Canadian Intellectual Property Office

Amendments to the Patent Rules

Amendments to Patent Rules and Trade-marks Regulations

Amendments to the Trade-marks Regulations

Amendments to the Patent Rules (Simplification of Administrative Requirements)

Regulatory Initiative: Amendments to the Patent Rules– Forward Regulatory Plan 2013-15

Title or working title of the regulatory initiative:

Amendments to the Patent Rules

Description of objective:

This regulatory initiative proposes amendments to the Patent Rules under the authority of the Patent Act.

The Patent Act and associated regulations relate to the protection of new inventions (art, process, machine, manufacture, composition of matter) or any new and useful improvement of an existing invention.

The proposed amendments seek to modernize, simplify and clarify the processes associated with the Canadian Intellectual Property Office’s (CIPO) examination of patent applications and re-examination of patents.

The current process for CIPO granting a patent involves a number of steps, starting with the review of the application by a patent examiner.  If during this process, the examiner notifies the applicant that any aspect of the application fails to comply with the Patent Act and the Patent Rules, and the error is not corrected, the examiner can reject the application. The reasons for the examiner’s rejection are laid out in a Final Action report that is sent to the applicant. If the applicant responds to the Final Action without overcoming the objections raised in the report, the Commissioner of Patents, on the recommendation of the Patent Appeal Board, can decide to: i) uphold the Final Action on review; ii) return the patent application to the examiner for review; or iii) notify the applicant that changes are needed to the patent application within a three-month period to avoid a final refusal.

Currently, in the case of an appeal, the Commissioner can only review the Final Action report.  The proposed amendments would allow the Commissioner to review the entire patent application in addition to the Final Action report.  They would also allow for more direct communication between the Commissioner and patent applicants and clarify the procedures that applicants must follow during the Commissioner’s review.

The proposed amendments would also create efficiencies in the re-examination process under the Patent Rules. For example, they would simplify the existing system for ordering and presenting claims associated with the re-examination process.

Indication of business impacts:

There are no expected business impacts.

Note:  The statement that there are no expected business impacts is an indication that the One-for-One Rule and the Small Business Lens are not expected to apply.

Public Consultation:

Interested stakeholders had the opportunity to comment when the proposed amendments were pre-published in Canada Gazette, Part 1 on September 29, 2012.

Departmental Contact:

Canadian Intellectual Property Office

If you wish to contact the department please use the following address: OPIC-CIPO.consultations@ic.gc.ca

For more information

To learn about upcoming or ongoing consultations on proposed federal regulations, visit the Canada Gazette and Consulting with Canadians Web sites.

__________________________________________________

Regulatory Initiative: Amendments to the Patent Rules and Trade-marks Regulations – Forward Regulatory Plan 2013-15

Title or working title of the regulatory initiative:

Amendments to the Patent Rules and Trade-marks Regulations

Description of objective:

The proposed amendments are to the Patent Rules, under the authority of the Patent Act, and to the Trade-marks Regulations, under the authority of the Trade-marks Act.

The Patent Act and associated regulations relate to the protection of new inventions (art, process, machine, manufacture, composition of matter) or any new and useful improvement of an existing invention. 

The Trade-marks Act and associated regulations relate to the protection of a mark (e.g. word, symbol or design) used to distinguish the wares or services of one person or organization from those of others in the marketplace.

The proposed amendments would make three key changes:

First, they would require more experience as an eligibility criterion to sit for the Patent Agent Qualifying Exam.  Since 2003, the total number of persons taking the Patent Agent Qualifying Exam in Canada has increased, as have the percentages of unsuccessful candidates.  Lack of experience in dealing with patent applications and other relevant work experience is a significant factor in the low pass rate on the Patent Agent exams.  The proposed amendments would address this by requiring that those who want to write the exam have greater prior experience in Canadian patent law.

Second, the proposed amendments would harmonize the examination processes and eligibility criteria for Patent Agents and Trade-marks Agents.  Harmonization of the eligibility criteria would simplify the processes for those individuals who work as both patent and trade-mark agents.

Third, the proposed amendments would create administrative efficiencies in the Patent Agent exam process.  For example, the proposed amendments would allow the Canadian Intellectual Property Office (CIPO) greater flexibility in determining specific exam dates, allow CIPO to communicate with candidates using means other than registered mail, and tighten the rules around exam fee refunds.  Specifically, a request for a refund would be restricted to only those situations where the candidate has passed a previously administered examination but not received results before the registration deadline.

Indication of business impacts:

There are no expected business impacts.

Note:  The statement that there are no expected business impacts is an indication that the One-for-One Rule and the Small Business Lens are not expected to apply.

Public Consultation:

Interested stakeholders had the opportunity to comment when the proposed amendments were pre-published in Canada Gazette, Part 1 on September 29, 2012.

Departmental Contact:

Canadian Intellectual Property Office

If you wish to contact the department please use the following address: OPIC-CIPO.consultations@ic.gc.ca

For more information

To learn about upcoming or ongoing consultations on proposed federal regulations, visit the Canada Gazette and Consulting with Canadians Web sites.

__________________________________________________

Regulatory Initiative: Amendments to the Trade-marks Regulations – Forward Regulatory Plan 2013-15

Title or working title of the regulatory initiative:

Amendments to the Trade-marks Regulations

Description of objective:

The proposed amendments are to the Trade-marks Regulations, under the authority of the Trade-marks Act.

The Trade-marks Act and associated regulations relate to the protection of a mark (e.g. word, symbol or design) used to distinguish the wares or services of one person or organization from those of others in the marketplace.

The proposed amendments would modernize, simplify and clarify the administrative processes relating to trade-mark registration and to opposition proceedings before the Registrar of Trade-marks at the Canadian Intellectual Property Office (CIPO).

Opposition proceedings occur when someone objects to the registration of a trade-mark in Canada.  Currently, owing to a variety of deadlines and the possibilities of obtaining extensions of time, opposition proceedings can be quite lengthy to complete, resulting in additional costs to firms waiting to register their trade-marks in Canada. 

In order to reduce the potential for protracted and costly delays, the proposed amendments would set a prescribed time for the completion of all cross-examinations, the filing of written arguments and requests for hearings in trade-mark opposition proceedings. 

They would also provide more flexibility to applicants in their communications regarding trade-mark registration.

Indication of business impacts:

There may be business impacts.  The “One-for-One” Rule and/or the Small Business Lens may apply.

Public Consultation:

Interested stakeholders will have the opportunity to comment when the proposed amendments/regulations are pre-published in Canada Gazette, Part 1 (timing TBD).

Departmental Contact:

Canadian Intellectual Property Office

If you wish to contact the department please use the following address: OPIC-CIPO.consultations@ic.gc.ca

For more information

To learn about upcoming or ongoing consultations on proposed federal regulations, visit the Canada Gazette and Consulting with Canadians Web sites.

__________________________________________________

Regulatory Initiative: Amendments to the Patent Rules (Simplification of Administrative Requirements) – Forward Regulatory Plan 2013-15

Title or working title of the regulatory initiative:

Amendments to the Patent Rules (Simplification of Administrative Requirements)

Description of objective:

This regulatory amendment initiative proposes amendments to the Patent Rules under the authority of the Patent Act.

The Patent Act and associated rules relate to the protection of new inventions or any new and useful improvement of an existing invention.

The objectives of the proposed regulatory amendment initiative are to reduce red tape by eliminating overly restrictive procedural requirements and by eliminating some fees now deemed unnecessary, to introduce safeguard mechanisms through new procedures for communicating with non-appointed agents and for rectifying an error introduced in the naming of an applicant, to streamline the Patent Rules by repealing spent provisions, to increase certainty by reducing the time limit to request examination from five to three years, and to bring Canada a step closer to alignment with the Patent Law Treaty.

Simplifying procedural requirements will improve accessibility to the patent regime, in line with the Government’s priorities on innovation, research and development as outlined in the 2011 Speech From the Throne.

Indication of business impacts:

There may be business impacts.  The “One-for-One” Rule and/or the Small Business Lens may apply.

Public Consultation:

Interested stakeholders will have the opportunity to further comment when the proposed amendments are pre-published in Canada Gazette, Part 1 (timing TBD).

All of the key items contained in this regulatory proposal were the subject of a 2009 public consultation.  Following the consultation, the proposal was amended to reflect stakeholders comments and also to address recent Court decisions and comments by the Standing Joint Committee for the Scrutiny of Regulations.

Departmental Contact:

Canadian Intellectual Property Office

If you wish to contact the department please use the following address: OPIC-CIPO.consultations@ic.gc.ca

For more information

To learn about upcoming or ongoing consultations on proposed federal regulations, visit the Canada Gazette and Consulting with Canadians Web sites.