from a Derwent patent family:
> PN - WO9524194-A1 95.09.14 (9542)
> AU9518694-A 95.09.25 (9601)
> FI9603511-A 96.09.06 (9649)
> NO9603731-A 96.11.06 (9703)
> EP-749309-A1 96.12.27 (9705)
> DS - *AU *BB *BG *BR *BY *CA *CN *CZ *FI *GE *HU *JP *KE
> *KG *KP *KR *KZ *LK *LT *LU *LV *MD *MG *MN *MW
> *NO *NZ *PL *RO *RU *SD *SI *SK *TJ *TT *UA *UZ *VN
> AT BE CH DE DK ES FR GBGR IE IT KE LUMC MW NL
> OA PT SD SE SZ LI
> This applicant designated every possible country. The PCT application
> published on September 14, 1995, and an AU publication number was
> published on September 25, 1995. The EP A1 number corresponding to the
> PCT application was published on December 27, 1996; it is evidence that
> the applicant transferred the application to the EPO regional phase
> (there was no actual EP document published - this application is in
> English). Finnish and Norwegian application numbers were published in
> September and November, respectively; after entering the national phase
> of prosecution.
>
> This data shows that the applicant filed for national patents in Norway
> and Finland, and for a European patent. It doesn't tell us whether
> national applicantions were filed in Canada, Japan, Barbados, Viet Nam,
> or even Australia. If I did business in those countries, that's
> something I'd want to know.
>
> Edlyn Simmons
>
> > ----------
> > From: DARLYN GREEN-KOCHER
> > 992-2670[SMTP:DARLYN.GREEN-KOCHER@usa.dupont.com]
> > Reply To: owner-piug-l@derwent.tecc.co.uk
> > Sent: Thursday, July 10, 1997 2:18 PM
> > To: owner-piug-l
> > Cc: piug-l
> > Subject: RE: Canadian Patents
> >
> > A laid open CA patent application would not publish in the
> > case of a PCT transfer. As in the case of AUs showing in the same
> > family with the PCT I think it would only serve to confuse the issue.
> >
> > No publication is available, so why publicize its filing when listing
> > it as a designated state serves the same purpose.
> >
> > For the purpose of legal status, when you want to find out
> > just what is being done to obtain a national filing of the CA it would
> >
> > be useful to find out if the actual patent is being pursued. INPADOC
> > is most likely already reporting this information.
> >
There appears to much confusion about the PCT process: what, where, and
when and even if publications appear and in which countries. I
personally feel that patent searchers should familiarize themselves with
the legal and procedural aspects of PCT since so this is now the filing
method of choice.
To the PIUG program committee members: how about offering a seminar for
searchers some time this next year? It will help to clarify the
regulations each country pursues relative to PCT national phase.
Suzanne Elsoffer
elsoffe@ibm.net