5.3.2.4 Substitute pages to comply with formalities

Also in this Chapter:

• 5.3.2.2 Abstracts;
• 5.3.2.3 Requirements for text, pagination, formulas, and drawings
• 5.3.2.5 Requirements for amino acid and nucleotide sequences; 
• 5.3.2.6 Scandalous matter.​​​​​​​

Key Legislation: 

Patents Act : 

• s104 Amendments by applicants and patentees​​​​​​​

Patents Regulations:

• reg 3.2A Complete application for standard patent--direction to meet formalities requirements
• reg 3.2B Specifications: formalities check for innovation patents
• reg 3.2C Specifications--formalities check for PCT application
• reg 3.5 Filing date--patent applications other than PCT applications
• reg 3.5A Filing date: incomplete specifications​​​​​​​

Related Chapters:

• 5.7 Amendments

On this page

• Overview
• Examination practice:
  • Substitute documents not formally proposed
  • Substitute specification for a foreign language specification
  • Substitute sheets to incorporate a cross-reference.

Overview

If a complete specification fails to comply with the formal requirements, CEG will issue a direction to the applicant to file substitute pages in order to comply (under reg 3.2A, reg 3.2B or reg 3.2C). If the applicant does not comply with this direction within the prescribed period, the application will lapse.

Similarly, if the applicant does not provide all the information required by reg 3.5(1) (that is, information indicating that what is filed is intended to be a patent application, information identifying the applicant, and information that appears to be a description), the Commissioner will notify the applicant (under reg 3.5(4)) that they need to file the missing information. If the applicant does not do so, the application is taken not to have been filed (reg 3.5(5)).

Examination practice

When an applicant files substitute pages or drawings, CEG will stamp them with the date of filing and incorporate them into the specification. Substitute pages or drawings are identified by the text ‘Complied formalities’ in the document name. The original versions of the documents remain in the case file. Once the application is OPI, anyone can inspect or obtain a copy of these originals.

For all examination purposes, a substitute specification page or drawing is effectively the original – that is, the substitution fully replaces the previous version. Any amendments should be treated as amending the substitute documents.

Note that substitute pages are not checked for accuracy by CEG.

Substitute documents not formally proposed

Sometimes an applicant will file pages or drawings that are intended to be substitute documents but are not filed in response to a direction or notice as outlined above. These do not formally replace existing documents. Instead, the examiner’s report should indicate that the applicant may make the intended substitution by requesting amendment under s104.

Substitute specification for a foreign language specification

If a specification is filed in a foreign language, CEG will issue a direction to file a substitute specification in English.

As noted above, if a direction has not been issued, the applicant will need to request amendment under s104 to amend the specification to English. 

Substitute sheets to incorporate a cross-reference

If a specification relies either wholly or partly on a cross-reference to an earlier foreign application, CEG will issue a direction (under reg 3.5A) to file substitute sheets incorporating the material to which is the subject of the cross-reference.