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Date Published

Non-payment of Continuation Fees

Applications that are in a state of lapse due to non-payment of a continuation fee are identified by a warning message that appears when the Exam Response task is opened (see Alerts and Warnings). Examiners should phone the attorney or applicant (if a letter has not already been sent by COG) advising that the application is in a state of lapse and therefore examination cannot continue.  A record of the conversation should be placed on file. The Exam Response task should remain in the work stream and not be reassigned to COG.

Similarly, if a response to a report is received in the Office while the application is still in force, but the application subsequently goes into a state of lapse before a report (clear or adverse) can be issued, the procedure outlined in the previous paragraph should be followed.

Expiry of 12 Month Period

Examiners should ensure that responses filed close to the 12 month period for acceptance are dealt with expeditiously, provided there is sufficient time to consider the issues.  In general, a response to a first report filed on the last day would not be considered to allow sufficient time for examiners to consider the matter, especially where substantive issues were raised.

Where there is insufficient time to consider the response, then the applicant or attorney must be contacted by phone and advised of this.  A record of the conversation must also be placed on file.  In this situation, examiners are not required to issue an adverse report, unless requested to do so by the applicant or attorney.  The report need not be detailed and should only specify those objections that are being maintained.

Note: Where a response is filed, leaving insufficient time for consideration before the 12 month period for acceptance expires, and there has been no “error or omission” by the Patent Office, sec 223(1) does not apply (see Extensions under Subsection 223(1) to Gain Acceptance).

Note: Where there is insufficient time to consider a response filed close to the 12 month period for acceptance, and the application consequently lapses, the Exam Response task in PAMS will be automatically removed by the system approximately one week after lapsing.

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