Patent Guidelines

Patent Input and Amendment Form CPA Global requires the following data to enter your Patent cases onto our renewal system so that renewal notices can be generated at the appropriate time and your cases maintained.

Date
Date of transfer of renewal responsibility to CPA Global .

Batch number (if applicable)
Reporting your cases in a weekly or monthly ‘batch’ enables CPA Global to manage your account more effectively. If you report details of your cases in ‘batches’ please provide a sequential number i.e. 1, 2 etc. CPA Global will then monitor your batches to ensure they are processed in sequence.

Client name and address
Your company name and address if changed.

CPA Global client number
Your CPA Global account number.

Division code (if applicable)
A short code of (up to a maximum) of six characters required to identify the relevant case division. If you require more information on divisional accounts please contact patents@cpaglobal.com

Division name and address (If Applicable)
As above.

Country
CPA Global uses the WIPO ST.3 two characters (also known as ICIREPAT) country codes. The process of adding cases to your account will be delayed if you do not use a valid country code. If you are unsure of the country code please complete the country name.

Granted European applications
Please provide European granted national entries as separate individual cases.

Type
This field should contain the type of patent / design, as shown in the list below. If you do not provide a valid description there will be a delay in adding cases to your account. Cases will given a default type, which could result in incorrect information being recorded.

Entity size
This information is used to identify whether the proprietor qualifies for the small entity fee reduction available in the USA (and previously Canada). The entity size relates to your company’s total number of registered employees. A company with less then 500 employees is entitled small entity status. Small entity status is also extended to non-profit making organisations with more than 500 employees.

Associated Design number
If a case is based on an associated design application/registration, the design application/ registration number should be entered into this field.

Associated Design date
As above however this field should contain the associated design date.

First priority number
This field contains details of the first filing of an application for the case, normally in the client's country of origin.

First priority date
As above however this field should contain the first priority date

PCT filing number
If case is based upon a PCT application, the PCT filing number should be entered into this field.

PCT filing date
As above however this field should contain the PCT filing date.

Divisional/registration parent number
If a case has a parent upon which is it based, please report this information in this field (the parent application number is required for patents / the parent grant number is required for designs).

Divisional/registration parent date
As above however please report the parent date.

Application number
This field should contain the application number as designated by the national authority. If the case is based upon a PCT Application and has not yet been filed by a national authority, this field should be left blank.

Application date
As above, however this field should contain the application date.

Publication/acceptance number
The earliest (first) publication/acceptance number (publication of application) is required for renewal calculations in certain countries. Late or post-examination (second) publication details are required for renewal calculations in certain other countries. The acceptance (publication) number may be required for designs.

Publication/acceptance date
As above, however this field should contain the publication/acceptance date of the patent/design.

Grant number
This field should contain the grant date of the patent. For designs, registration date can vary depending on the country involved - for GB designs, registration is application, whilst in the US it is grant (the value reported in this field should therefore be the base date event for the case).

Grant date
As above, however this field should contain the grant number of the patent / design.

Expiry date
The date upon which the patent /design is due to expire.

First CPA Global renewal date
The date from which CPA Global is responsible for the payment of annuity fees. *CPA Global will assume that all fees payable before this date will have been paid*.

Proprietor
This field should be completed with the current Applicant / Patentee / Owner or Proprietor name as recorded at the Patent Office / Design Registry.

Your reference (If applicable)
This is a reference or short title (maximum 35 characters), allocated to the case by you.

Your case code
This is a unique code allocated to the case by you or your system.

Agent of record
The full name of the agent of record should be included in this field for the countries in Appendix 2.


Number of claims
Please supply the relevant number of independent claims for Indonesia (ID), Japan (JP), South Korea (KR) or the Philippines (PH).

Number of design
Please supply the relevant number of designs for Austria (AT), Benelux (BX), Germany (DE), Denmark (DK), Finland (FI), Iceland (IS), South Korea (KR), Malaysia (MY), Norway (NO), Poland, (PL), Portugal (PT), Switzerland (CH), Sweden (SE) and Tangiers (TA). We do not require the individual design entries.



Appendix 1 – Countries where publication details are required

There are four major types of publication as defined in patent law each of which are given different INID codes. These are as follows:

1. Publication of application = 1st Publication - INID code (41) or (43)
2. Publication of application for opposition purposes = 2nd Publication - INID code (42) or (44)
3. Publication on or after Grant = Grant - INID code (45) or (47)

There is some confusion amongst different patent offices surrounding the descriptions of publication dates. Some patent offices do not use INID codes (e.g. Philippines) others apply them inconsistently. In Japan INID codes like (24) are used, which relate to the date on which patent protection comes into effect. In the case of old law patents this equates to second publication, for new law patents it is grant.

Unfortunately, there is a lack of consistency in the terminology for some events and terms like ‘acceptance’, ‘sealing’, ‘issuance’ and a multitude of publication events have sprung up in different countries. Thus, ‘acceptance’ (which is the trigger date in Russia and its satellites), occurs when a patent is accepted for grant but is unpublished. True grant does not occur until the patent is published in an official journal that may occur some time later. Hence, acceptance falls between second publication and grant. CPA Global equates acceptance as being equal to second publication on the renewals system for safety purposes.

If your records only have the capacity to hold one publication date, or you are uncertain which is the correct publication date, please report the earliest publication date to CPA Global .

The following table summarises the situation with the different publication dates that should be reported for cases in the countries listed:

Country Name	Country Code	Type of IP concerned	Publication date to use
Austria	AT	National patents & utility models	2nd Publication
Hong Kong	HK	patents	1st Publication
Japan	JP	Old law patents & utility models	2nd Publication
Kyrgyzstan	KG	patents	2nd Publication
Moldova	MD	patents & utility models	2nd Publication
Hungary	HU	patents	1st Publication
South Korea	KR	patents & utility models	2nd Publication
Russia	RU	patents & utility models	2nd Publication
Tajikistan	TJ	patents	2nd Publication
Philippines	PH		1st Publication
Taiwan	TW	patents, designs & utility models	2nd Publication

Countries where publication details are required

Country and type	Summary	INID code Date	INID code number
Austria (AT) (patents & utility models)	Renewal fees for national patents (not European patents) payable every year from the first anniversary of the publication date. Cases will be rejected electronically without publication date. The same applies to utility models. Publication takes place on the 15th of each month.	44
Hong Kong (HK) (patents)	Patent applications filed on or after 27 June 1997 and based on a GB, EP (GB), CN or PCT “parent” application – maintenance fees not due until 5 years after the publication of the request to record a HK patent application. Once granted patents pay annuities on the first anniversary of deemed application falling 3 years after the grant date.	43	11 (13A)
Hungary (HU) (patents)	The law in Hungary specifies that renewal fees do not become due until after publication. However, as a safety measure CPA Global sends renewal notices for unpublished patents from the fourth annuity onwards (type AP). It is assumed that the majority of cases will have published by this time. If a publication date is given then cases will send reminders for the first fee falling due after publication.	40
Japan (JP) (patents)	Cases with grant numbers less than 2500000 take the second publication (post– examination) date as the base date. This applies to cases where a decision to effect second publication was made prior to the 1 January 1996. Actual publication may fall after 1 Jan 1996.	44
Japan (JP) (utility models)	For utility models filed before 1 January 1994, renewal fees are due every year from the third anniversary of the date of post-examination publication for opposition purposes.	44/24
Kyrgyzstan (KG) (patents & utility models)	See Russia	43
South Korea (KR) (patents & utility models)	For patent cases granted before 1 July 1997, the base date is second publication. For cases granted from the 1 July 1997 the base date is grant.	24	11

Country and type	Summary	INID code Date	INID code number
Moldova (MD) (patents)	See Russia	43
Philippines (PH) (patents)	For cases with a deemed application on or after 1 January 1998, renewal fees are due every year from the fourth anniversary of the publication date.	43
Russia (RU) (patent & utility models)	Renewal fees are due every year from deemed application, but not until the date of notification of grant (“acceptance”).	43
Tajikistan (TJ) (patents)	See Russia	43
Taiwan (TW) (patents & utility models designs)	Renewal fees are due every year from the first anniversary of the second publication date. Since 1 August 1988 publication has occurred on the 1, 11 and 21st of each month.	44

Countries where CPA Global pays from publication for safety

Countries where a pseudo-publication date is used

The information given above is provided for general information purposes only and does not constitute legal or other professional advice. In the case of a specific problem or query, professional advice should be sought.

Appendix 2 - Countries where agents of record are required

There are some countries where we need to know your Agent of Record, and these are listed below.