Requirements under Section 29(1)(d)

Prescribed offices

9.27 The definition of prescribed offices is given in Rule 41 as follows:

  • Australia
  • Canada (in respect of applications for a Canadian patent filed in the English language)
  • Japan
  • New Zealand
  • Republic of Korea
  • United Kingdom
  • United States of America
  • European Patent Office (in respect of applications for a European patent filed in the English language)

9.28 Japanese and Korean applications may be relied upon provided an English translation has been filed. However in the case of corresponding or related Canadian or European applications, these must have been filed in English.

9.29 For example, the final results of a European application that was filed in French or German cannot be used as a basis for supplementary examination. The English translations of foreign language claims that are published at the grant of European patents do not satisfy the requirements of Rule 41.

9.30 The language requirements will generally be checked by the Registry at filing of the request for supplementary examination. If during the examination the Examiner considers that the corresponding or related application does not meet the language requirements they would advise the Registry.