Changes to IP Regulations

Proposed Amendments to the Patent Rules — Package #1

The Canadian Intellectual Property Office (CIPO), a Special Operating Agency (SOA) associated with Innovation, Science and Economic Development Canada, is responsible for the administration and processing of the greater part of intellectual property in Canada. CIPO's areas of activity include patents, trademarks, copyright, industrial designs and integrated circuit topographies. CIPO's mandate stems from statutory and other authorities, including the Patent Act, the Trade-marks Act, the Copyright Act, the Industrial Design Act, the Integrated Circuit Topography Act and the Public Servants Inventions Act, as well as regulations associated with each of these acts.

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 (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention.

In 2007, the Standing Joint Committee for the Scrutiny of Regulations (SJCSR), a parliamentary committee established under the Rules of the Senate and the Standing Orders of the House of Commons, conducted a review of the Patent Rules (the Rules). Following the review, the Canadian Intellectual Property Office's Patent Office was encouraged to clarify specific provisions in the Patent Rules on the basis of legality and procedural aspects.

The proposed regulatory amendments respond to both the SJC-SR recommendations and CIPO's efforts to improve service to clients by providing greater legal certainty and reducing the administrative burden. The proposed amendments are non-controversial in nature and do not alter existing policy or practice. The proposed amendments are as follows: (1) simplify the definition of the term ";description"; (2) clarify the purpose of section 16(4) (3) consolidate provisions that address the establishment of a filing date; (4) clarify the confidential period; (5) amend incorrect reference to a section of the Patent Act regarding the payment of maintenance fees; (6) update the reference to the definition of ";small entity"; in Form 3 of Schedule I to the Rules; (7) clarify Form 3 of Schedule I to the Rules; and (8) simplify the completion requirements.

There was a two-phased approach to public consultations on the proposed amendments: November 27, 2008 to January 5, 2009 (first consultation), and January 27, 2009 to February 26, 2009 (second consultation). In response to comments received during the first consultation period, CIPO's Patent Office revised its proposal regarding inventorship and ownership and provided stakeholders with a further opportunity to comment. During the second consultation, stakeholders supported the revised text. CIPO received seven submissions in total from the two consultation periods.

The Patent Rules are enforced by the application of existing provisions in the Patent Act. As such, enforcement and compliance provisions remain unchanged as a result of the proposed regulatory amendments. Accordingly, there are no new compliance and enforcement provisions required to monitor and enforce these regulatory changes.

The proposed changes are part of CIPO's 2009-2010 activities that support the IP Administrative Framework, as set out in the 2007-2012 CIPO Strategic Plan. This includes simplifying and clarifying administrative processes for the delivery of services and products, improving legal certainty and reducing the administrative burden for clients. These amendments will assist clients in obtaining patent rights and provide greater flexibility through the elimination of several administrative requirements and the clarification of some Patent Rules provisions.

The Government of Canada recognizes that strong, modern, internationally competitive intellectual property legislation and regulations are vital to advancing Canada's economy. The proposed amendments are part of CIPO's continuing efforts to deliver quality and timely IP products and services to its clients.

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