MOPOP - Chapter 4



Petitions and appointment of agents

Table of Contents

4.01
Petition for grant of a patent - September 2014

The Petition for grant of a patent is a statutory requirement under subsection 27(2) of the Patent Act and must follow the form and instructions set out in Form 3 of Schedule I of the Patent Rules (section 77 of the Patent Rules), to the extent that the provisions of the form and the instructions are applicable. The petition must commence on a new page (section 72 of the Patent Rules), must not contain drawings (section 74 of the Patent Rules) and must conform to the specific requirements of document presentation set forth in section 68 of the Patent Rules.

While the abstract, description, claims and drawings of a patent application must be individually and all together wholly in English or wholly in French (subsection 71(3) of the Patent Rules) the petition may be in either English or French but does not have to be in the same language as the specification (section 71 of the Patent Rules).

As per section 61 of the Patent Rules, the requirement in subsection 27(2) of the Patent Act that an application contain a petition does not apply to applications filed under the provisions of the Patent Cooperation Treaty (PCT). These applications are filed with a request in accordance with Article 4 of the PCT.

4.01.01
Correction of clerical errors in the petition

The petition may be amended to correct clerical errors following a request under section 8 of the Patent Act or section 35 of the Patent Rules.

Note that section 35 of the Patent Rules can only be used prior to a patent being granted whereas section 8 of the Patent Act can be used either before or after a patent has been granted.

Note as well that in view of section 37 of the Patent Rules, if the error relates to the naming of an inventor or applicant, a corresponding corrected statement to the effect that the applicant is the inventor or declaration that the applicant is the legal representative of the inventor (if the applicant is not the inventor) might also need to be submitted. More information on the correction of clerical errors can be found in Chapter 23 of this manual.

4.01.02
Title of invention

The petition, i.e. Form 3 of Schedule I of the Patent Rules, must include the title of the invention.

That said, in accordance with paragraph 80(1)(a) of the Patent Rules, the description must also state the title of the invention, which shall be short and precise and shall not include a trademark, coined word or personal name.

In instances where the title of the invention in the description differs from the title in the Petition for Grant of a Patent, the Office will only have regard to the title as specified in the description. The application will grant to patent with the title as it appears on the first page of the description.

4.01.03
Public Servants Inventions Act

In the case of an invention by a public servant as detailed in sections 2, 3 and 4 of the Public Servants Inventions Act, the petition for patent must indicate that the inventor is a public servant.

4.02
Appointment of patent agents - September 2014

Individual inventors may prosecute or maintain their own applications as applicants provided they have not assigned their interest in the invention.  This does not extend to successors in title. However, an inventor-applicant may choose to be represented by a patent agent residing in Canada whose name appears on the register of patent agents which permits the agent to act on behalf of the inventor-applicant. Whenever all or part of an inventor's rights have been assigned and the assignment has been recorded in the Patent Office, an application must thereafter be prosecuted by a registered patent agent residing in Canada (see sections 20, 21, 22, 23 and 24 of the Patent Rules). Whenever a patent agent is required but one has not been appointed, the Patent Office will send a notice to the applicant pursuant to section 23 of the Patent Rules. A patent agent must be appointed within three months from the date of the notice.

The appointment of a patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the applicant (subsection 20(2) of the Patent Rules).

It should be noted that all correspondence addressed to the Commissioner of Patents should be in accordance with section 5 of the Patent Rules.

The appointment of a patent agent can be revoked by submitting to the Commissioner a notice of revocation signed by the applicant or that patent agent (subsection 20(3) of the Patent Rules, see also sections 23, 24 and 40 of thePatent Rules).

4.02.01
Appointment of associate patent agents

A patent agent who does not reside in Canada cannot prosecute nor maintain an application, but must appoint an associate agent who resides in Canada to do so (subsection 21(1) of the Patent Rules). Whenever an associate patent agent is required but one has not been appointed, the Patent Office will send a notice to the agent pursuant to section 23 of the Patent Rules. An associate patent agent must be appointed within three months from the date of the notice. A patent agent who resides in Canada may also appoint an associate patent agent provided the associate patent agent also resides in Canada (subsection 21(2) of the Patent Rules).

Appointments of associate patent agents may be submitted by the applicant or the patent agent. Revocations of associate patent agents may be submitted by the applicant, the patent agent or the associate patent agent. (Subsections 21(3) and 21(4) of the Patent Rules.)

The appointment of an associate patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the patent agent who appointed the associate patent agent (subsection 21(3) of the Patent Rules).

The appointment of an associate patent agent can be revoked by submitting to the Commissioner a notice of revocation signed by the associate patent agent or the patent agent who appointed the associate patent agent (subsection 20(3) of the Patent Rules and section 23 of the Patent Rules).

4.03
Small entity declarations - September 2014

The term “small entity” is defined, in respect of an invention, as an entity that employs 50 or fewer employees or that is a university, but does not include an entity that (a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or (b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees (subsection 3.01(3) of the Patent Rules).

Where an applicant or patentee wishes to pay small entity fees, a small entity declaration must be submitted. A signed small entity declaration can be included in the Petition for grant of a patent (section 7 of Form 3 of Schedule I of the Patent Rules) at time of filing or can be submitted as a separate document at any time.

The Office will accept payment of fees at the small entity level in respect of an application or a patent only after a signed small entity declaration has been filed. The small entity declaration must be signed by either the applicant or the patent agent appointed by and on behalf of the applicant, and must indicate the name of the applicant and, if applicable, the name of the patent agent signing the declaration.

Where an application is not a PCT national phase application or a patent granted therefrom, an applicant or patentee is entitled to pay fees at the small entity level if, on the filing date of the application, the original applicant was a small entity in respect of the invention to which the application or patent is related. The original applicant is the applicant identified in the petition.

For a PCT national phase application or a patent granted therefrom, an applicant or patentee is entitled to pay fees at the small entity level if, at the date of national entry, the applicant entering the national phase was a small entity in respect of the invention to which the application or patent is related.

4.04
Representative drawing - April 2014

The applicant can request that a specific figure of the drawings, which is representative of the invention, accompany the abstract when it is made open to public inspection under section 10 of the Patent Act, provided a request to do so is included in section 8 of the petition (Form 3 of Schedule I of the Patent Rules) at the time of filing.

In the absence of such a request in the petition at time of filing, a single figure of the drawings will be selected by the Patent Office to be representative of the drawings illustrating an invention.  This figure will be illustrated on the cover page of the patent application once it is made open to public inspection under section 10 of the Patent Act, and on the cover page of any patent which may issue from the application.


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