2.15.7.5 Entitlement Disputes During Examination

Where there is an entitlement dispute in progress during the examination of an application, examination can continue, however the application must not be accepted.

Section 36 allows a person to challenge the entitlement of the applicant.  Section 32 allows a co-applicant to challenge the entitlement of another co-applicant.  Until the Commissioner has made a determination in an entitlement dispute, the entitlement of the nominated person of record is uncertain.  It follows that the Commissioner cannot be satisfied that the requirements of sec 15 have been met, and an objection under reg 3.18(2)(a)(i) applies (regardless of whether any statement relating to entitlement has been made).  

Note:  If examiners become aware, during examination, that there is an unresolved application under sec 32 or sec 36, they are to raise an objection (see PERP code [B9]).  The objection is to be maintained in any subsequent reports, and acceptance is not to take place until the entitlement dispute has been resolved or withdrawn.

The final date for acceptance (FDA) is reset to 3 months after the Commissioner has made a decision under sec 32 or sec 36, if that date is later than the FDA that otherwise applies (reg 13.4).  

Where examiners consider that the time for acceptance will be extended, they should first consult Patent Oppositions.  If Patent Oppositions are in agreement, examiners must update the FDA in PAMS prior to creating the examination report in DocGen (see 5.5.3.4 Exam Details).  A case note should also be added to the file, indicating that the FDA has changed as a result of a decision by the Commissioner under sec 32 or sec 36.

Warning: The FDA should only be changed when it is appropriate to do so.  Examiners should consult Patent Oppositions before changing the FDA in PAMS.

The examination report should indicate that the FDA is a later date.  This later date is to be specified in the report as being the FDA by including an additional comment in the introductory paragraph as follows:

“The provisions of regulation 13.4(1) provide that the final date for acceptance of this application is now <insert appropriate date in bold>.”

See also:

• 3.2.7 Sections 17 and 32 – Disputes Between Applicants and Co-Owners; and

• 3.2.8 Entitlement – Sections 33, 34, 35, 36 and 191A.