Track changes for MOPOP revised September 2017

List of changes related to the incorporation of a new section detailing practice relating to antibodies.

Consult the other revisions of the MOPOP.

Chapter 4 – Title

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Petitions and appointments of agents and representatives

Petitions and appointments of agents

Section 4.03 – Entire section

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4.03 Appointment of representative - April 2014

An applicant for a patent who does not appear to reside or carry on business at a specified address in Canada shall, on the filing date of the application, appoint as a representative a person or firm residing or carrying on business at a specified address in Canada (subsection 29(1) of the Patent Act).

The person or firm chosen is deemed to be the representative of the applicant for all purposes of the Patent Act, including the service of any proceedings taken thereunder (subsection 29(2) of the Patent Act).  It should be noted that regular correspondence from the Patent Office such as examiner's reports is not sent to the representative but directly to the authorized correspondent.  A representative may be appointed either in the Petition for grant of a patent (in accordance with section 5 of Form 3 of Schedule I of the Patent Rules) or by means of a separate document (section 78 of the Patent Rules).

If at time of filing or upon entering the PCT national phase in Canada, the appointment of a representative is required under section 29 of the Patent Act, and the applicant fails to appoint one, the application will be considered incomplete (section 94 of the Patent Rules).

Thereafter, the applicant for a patent or a patentee may, by giving notice to the Commissioner, appoint a new representative in place of the latest recorded representative, or may give notice to the Commissioner of a change in the address of the latest recorded representative.

The applicant for a patent or patentee shall appoint a new representative or supply a new and correct address of the latest recorded representative on receipt of a request of the Commissioner stating that the latest recorded representative has died or that a letter addressed to the latest recorded representative at the latest recorded address and sent by ordinary mail has been returned undelivered.

Where the Commissioner makes such a request to appoint a new representative or supply a new and correct address of the latest recorded representative and no new appointment is made or no new and correct address is supplied by the applicant or patentee within three months, the Federal Court or the Commissioner may dispose of any proceedings under the Patent Act without requiring service on the applicant or patentee of any process in the proceedings (section 29 of the Patent Act).

-previous text deleted-
-previous sections 4.04 and 4.05 renumbered as 4.03 and 4.04, respectively-

Section 5.04 – 2nd paragraph

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Subsection 94(2) of the Patent Rules requires that certain information and documents, if not supplied at the time of filing, be supplied in order to complete the application. The requirements are that:

  • the abstract, the description, the claims and the drawings comply with sections 68 to 70 of the Patent Rules, and
  • the application contain the information and documents listed below:
    • a petition complying with section 77 of the Patent Rules,
    • an abstract,
    • a sequence listing complying with subsection 111(1) of the Patent Rules if a sequence listing is required by that subsection,
      a claim or claims,
    • any drawing referred to in the description,
    • an appointment of a patent agent if required by section 20 of the Patent Rules,
    • an appointment of an associate patent agent if required by section 21 of the Patent Rules, and
    • an appointment of a representative if required by section 29 of the Patent Act.

Subsection 94(2) of the Patent Rules requires that certain information and documents, if not supplied at the time of filing, be supplied in order to complete the application. The requirements are that:

  • the abstract, the description, the claims and the drawings comply with sections 68 to 70 of the Patent Rules, and
  • the application contain the information and documents listed below:
    • a petition complying with section 77 of the Patent Rules,
    • an abstract,
    • a sequence listing complying with subsection 111(1) of the Patent Rules if a sequence listing is required by that subsection,
      a claim or claims,
    • any drawing referred to in the description,
    • an appointment of a patent agent if required by section 20 of the Patent Rules, and
    • an appointment of an associate patent agent if required by section 21 of the Patent Rules.

Section 15.04 – 2nd  paragraph

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As defined in section 2 of the Patent Act, the term applicant “includes an inventor and the legal representatives of an applicant or inventor”. The term legal representative itself “includes heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions”.

As defined in section 2 of the Patent Act, the term applicant “includes an inventor and the legal representatives of an applicant or inventor”. The term legal representative itself “includes heirs, executors, administrators of the estate, liquidators of the succession, guardians, curators, tutors, transferees and all other persons claiming through applicants for patents and patentees of inventions or through holders of certificates of supplementary protection”.

Section 15.06 – 6th paragraph

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The meaning of “same applicant” for the purpose of double-patenting is based on the definition of applicant from section 2 of the Patent Act, and therefore includes an inventor and the legal representatives of an applicant or inventor. The term legal representative itself includes heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions.

The meaning of “same applicant” for the purpose of double-patenting is based on the definition of applicant from section 2 of the Patent Act, and therefore includes an inventor and the legal representatives of an applicant or inventor. The term legal representative itself includes heirs, executors, administrators of the estate, liquidators of the succession, guardians, curators, tutors, transferees and all other persons claiming through applicants for patents and patentees of inventions or through holders of certificates of supplementary protection.

Subsection 19.02.02 – 1st paragraph

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Subsection 6(1) of the Patent Rules requires that for the purposes of prosecuting or maintaining an application the Commissioner shall only have regard to communications from the authorized correspondent [see 4.02 and 4.03]. The patent agent's signature, the seal or stamp of the firm, or a cover letter with the firm's official letterhead or mark recognized by the Patent Office will be accepted as authentication of the authorized correspondent. When the authorized correspondent is an inventor, assignee, or representative, the paper copy of the amendment must be signed, although a copy or an image of the signature on a fax or an electronic image is accepted as authentication.

Subsection 6(1) of the Patent Rules requires that for the purposes of prosecuting or maintaining an application the Commissioner shall only have regard to communications from the authorized correspondent [see 4.02 and 4.03]. The patent agent's signature, the seal or stamp of the firm, or a cover letter with the firm's official letterhead or mark recognized by the Patent Office will be accepted as authentication of the authorized correspondent. When the authorized correspondent is an inventor, assignee, or legal representative, the paper copy of the amendment must be signed, although a copy or an image of the signature on a fax or an electronic image is accepted as authentication.

Subsection 21.07.04 – 5th paragraph

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The hearing may occur in person, via teleconference or via videoconference, at the option of the applicant, and may include the assigned panel, the applicant and applicant's representative, as well as the examiner and the examiner's supervisor.

The hearing may occur in person, via teleconference or via videoconference, at the option of the applicant, and may include the assigned panel, the applicant and applicant's patent agent and/or associate patent agent, as well as the examiner and the examiner's supervisor.

 

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