Track changes for MOPOP revised on June 2016

List of changes to correct formatting, terminology and broken links as well as to incorporate suggested clarifications.

Consult the other revisions of the MOPOP.

On this page:

Section 1.01 - 1st paragraph

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Our business hours are 8:30 a.m. to 4:30 p.m. Monday to Friday (except statutory holidays).

Our client service centre is open from 8:30 a.m. to 5:00 p.m. Monday to Friday and our mailroom is open from 8:30 a.m. to 4:30 p.m. Both are closed on statutory holidays.

Section 1.02 - 1st paragraph

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All mail correspondence for the Commissioner of Patents or for the Patent Office should be in accordance with sections 5, 7, 8 and 9 of the Patent Rules,

All correspondence for the Commissioner of Patents or for the Patent Office should be submitted in accordance with sections 5, 7, 8 and 9 of the Patent Rules,

Section 1.02 - 2nd paragraph

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All such correspondence addressed to the Commissioner may also be physically delivered to the Registered Mail Service of Canada Post, or any designated establishment as identified in the Canadian Patent Office Record (CPOR).

When submitting a document that also has a fee requirement, CIPO’s fee payment form should always be submitted as a covering document and should be the only document submitted that contains financial information, such as credit card numbers.

Mail correspondence may be sent by regular mail or using the Registered Mail Service of Canada Post to the address above.

Correspondence may also be delivered in person to CIPO’s mailroom (C-114), or to any designated establishment as identified in the Canadian Patent Office Record (CPOR). Documents delivered to a designated establishment must be enclosed in a sealed envelope.

Section 1.03.01 - 2nd paragraph

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The electronic transmittal report will constitute the acknowledgement that the correspondence has been received.

The electronic transmittal report returned to you following your facsimile transmission will constitute the acknowledgement that the correspondence has been received. Confidentiality of the facsimile transmission process cannot be guaranteed.

Section 1.03.01 - 4th paragraph

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When submitting a document by facsimile that also has a fee requirement, CIPO’s fee payment form should be used.

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Section 1.03.02 - 2nd paragraph

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may also be sent electronically.

may also be sent electronically via CIPO’s website.

Section 1.03.02 - 3rd paragraph

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Document presentation requirements relating to sections 69 and 70 of the Patent Rules apply to electronically submitted correspondence, including facsimiles. The acceptable file formats for documents submitted electronically via CIPO’s website can be found at the above-listed website addresses.

Document presentation requirements relating to sections 68, 69 and 70 of the Patent Rules apply to electronically submitted correspondence, including facsimiles. The acceptable file formats for documents submitted electronically via CIPO’s website can be found at the above-listed links.

Section 1.04 - Bullet points 2, 3, 4

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  • Mail intended for the Patent Office and delivered, during business hours, to one of Industry Canada’s designated establishments will be considered to be received on the date of reception in that establishment, only if it is also a day on which CIPO’s offices in Gatineau are open. Mail delivered to a designated establishment on a day when CIPO’s offices in Gatineau are closed will be considered to be received on the next working day for CIPO. If, for example, mail intended for the Patent Office is delivered to Industry Canada’s designated establishment in Toronto on June 24, it will not be considered to be received on June 24 as this is a day on which CIPO’s offices in Gatineau are closed. Mail delivered to designated establishments on June 24 will be considered to be received on the next working day for CIPO.
  • As Canada Post’s Registered Mail Service is considered to be a designated establishment, mail intended for the Patent Office and delivered through Canada Post’s Registered Mail Service will also be considered to be received on the date stamped on the envelope by Canada Post, if it is a day on which CIPO’s offices in Gatineau are open. If the date stamped on the Registered Mail is a day when CIPO’s offices in Gatineau are closed, the mail will be considered to be received on the next working day for CIPO.
  • Mail intended for the Patent Office and delivered by electronic means of transmission, including facsimile, will be considered to be received by the Commissioner on the day that it is transmitted if received before midnight, local time at the Patent Office in Gatineau. On days where the Patent Office is closed for business, correspondence received on that day will be considered to be received on the next working day.
  • Mail intended for the Patent Office and delivered, during business hours, to one of the designated establishments will be considered to be received on the date of delivery to that designated establishment, only if it is also a day on which CIPO is open for business. Mail delivered to a designated establishment on a day when CIPO’s offices in Gatineau are closed will be considered to be received on the next day on which CIPO is open for business. If, for example, mail intended for the Patent Office is delivered to Innovation, Science and Economic Development Canada’s designated establishment in Toronto on June 24, it will not be considered to be received on June 24 as this is a day on which CIPO’s offices in Gatineau are closed. Mail delivered to designated establishments on June 24 will be considered to be received on the next day on which CIPO is open for business.
  • As Canada Post’s Registered MailTM and XpresspostTM services are considered to be a designated establishment, mail intended for the Patent Office and delivered through Canada Post’s Registered MailTM and XpresspostTM services are considered to be received on the date indicated on the mailing receipt provided by Canada Post, if it is a day on which CIPO’s offices in Gatineau are open. If the date on the mailing receipt is a day when CIPO’s offices in Gatineau are closed, the mail will be considered to be received on the next day on which CIPO is open for business.
  • Correspondence intended for the Patent Office and delivered by electronic means of transmission, including facsimile, will be considered to be received by the Commissioner on the day that it is transmitted if received before midnight, local time at the Patent Office in Gatineau. On days where the Patent Office is closed for business, correspondence received on that day will be considered to be received on the next day on which the Patent Office is open for business.

Section 1.04.01 - 1st paragraph

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In accordance with section 26 of the Interpretation Act, any person choosing to deliver a document to a designated establishment, including the Patent Office in Gatineau, Industry Canada designated establishment, or a Registered Mail establishment, where a federal, provincial or territorial holiday exists, is entitled to an extension of any time limit for the filing of the document that expires on the holiday, until the next day that is not a holiday.

In accordance with section 26 of the Interpretation Act, any person choosing to deliver a document to a designated establishment, including the Patent Office in Gatineau,  an Innovation, Science and Economic Development Canada regional office, or  via Canada Post’s Registered MailTM and XpresspostTM services where a federal, provincial or territorial holiday exists, is entitled to an extension of any time limit for the filing of the document that expires on the holiday, until the next day that is not a holiday.

Section 1.05 - 1st paragraph

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Subject to the conditions imposed by subsection 6(3) of the Patent Rules, the authorized correspondent, applicant and agent may meet with the examiner about a pending application.

Subject to the conditions imposed by subsection 6(3) of the Patent Rules, the authorized correspondent, applicant and agent may request an interview with an examiner in respect of an application.

Section 1.07 - 2nd paragraph

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Certain parts of an application and some administrative information are accessible on CIPO’s website after an application has been laid open. If examination has not been requested before the application is laid open, the originally filed abstract, description, claims and drawings, along with limited administrative information, will be accessible. Where examination is requested before the application is laid open and amendments have been entered before the application is laid open, the amended documents will be accessible. If a patent is granted, this information is replaced by the granted abstract, description, claims and drawings.

The prosecution history and some administrative information relating to patent applications open to public inspection and relating to granted patents are accessible through CIPO’s Canadian Patents Database (CPD).

Section 1.07 - 3rd paragraph

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An application or patent’s complete prosecution history may also be viewed in person at CIPO’s Gatineau office, or purchased via the Data and Document Dissemination Section, or by contacting:
Data and Document Dissemination Section
Canadian Intellectual Property Office
Industry Canada
Place du Portage, Phase I
50 Victoria, Room C-229
Gatineau QC K1A 0C9

Tel.: 1 866 997-1936 (from 8.30 a.m. to 4:30 p.m. EST)

An application’s or patent’s complete prosecution history may also be viewed in person at CIPO’s Gatineau office, purchased online via the Data and Document Dissemination Section, or obtained by contacting the Data and Document Dissemination Section at:

Data and Document Dissemination Section
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Place du Portage, Phase I
50 Victoria, Room C-229
Gatineau QC K1A 0C9

Tel.: 1 866 997-1936 (from 8.30 a.m. to 5:00 p.m. EST)

Section 13.10 - 1st paragraph

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subsection 30(4) of the Patent Act, and the Patent Appeal board

subsection 30(4) of the Patent Rules, and the Patent Appeal Board

Section 13.11 - 2nd and 3rd paragraphs

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under 30(4) of the Patent Act

under 30(4) of the Patent Rules

Section 15.01 - 4th paragraph

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Anticipation is generally assessed

Anticipation is assessed

Section 15.01.01c - 3rd paragraph

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(so-called “secret” prior art)

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Section 15.01.01d - 2nd paragraph

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“secret” prior art

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Section 15.01.01d - 3rd paragraph

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co-pending application finds basis

co-pending application is disclosed

Section 15.02 - 3rd paragraph

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Obviousness is generally assessed

Obviousness is assessed

Section 15.02.02 - 5th paragraph

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between the examiner and agent as to whether

between the examiner and applicant(s) as to whether

Section 15.02.02b - 4th paragraph

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Where it is appropriate or necessary to establish the common general knowledge in a field, this can be done by

Where it is appropriate or necessary to establish the common general knowledge in a field (for example where the examiner and applicant disagree as to the common general knowledge), this can be done by

Section 15.02.06 - 2nd paragraph

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It should generally be presumed, absent any indication to the contrary, that where an examiner has identified a claim as defective for lack of novelty the claimed subject-matter is also defective for obviousness.  

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Section 15.03 - 4th paragraph

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The priority is valid only to the extent that the priority document discloses the same invention as is claimed in the application. Where the scope of the teachings in the priority document and the application are different, the claim in the application may not benefit from the earlier claim date. Where, for example, the priority document teaches a specific embodiment and the application claims a generalised invention covering the specific embodiment, a claim to the generalised invention  would not benefit from the priority date whereas a claim limited in scope to the specific embodiment disclosed in the priority document would.

The priority is valid only to the extent that the priority document discloses the same subject-matter as is claimed in the application. Where the scope of the teachings in the priority document and the application are different, the claim in the application may not benefit from the earlier claim date. Where, for example, the priority document teaches a specific embodiment and the application claims generalised subject-matter covering the specific embodiment, a claim to the generalised subject-matter may not benefit from the priority date if further support for the generalised subject-matter is not found in the priority document, whereas a claim limited in scope to the specific embodiment disclosed in the priority document would.

Section 15.06 - last paragraph

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The Office takes the position that the doctrine of double-patenting applies if the application being examined belonged to the “same applicant” at any time up to the date the earlier filed document became available to the public.

The Office takes the position that the doctrine of double-patenting applies if the application being examined belonged to the “same applicant” at any time.

Section 15.07 - 1st paragraph

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These further inventions must be based on the later discovery and disclosure of substantial advantages not disclosed by the inventors of the broad invention.

These further inventions must be based on the disclosure of substantial advantages not disclosed by the inventors of the broad invention.

Section 15.08 - 3rd paragraph

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A proviso based on a prior art disclosure may be introduced to an application in order to establish novelty. To comply with subsection 38.2(2) of the Patent Act the language of such a proviso should find explicit basis in the prior art. That is, the proviso should exclude precisely the relevant teachings of the prior art document and not something different.

A proviso based on a prior art disclosure may be introduced to an application in order to establish novelty. To comply with subsection 38.2(2) of the Patent Act the proviso should not introduce new matter (e.g. by broadening the claim outside what was reasonably inferable from the original specification).

Section 18.04 - 1st paragraph

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Any protest or filings of prior art requesting confidentiality will be returned to the sender and will not be considered by the patent examiner.

Should a party filing a protest or a filing of prior art request that the protest or filing of prior art remain confidential, the protest or filing of prior art will be returned to the sender and will not be considered by the patent examiner. Parties filing a protest or filing of prior art should note that they cannot remain anonymous; information identifying the protestor, such as that provided in the protest or filing of prior art cover letter, will be made available to the public.

Section 19.10 - Title

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Amendments after payment of the final fee

Amendments with or after payment of the final fee

Section 21.08.03 - 2nd paragraph

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The applicant will be notified of the necessary amendments in the Commissioner’s Decision pursuant to paragraph 31(b) of the Patent Rules.  

The applicant will be notified of the necessary amendments in the Commissioner’s Decision pursuant to subsection 30(6.3) of the Patent Rules and will be invited to make the amendments pursuant to paragraph 31(b) of the Patent Rules.

Section 25.00 - Title

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25.00 Introduction

25.01 Tariff of fees - June 2016

Section 25.00 - 1st paragraph

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This chapter sets forth the various fees to be collected by the Patent Office for services rendered to its clients. The general provision for the charging of fees for service is section 12(1)(e), (f) and (g) of the Patent Act and section 3 of the Patent Rules.

Schedule II of the Patent Rules sets out the various fees that must be paid to the Commissioner of Patents in respect of proceedings taken or services requested under the Patent Act. A summary of these fees is also available on CIPO’s web site.

Section 25.00.01

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25.00.01
Transitional provisions (effective January 1st, 2004)

Maintenance fees paid before January 1, 2004, are paid according to the tariff of fees listed as items 30 to 32 of Schedule II of the Patent Rules as they read immediately before January 1, 2004. Maintenance fees paid after January 1, 2004, are paid according to the tariff of fees listed as items 30 to 32 of Schedule II of the Patent Rules as in force on January 1, 2004 (section 24 of the Transitional Provisions of the Rules Amending the Patent Rules SOR/2003-208).

For patent application deemed to be abandoned for failure to pay a prescribed fee before January 1, 2004, the amount of the fee that must be paid for the purposes of paragraph 73(3)(b) of the Patent Act to reinstate the application is the amount set out in Schedule II of the Patent Rules as they read on the date of abandonment (section 25 of the Transitional Provisions of the Rules Amending the Patent Rules SOR/2003-208).

For patent application filed on or after October 1, 1989, when a notice of allowance, pursuant to subsection 30(1) or 30(5) of the Patent Rules, is sent before January 1, 2004, the amount of the final fee that must be paid is set out in item 6(a) of Schedule II of the Patent Rules as they read immediately before January 1, 2004 (section 26 of the Transitional Provisions of the Rules Amending the Patent Rules SOR/2003-208).

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