ICPA Introductory Certificate in Patent Administration

Mark Scheme 2016

Question 1

A UK Design application was filed on 18 August 2010 claiming priority from a US design
application filed on 16 June 2010.

a) What is the latest date for paying the first renewal fee, including any
extensions of time? Show your calculations.
2 marks

b) If all the renewal fees are paid, when would this design application expire?
Show your calculations.
2 marks

Total: 4 marks

Answer

a) 5 years from filing date = 18/08/2015

1 mark
+ 6 months extension = 18 February 2016
1 mark

b) 25 Years from filing

1 mark
18 August 2010 + 25 years = 18 August 2035
1 mark

Total: 4 marks

Question 2

The European regional phase of a PCT application with a filing date of 28 January 2014 was
entered on 28 July 2015.

When will the first renewal for the EP application be due? Show your calculations.

Total: 3 marks

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 ICPA Introductory Certificate in Patent Administration
Mark Scheme 2016

Answer

The last day of the month containing the second filing anniversary
1 mark*
*Only awarded in the absence of any other correct answer

Filing date of EP application is the PCT filing date (28/01/14)

1 mark
28/01/14 + 2years = 28/01/2016
1 mark
end of month = 31/01/16 (Sunday) so can pay on 1/2/16**
**either date acceptable
1 mark

Total: 3 marks

Question 3

You work as a Patent Administrator for the firm Steve Nage & Partners. Refer to the
instructions in Annex A left for you by the Attorney.

Complete the appropriate UK Patents form.

Total: 8 marks

Answer

On form PF1 at Appendix 1.

8 marks

Question 4

You filed a UK patent application with a description and claims in German.

For the description and claims, what will be required and by when to maintain the
application?

Total: 2 marks

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 ICPA Introductory Certificate in Patent Administration
Mark Scheme 2016

Answer

File translation into English (or Welsh) either or both

1 mark
Within 2 months of a request from the UKIPO
1 mark

Total: 2 marks

Question 5

An International (PCT) patent application was filed on 19 January 2015, claiming priority
solely from a UK patent application filed on 20 February 2014.

What is the final date to enter the national/regional phase in:

a) The United States of America?
and
b) The EPO?

Show your calculations.

5 marks

Answer

a) 30 months from earliest priority date

1 mark
20/02/14 + 30 months = 20/08/2016
1 mark
20 August is a Saturday = 22/08/2016
1 mark

b) 31 months from earliest priority date

1 mark
20/02/14 + 31 months = 20/09/2016
1 mark

Total: 5 marks

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 ICPA Introductory Certificate in Patent Administration
Mark Scheme 2016

Question 6

For an International (PCT) patent application, what is an A3 publication?

1 mark

Answer

International Search report only

1 mark

Question 7

A patent application is filed at the UK IPO on 27 February 2015 and does not claim any
priority.

Give the deadline for these following actions (assuming they were not completed on
filing). Show your calculations.

a) Paying the application fee.

b) Filing Patents Form 7.
5 marks

Answer

The application fee is due the later of 12 months from priority or two months from the filing
date. (Only saying 12 months from filing is acceptable in this case.)

1 mark
[1 mark in the absence of any calculation or if incorrect calculations: otherwise also:]

a) 27 Feb 2015 + 12m = Saturday 27 Feb 2016

1 mark
This is a Saturday so the deadline is extended to the next working day
Mon 29 Feb 2016
1 mark

b) PF7 is due 16 months from the filing date

1 mark
[1 mark in the absence of any calculation or if incorrect calculations: otherwise also:]

27 Feb 2015 + 16m = 27 Jun 2016

1 mark

Total: 5 marks

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 ICPA Introductory Certificate in Patent Administration
Mark Scheme 2016

Question 8

You work for Nadiya Smith, EPA, at CGK Attorneys, based at 8 Regent Place, London,
WC2B 4QT, UK. The firms telephone number is 02020 458800, and the fax number is
02020 458811.

You filed a PCT application titled Coat Hanger on 9 January 2015, claiming priority from a
GB application filed on 10 January 2014, on behalf of one of your clients. The application
was assigned application number PCT/GB2015/044221. No amendments under Articles 19
or 34 PCT were made in the international phase. The European Patent Office acted as the
International Searching Authority (ISA) and raised some objections in the Written Opinion.

On European regional phase entry, a new set of claims 1 to 15 on pages 21 to 23 are to be

filed, together with comments on the Written Opinion. The description (pages 1 to 20),
drawings (on 6 pages) and abstract (on page 24) will be the same as in the international
application. The details of the applicant are also the same as in the international application.
Your firms reference number for the European regional phase application will be 17842-
EP1.

Prepare the form for European regional phase entry as if you were filing it today. All
Contracting States, but no Extension or Validation States, should be designated.

8 marks

Answer

On form 1200 at Appendix 2.

8 marks

Question 9

How long is the priority period for design applications?

1 mark

Answer

6 months
1 mark

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 ICPA Introductory Certificate in Patent Administration
Mark Scheme 2016

Question 10

A Communication from the EPO was issued on the 23 September 2015 and received at your
office on the 30 September 2015. The Communication set a deadline of 4 months from
notification of the Communication.

a) What is the due date for responding to the Communication? Show your
calculations.
2 marks

b) If this deadline is extended by two months, what is the new due date? Show your
calculations.
3 marks

Total: 5 marks

Answer

a) 23/9/15 + 10 days (3/10/15)

1 mark
+ 4M = 3 February 2016
1 mark

b) 23/9/15 + 10 days (3/10/15)

1 mark
+ 6M = 3 April 2016 (Sunday)
1 mark
4 April 2016 (next working day)
1 mark

Total: 5 marks

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 ICPA Introductory Certificate in Patent Administration
Mark Scheme 2016

Question 11

An examination report was issued by the EPO in respect of a European Patent Application
setting a deadline for response. No response was filed by the deadline and no extension of
time of this deadline was obtained. The EPO consequently issued a communication on the
18 January 2016 stating that the application had been deemed withdrawn.

a) In order to reinstate the application, what actions should now be taken?

2 marks

b) What is the deadline for attending to these actions? Show your calculations.
4 marks

Total: 6 marks

Answer

a) Request Further Processing by paying the Further Processing Fee

1 mark
Respond to the Examination Report/ Complete omitted/missing actions
1 mark
b) Deadline is two months from Date of Notification
1 mark
18/1/16 + 10 days
1 mark
+ 2M = 28/3/16 (Easter Monday)
1 mark
so Tuesday 29/3/16
1 mark

Total: 6 marks

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 ICPA Introductory Certificate in Patent Administration
Mark Scheme 2016

Question 12

A Principal of your firm, Shortbread & Garibaldi LLP, Victoria Shortbread CPA EPA, has sent
you the Memo in Annex B.

On the basis of the instructions in this memo, please complete the appropriate form
provided.

You do not need to include an Agents phone and fax details and there is no need to
complete the Fee Calculation Sheet or any declarations.

9 marks

Answer

On PCT Request at Appendix 3.

9 marks

Question 13

State any three of the procedural stages from filing to grant of a patent application.
If you state more than three only the first three will be marked.
3 marks

Answer

Any three from: (1 mark each)

Filing
Search
Publication
Examination
Allowance
Grant
Total: 3 marks

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 TOTAL OF 8 MARKS

Appendix 1

Patents Form 1
Patents Act 1977 (Rule 12)

Request for grant of a patent Concept

(An explanatory leaflet on how to fill in this form is available from the office) House
Cardiff Road
Application number GB Newport
South Wales
NP10 8QQ
1 Your reference: WL15/003 1
(optional)

2 Full name, address and postcode of the applicant WOOLLY & LAMB LIMITED 1
or of each applicant (underline all surnames):
SHEEP DIP LANE
The name(s) and address(es) provided here STEVENAGE
will be published as part of the application HERTFORDSHIRE
process (see warning note below) SG1 3XX

Patents ADP number (if you know it):

3 Title of the invention: STRING DISPENSER 1

4 Name of your agent (if you have one): STEVE NAGE

[Natural and/or legal name needed, together with
the address, to get this mark.]
Address for service to which all correspondence STEVE NAGE & PARTNERS 1
should be sent (including postcode). This may be in 43-47 STABLES LANE
the European Economic area or Channel Islands: STEVENAGE
(see warning note below) HERTFORDSHIRE
SG1 0XX

Patents ADP number (if you know it):

5 Priority declaration: Are you claiming Country Application number Date of filing
priority from one or more earlier-filed (if you know it) (day / month / year)
patent applications? If so, please give
details of the application(s):

6 Divisionals etc: Is this application a divisional Number of earlier UK Date of filing

application, or being made following resolution of application (day / month / year)
an entitlement dispute about an earlier
application? If so, please give the application
number and filing date of the earlier application:

7 Inventorship: (Inventors must be individuals not (Please tick the appropriate boxes)
companies)

Are all the applicants named above also YES NO X

inventors?
1

If yes, are there any other inventors? YES NO

YES NO 1
[Since question is possibly ambiguous,
8 Are you paying the application fee with this form?
checking either box will get the mark. No
mark if both are checked.]

(REV NOV10) Intellectual Property Office is an operating name of the Patent Office Patents Form 1
9 Accompanying documents: 1
please enter the number of pages of
each item accompanying this form:

Continuation sheets of this form: 0

Description: 12

Claim(s): 3

Abstract: 0

Drawing(s): 4

If you are not filing a description, please Country Application number Date of filing
(day / month / year)
give details of the previous application
you are going to rely upon:

10 If you are also filing any of the following,

state how many against each item.

Priority documents:

Statement of inventorship and right

to grant of a patent (Patents Form 7):

Request for search (Patents Form 9A):

Request for substantive examination

(Patents Form 10):

Any other documents:(please specify)

11 I/We request the grant of a patent on the basis of this application.

Signature(s): Date:

12 Name, e-mail address, telephone, stevie@nage.co.uk 1

fax and/or mobile number, if any,
of a contact point for the applicant:

Warning

After an application for a patent has been filed, the Comptroller will consider whether publication or communication of the invention should
be prohibited or restricted under section 22 of the Patents Act 1977. You will be informed if it is necessary to prohibit or restrict your
invention in this way. Furthermore, if you are resident in the United Kingdom and your application contains information which relates to
military technology, or would be prejudicial to national security or the safety of the public, section 23 of the Patents Act 1977 prohibits you
from applying for a patent abroad without first getting written permission from the Office unless an application has been filed at least 6
weeks beforehand in the United Kingdom for a patent for the same invention and either no direction prohibiting publication or
communication has been given, or any such direction has been revoked. Until such time or until the revocation of any direction, for any such
application the address for service referred to at part 4 above must be in the United Kingdom.

In all other cases, the name of the applicant will be published shortly after filing, together with the title of the invention. Later, when the whole
application is published, most information and documents filed in relation to the application will become publicly available. The name and
address of the applicant will be published on our website and may appear in external search engine results. You should provide a
business or PO Box address if you do not want your home address published.

Although you may have an address for service in the Channel Islands, any agent instructed to act for you must reside or have a place of
business in the European Economic Area or Isle of Man.

Notes

A leaflet on how to fill in this form is available from the Office. If you would like a copy of the leaflet it is available on our website at
http://www.ipo.gov.uk/fact01.pdf or alternatively you could telephone 0300 300 2000 or send an email to information@ipo.gov.uk to request
a copy.

(REV NOV10) Patents Form 1

Appendix 2
 Appendix 3
For receiving Office use only
PCT
International Application No.

REQUEST
International Filing Date

The undersigned requests that the present

international application be processed
according to the Patent Cooperation Treaty. Name of receiving Office and PCT International Application

Applicants or agents file reference

(if desired) (12 characters maximum) PAT/16/222111 1
Box No. I TITLE OF INVENTION

MIXING MACHINE
1

Box No. II APPLICANT This person is also inventor 1

Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicants State (that is, country) of residence if no State of residence is indicated below.)
JSD Baking Bits Ltd Facsimile No.
Unit 1, Belvedere Business Park
Leeds Applicants registration No. with the Office
LS1 9AB
GB Need country here to gain the mark

E-mail authorization: Marking one of the check-boxes below authorizes the receiving Office, the International Searching Authority, the
International Bureau and the International Preliminary Examining Authority to use the e-mail address indicated in this Box to send,
notifications issued in respect of this international application to that e-mail address if those offices are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
E-mail address:
State (that is, country) of nationality: State (that is, country) of residence:
GB GB [can be omitted if country in box above]
This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:
Box No. III FURTHER APPLICANT(S) AND/OR (FURTHER) INVENTOR(S)
Need to check this for mark on
Further applicants and/or (further) inventors are indicated on a continuation sheet. the next page
Box No. IV AGENT OR COMMON REPRESENTATIVE; OR ADDRESS FOR CORRESPONDENCE
The person identified below is hereby/has been appointed to act on behalf agent common
of the applicant(s) before the competent International Authorities as: representative 1
Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country.)
SHORTBREAD, Victoria Comma not needed in the name
Facsimile No.
Shortbread & Garibaldi LLP
Biscuit House
Agents registration No. with the Office
Leeds Country needed here to gain the mark
LS7 1XY
GB
E-mail authorization: Marking one of the check-boxes below authorizes the receiving Office, the International Searching Authority, the
International Bureau and the International Preliminary Examining Authority to use the e-mail address indicated in this Box to send,
notifications issued in respect of this international application to that e-mail address if those offices are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
E-mail address:
Address for correspondence: Mark this check-box where no agent or common representative is/has been appointed and the
space above is used instead to indicate a special address to which correspondence should be sent.
Form PCT/RO/101 (first sheet) (16 September 2012) See Notes to the request form
 Sheet No. . . .2. . . .

Box No. III FURTHER APPLICANT(S) AND/OR (FURTHER) INVENTOR(S)

If none of the following sub-boxes is used, this sheet should not be included in the request.

Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this 1
Box is the applicants State (that is, country) of residence if no State of residence is indicated below.) applicant only
DOUGH, John
applicant and inventor
JSD Baking Bits Ltd
inventor only (If this check-box
Unit 1, Belvedere Business Park is marked, do not fill in below.)
Leeds
LS1 9AB Country needed here to get the mark Applicants registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:

Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicants State (that is, country) of residence if no State of residence is indicated below.) applicant only

applicant and inventor

inventor only (If this check-box
is marked, do not fill in below.)

Applicants registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:

Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicants State (that is, country) of residence if no State of residence is indicated below.) applicant only

applicant and inventor

inventor only (If this check-box
is marked, do not fill in below.)

Applicants registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:
Name and address: (Family name followed by given name; for a legal entity, full official designation. This person is:
The address must include postal code and name of country. The country of the address indicated in this
Box is the applicants State (that is, country) of residence if no State of residence is indicated below.) applicant only

applicant and inventor

inventor only (If this check-box
is marked, do not fill in below.)

Applicants registration No. with the Office

State (that is, country) of nationality: State (that is, country) of residence:

This person is applicant all designated States the States indicated in the Supplemental Box
for the purposes of:

Further applicants and/or (further) inventors are indicated on another continuation sheet.

Form PCT/RO/101 (continuation sheet) (16 September 2012) See Notes to the request form
 Sheet No. . . . 3. . . .
Box No. V DESIGNATIONS

The filing of this request constitutes under Rule 4.9(a) the designation of all Contracting States bound by the PCT on the international
filing date, for the grant of every kind of protection available and, where applicable, for the grant of both regional and national patents.
However,
DE Germany is not designated for any kind of national protection
JP Japan is not designated for any kind of national protection
KR Republic of Korea is not designated for any kind of national protection
(The check-boxes above may only be used to exclude (irrevocably) the designations concerned if, at the time of filing or subsequently under
Rule 26bis.1, the international application contains in Box No. VI a priority claim to an earlier national application filed in the particular
State concerned, in order to avoid the ceasing of the effect, under the national law, of this earlier national application.)

Box No. VI PRIORITY CLAIM AND DOCUMENT

The priority of the following earlier application(s) is hereby claimed:

Filing date Number Where earlier application is:

of earlier application of earlier application
national application: regional application: international application:
(day/month/year)
country or Member regional Office receiving Office
of WTO
item (1) 1511551.2 GB 1
28/02/2015

2
item (2) 1524892.1 GB
15/05/2015

item (3)

Further priority claims are indicated in the Supplemental Box.

Furnishing the priority document(s): 1

The receiving Office is requested to prepare and transmit to the International Bureau a certified copy of the earlier application(s)
(only if the earlier application(s) was filed with the receiving Office which, for the purposes of this international application, is
the receiving Office) identified above as:
all items item (1) item (2) item (3) other, see Supplemental Box
The International Bureau is requested to obtain from a digital library a certified copy of the earlier application(s) identified above,
using, where applicable, the access code(s) indicated below (if the earlier application(s) is available to it from a digital library):
item (1) item (2) item (3) other, see
1A2B
access code ______________ 9C8G
access code ______________ access code _______________ Supplemental Box

Either Restore
of these options
the right can be
of priority: filled inOffice
the receiving to get the mark.
is requested Sub-boxes
to restore needfor
the right of priority tothe
beearlier
filled in, main identified
application(s) box need not
above or in the Supplemental Box as item(s) (_________________________________). (See also the Notes to Box No. VI; further
to get information
the mark.must be provided to support a request to restore the right of priority.)

Incorporation by reference: where an element of the international application referred to in Article 11(1)(iii)(d) or (e) or a part of
the description, claims or drawings referred to in Rule 20.5(a) is not otherwise contained in this international application but is
completely contained in an earlier application whose priority is claimed on the date on which one or more elements referred to in
Article 11(1)(iii) were first received by the receiving Office, that element or part is, subject to confirmation under Rule 20.6,
incorporated by reference in this international application for the purposes of Rule 20.6.

Box No. VII INTERNATIONAL SEARCHING AUTHORITY

Choice of International Searching Authority (ISA) (if more than one International Searching Authority is competent to carry out the
international search, indicate the Authority chosen; the two-letter code may be used):
ISA/ _____________________________________________________________________________________________________

Form PCT/RO/101 (second sheet) (16 September 2012) See Notes to the request form
 Sheet No. . . 4
.....

Box No. IX CHECK LIST for PAPER filings this sheet is only to be used when filing an international application on PAPER
This international application Number This international application is accompanied by the Number 1
contains the following: of sheets following item(s) (mark the applicable check-boxes below of items
and indicate in right column the number of each item):
(a) request form 1. fee calculation sheet . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
PCT/RO/101
(including any 2. original separate power of attorney . . . . . . . . . . . . . . . . :
declarations and
supplemental 3. original general power of attorney . . . . . . . . . . . . . . . . . :
sheets) . . . . . . . . . . . . . . . . . . . . . : 4
4. copy of general power of attorney; reference
(b) description number: . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
(excluding any 5. priority document(s) identified in Box No. VI
sequence listing as item(s) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :
part of the
description, 6. Translation of international application into
see (f), below) . . . . . . . . . . . . . . . : 30 (language): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :

(c) claims . . . . . . . . . . . . . . . . . . . . . : 3 7. separate indications concerning deposited

microorganism or other biological material . . . . . . . . . . : 1
(d) abstract . . . . . . . . . . . . . . . . . . . . : 1
8. copy in electronic form (Annex C/ST.25 text file) on
(e) drawings (if any) . . . . . . . . . . . . : physical data carrier(s) of the sequence listing, not forming
10
part of the international application, which is furnished only
for the purposes of international search under Rule 13ter
(f) sequence listing
(type and number of physical data carriers) . . . . . . . . . .
part of the
............................................. :
description (if any) . . . . . . . . . . . :
9. a statement confirming that the information
recorded in electronic form submitted under
Rule 13ter is identical to the sequence listing
Total number of sheets : 48 as contained in the international application
as filed on paper . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :

10. copy of results of earlier search(es) (Rule 12bis.1(a)) . . :

11. other (specify): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . :

Figure of the drawings which Language of filing of the

1 English
should accompany the abstract: international application:
Box No. X SIGNATURE OF APPLICANT, AGENT OR COMMON REPRESENTATIVE
Next to each signature, indicate the name of the person signing and the capacity in which the person signs (if such capacity is not obvious from reading the request).

SHORTBREAD, Victoria
Authorised Representative

Name only is sufficient for the mark 1

For receiving Office use only

1. Date of actual receipt of the purported
international application: 2. Drawings:

3. Corrected date of actual receipt due to later but received:

timely received papers or drawings completing
the purported international application:

4. Date of timely receipt of the required not received:

corrections under PCT Article 11(2):

5. International Searching Authority 6. Transmittal of search copy delayed

(if two or more are competent): ISA / until search fee is paid

For International Bureau use only

Date of receipt of the record copy

by the International Bureau:

Form PCT/RO/101 (last sheet paper) (16 September 2012) See Notes to the request form