Proposed Patent Rules draft

For public consultation

Table of provisions


Interpretation

Definitions

1 (1) The following definitions apply in these Rules.

Act
means the Patent Act. (Loi)
Administrative Instructions
means the Administrative Instructions, as modified from time to time, under the Patent Cooperation Treaty. (Instructions administratives)
associate patent agent
means a patent agent appointed by another patent agent under section 35. (coagent)
Budapest Treaty
means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, done at Budapest on April 28, 1977, including any amendments and revisions made from time to time to which Canada is a party. (Traité de Budapest)
common representative
means an applicant or patentee appointed under section 33. (représentant commun)
division date
means the date determined under subsection 101 (2). (date de division)
description
means, except in Form 1 of Schedule 1, the part of a specification other than the claims. (description)
international application
means an application for a patent filed under the Patent Cooperation Treaty. (demande internationale)
international depositary authority
has the same meaning as in Article 2 (viii) of the Budapest Treaty. (autorité de dépôt internationale)
patent agent
means any person or firm whose name is entered on the register of patent agents under section 29. (agent de brevets)
Patent Cooperation Treaty
means the Patent Cooperation Treaty, done at Washington on June 19, 1970, including any amendments, modifications and revisions made from time to time to which Canada is a party. (Traité de coopération en matière de brevets)
PCT national phase application
means an international application in respect of which the applicant has complied with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3). (demande PCT à la phase nationale)
PCT sequence listing standard
means the Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications under the PCT provided for in the Administrative Instructions. (Norme PCT de listages des séquences)
Regulations under the Budapest Treaty
means the Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, including any amendments made from time to time. (Règlement d'exécution du Traité de Budapest)
Regulations under the PCT
means the Regulations under the Patent Cooperation Treaty, including any amendments made from time to time. (Règlement d'exécution du PCT)
sequence listing
has the same meaning as in the PCT sequence listing standard. (listage des séquences)

Definition of drawing

(2) For the purposes of the Act and these Rules, drawing includes a photograph.

Reference to a period

(3) A reference to a period in these Rules is, if the period is extended under section 8 of these Rules or section 78 (1) of the Act, to be read as a reference to the period as extended.

Clarification

2. For greater certainty, for the purposes of these Rules,

  1. (a) an application for reissue of a patent is not considered to be an application for a patent; and
  2. (b) a patent granted on the basis of an application for a patent does not include a patent granted on the basis of a divisional application that results from the division of the former application.

Part 1 Rules of General Application

Fees

Application fee

3 (1) For the purposes of subsection 27 (2) of the Act, the prescribed application fee is

  1. (a) the small entity fee set out in item 1 of Schedule 2 if the small entity status condition set out in subsection 4 (1) is met and a small entity declaration is filed in respect of the application for a patent in accordance with subsection 5 (1)
    1. (i) on or before the filing date of the application or in the case of a divisional application on or before the division date of the divisional application, or
    2. (ii) if a notice is required to be sent under subsection 27 (7) of the Act, before the notice is sent or, if the notice is sent, before the end of two months after the date of the notice; and
  2. (b) in any other case, the standard fee set out in that item.
Late fee

(2) For the purposes of subsection 27 (7) of the Act, the prescribe late fee is the fee set out in item 2 of Schedule 2.

Examination fee

(3) For the purposes of subsection 35 (1) of the Act, the prescribed fee for an application for a patent to be examined is

  1. (a) the applicable small entity fee set out in item 3 of Schedule 2 if the small entity status condition set out in subsection 4 (1) is met and a small entity declaration is filed in respect of the application in accordance with subsection 5 (1)
    1. (i) before the end of the applicable time prescribed by section 81, or
    2. (ii) if a notice is required to be sent under paragraph 35 (3) (b) of the Act, before the notice is sent or, if the notice is sent, before the end of two months after the date of the notice; and
  2. (b) in any other case, the applicable standard fee set out in that item.
Late fee

(4) For the purposes of subsection 35 (3) of the Act, the prescribed late fee is the fee set out in item 4 of Schedule 2.

Basic fee of the final fee

(5) For the purposes of calculating in respect of an application for a patent the final fee referred to in subsection 84 (1), (5), (9) or (11), the prescribed basic fee is

  1. (a) the applicable small entity fee set out in item 7 of Schedule 2 if the small entity status condition set out in subsection 4 (1) is met and if a small entity declaration is filed in respect of the application in accordance with subsection 5 (1) before the end of the applicable time period for the payment of the final fee prescribed by subsections 84 (1), (5), (9) or (11); and
  2. (b) in any other case, the applicable standard fee set out in that item.
Basic national fee

(6) For the purposes of paragraph 150 (1) (c), the prescribed basic national fee in respect of an application for a patent is

  1. (a) the small entity fee set out in item 14 of Schedule 2 if the small entity status condition set out in subsection 4 (1) is met and if a small entity declaration is filed in respect of the application in accordance with subsection 5 (1) before the end of the time prescribed by subsection 150 (1) or on or before the day on which the applicant complies with the requirements of paragraph 150 (4) (a); and
  2. (b) in any other case, the standard fee set out in that item.
Re-examination fee

(7) For the purposes of subsection 48.1 (1) of the Act, the prescribed fee for a request for re-examination of one or more claims of a patent is

  1. (a) the small entity fee set out in item 18 of Schedule 2 if
    1. (i) the person requesting re-examination is the patentee, the small entity status condition set out in subsection 4 (1) is met and a small entity declaration is filed in respect of the patent or the application on which the patent is based in accordance with subsection 5 (1), or
    2. (ii) the person requesting re-examination is not the patentee, the small entity status condition set out in subsection 4 (2) is met and a small entity declaration is filed in respect of the request for re-examination in accordance with subsection 5 (2); and
  2. (b) in any other case, the standard fee set out in that item.
Maintenance fee: application

(8) Subject to subsection (79), for the purposes of subsection 27.1 (1) of the Act, the prescribed fee to maintain an application for a patent in effect is

Exception

(9) For the purposes of subsection 27.1 (1) of the Act, the prescribed fee to maintain a divisional application in effect is, for the time period beginning on its filing date and ending on its division date, the sum of

  1. (a) the small entity fees set out in item 32 of Schedule 2 for the anniversary dates falling in that time period if the small entity status condition set out in subsection 4 (1) is met and a small entity declaration is filed in respect of the divisional application in accordance with subsection 5 (1) on or before the division date, and
  2. (b) in any other case, the standard fees set out in that item for the anniversary dates falling in that time period.
Late fee

(10) For the purposes of subsection 27.1 (2) of the Act, the prescribed late fee is the fee set out in item 33 of Schedule 2.

Maintenance fee: patent

(11) Subject to subsections (12) and (13), for the purposes of subsection 46 (1) of the Act, the prescribed fee to maintain the rights accorded by a patent issued under the Act in effect is

  1. (a) the applicable small entity fee set out in item 32 of Schedule 2 if the small entity status condition set out in subsection 4 (1) is met and if a small entity declaration is filed in respect of the patent or the application on which the patent is based in accordance with subsection 5 (1)
    1. (i) on or before the applicable date set out in that item, or
    2. (ii) if a notice is required to be sent under paragraph 46 (2) (b) of the Act, before the notice is sent or, if the notice is sent, before the end of two months after the date of the notice; and
  2. (b) in any other case, the applicable standard fee set out in that item.
Exception

(12) If a patent is granted on the basis of an application for a patent, in respect of which a fee was payable under subsection 27.1 (1) of the Act within the twelve month period preceding the date on which the patent was issued but that was not yet paid before the date the patent issued, for the purposes of subsection 46 (1) of the Act, the prescribed fee to maintain the rights accorded by the patent in effect is, for the date of the first anniversary of the filing date of the application that occurs on or after the date on which the patent was issued, the total of

  1. (a) the unpaid fee,
  2. (b) the late fee set out in item 33 of Schedule 2, and
  3. (c) the fee prescribed in paragraph (11) (a) or (b), as applicable.
Exception

(13) No fee to maintain the rights accorded by a reissued patent is payable in respect of a date for which a fee was paid to maintain the rights accorded by the original patent.

Late fee

(14) For the purposes of subsection 46 (2) of the Act, the prescribed late fee is the fee set out in item 33 of Schedule 2.

Deemed filing date of declaration—divisional application

(15) For the purposes of this section, a small entity declaration filed in respect of an original application on or before the division date of a divisional application is, in respect of the divisional application, deemed to have been filed on the division date.

Small entity status condition

4 (1) Subject to subsection (2), the small entity status condition is

  1. (a) in respect of an application for a patent—other than a PCT national phase application or a divisional application—or in respect of a patent granted on the basis of such an application, that the applicant originally identified in the petition is, on the filing date of the application, an entity that employs 50 or fewer persons or a university, other than
    1. (i) an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 persons, or
    2. (ii) an entity that has transferred or licensed, or has an obligation other than a contingent obligation to transfer or license, any right or interest in a claimed invention to an entity, other than a university, that employs more than 50 persons; or
  2. (b) in respect of a PCT national phase application or in respect of a patent granted on the basis of such an application, on the the day on which the applicant complies with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3), without taking into account subsection 150 (4), or the day on which the applicant complies with the requirements of paragraph 150 (4) (a), that the applicant that complies with those requirements is an entity that employs 50 or fewer persons or that is a university, other than an entity referred to in subparagraph (a) (i) or (ii);
  3. (c) in respect of a divisional application or a patent granted on the basis of a divisional application, that the requirements set out in paragraph (a) or (b), as applicable, are met in respect of the original application.
Exception

(2) In respect of a request for re-examination under subsection 48.1 (1) of the Act by a person other than the patentee, the small entity status condition is met if the person requesting the re-examination is, on the date of the request for re-examination, an entity that employs 50 or fewer persons or that is a university, other than an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 persons.

Clarification

(3) For greater certainty, for the purposes of this section, a reissued patent is considered to be issued on the basis of the original application.

Small entity declaration

5 (1) Subject to subsection (2), a small entity declaration must

  1. (a) be filed with the Commissioner as part of the petition or in a document other than the abstract, specification or drawings, that identifies the patent or application for a patent to which it relates;
  2. (b) contain a statement to the effect that the applicant or patentee believes that the small entity status condition set out in subsection 4 (1) is met in respect of that application or patent;
  3. (c) be signed by the applicant or patentee or by a patent agent appointed in respect of that application or patent; and
  4. (d) indicate the name of the applicant or patentee and, if applicable, the name of the patent agent signing the declaration.
Exception

(2) In respect of a request for re-examination under subsection 48.1 (1) of the Act by a person other than the patentee, a small entity declaration must

  1. (a) be filed with the Commissioner;
  2. (b) identify the request for re-examination to which it relates;
  3. (c) contain a statement to the effect that the person requesting re-examination believes that the small entity status condition set out in subsection 4 (2) is met in respect of that request;
  4. (d) be signed by the person requesting re-examination or by a patent agent appointed in respect of that request; and
  5. (e) indicate the name of the person requesting re-examination and, if applicable, the name of the patent agent signing the declaration.

Refund of fees

6 (1) Subject to subsection (2), the Commissioner must refund

  1. (a) any fees paid on an application for a patent withdrawn before examination, less one-half of the application fee prescribed under subsection 27 (2) of the Act, if, through inadvertence, accident or mistake, more than one application for a patent is filed for the same invention, by the same person, and if any of the applications is withdrawn before examination;
  2. (b) a fee to request the registration of a document relating to a patent or an application for a patent, if the fee is received but the document is not submitted;
  3. (c) a fee paid by a person under subparagraph 26 (b) (ii) to sit for a paper of a qualifying examination, if the Commissioner notifies the person that they passed an equivalent paper of a previously administered qualifying examination and the person notifies the Commissioner in writing before the end of 30 days after receipt of the notification from the Commissioner that they no longer intend to sit for the examination of the equivalent paper;
  4. (d) a fee paid in respect of a request for a copy of a document, if the fee received is insufficient and the request is withdrawn;
  5. (e) a fee paid for advertising an application presented to the Commissioner under section 65 of the Act on the website of the Canadian Intellectual Property Office, if the application is not advertised on that website;
  6. (f) a fee paid for a copy of a document, if the Patent Office does not have that document;
  7. (g) any amount paid in excess of the fee prescribed; and
  8. (h) any fee paid, if payment of the fee is waived.
Request

(2) The Commissioner must not make a refund under paragraphs (1) (a) to (g) unless a request for the refund is received before the end of three years after the day on which the fee was paid.

Waiver of fee: reissue of patent

7 (1) The Commissioner is authorized to waive the payment of the fee set out in item 16 of Schedule 2 if the application for reissue is further to an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.

Waiver of fee: request to correct errors

(2) The Commissioner is authorized to waive the payment of the fee set out in item 22 of Schedule 2 payable for a request for a correction if the request seeks to correct an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.

Extension of Time

Time period fixed by Rules

8 (1) Subject to these Rules, the Commissioner is authorized to extend the time period fixed by these Rules for doing anything if the Commissioner is satisfied that the circumstances justify the extension and if, before the end of that time period, the extension is applied for and the fee set out in item 26 of Schedule 2 is paid.

Other authorized extensions

(2) The Commissioner is also authorized to extend the time period for the payment of a fee prescribed under subsections 3 (1), (3), (5), (6), (8), (9), (11) or paragraph 3 (12) (c) if the Commissioner is satisfied that the circumstances justify the extension and if

  1. (a) the amount of the small entity fee was paid before the end of the time period;
  2. (b) it is later determined that the standard fee should have been paid;
  3. (c) the applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and the application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid;
  4. (d) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee as set out in the Patent Rules as they read at the date the small entity fee was paid; and
  5. (e) the applicant or patentee pays the fee set out in item 26 of Schedule 2 in respect of each fee that is the subject of an application for such an extension.

Time fixed by subsection 18 (2) of the Act

9 The Commissioner is authorized to extend the time fixed by subsection 18 (2) of the Act if the extension is applied for, the fee set out in item 26 of Schedule 2 is paid and the Commissioner is satisfied that the circumstances justify the extension.

Prescribed day

10 The following days are prescribed for the purposes of subsection 78 (1) of the Act:

  1. (a) Saturday;
  2. (b) Sunday;
  3. (c) January 1, or if January 1 falls on a Saturday or a Sunday, the following Monday;
  4. (d) Good Friday;
  5. (e) Easter Monday;
  6. (f) the Monday preceding May 25;
  7. (g) June 24, or if June 24 falls on a Saturday or a Sunday, the following Monday;
  8. (h) July 1, or if July 1 falls on a Saturday or a Sunday, the following Monday;
  9. (i) the first Monday in August;
  10. (j) the first Monday in September;
  11. (k) the second Monday in October;
  12. (l) November 11, or if November 11 falls on a Saturday or a Sunday, the following Monday;
  13. (m) December 25 and 26 or, if December 25 falls on a
    1. (i) Friday, that Friday and the following Monday, and
    2. (ii) Saturday or Sunday, the following Monday and Tuesday; and
  14. (n) any day on which the Patent Office is closed to the public.

Communications

Written communications to be addressed to Commissioner

11Written communications intended for the Commissioner or the Patent Office must be addressed to the "Commissioner of Patents".

Postal address

12 (1) A person doing business before the Patent Office must provide the Commissioner with their postal address and a written communication sent by the Commissioner or Patent Office to that person at that address is deemed sent to that person on the date that it bears.

Email address

(2) If a person doing business before the Patent Office provides the Commissioner with their email address, a written communication sent by the Commissioner or Patent Office as an email attachment to that person at that address is deemed sent to that person on the date borne by the attached written communication.

One patent or application for a patent per communication

13 (1) Subject to subsection (2), a written communication intended for the Commissioner or the Patent Office must not relate to more than one patent or application for a patent.

Exceptions

(2) Subsection (1) does not apply in respect of

  1. (a) a change in a name or address;
  2. (b) a transfer;
  3. (c) a request to register a document under section 121;
  4. (d) a fee to maintain in effect an application for a patent or to maintain the rights accorded by a patent;
  5. (e) an appointment, or revocation of an appointment, of a patent agent; or
  6. (f) a correction of an error if the error and correction are the same in each patent or application for a patent.

Minimal content of written communications regarding applications

14 (1) Written communications intended for the Commissioner or the Patent Office in respect of an application for a patent must include the name of the applicant and, if known, the application number.

Minimal content of written communications regarding patents

(2) Written communications intended for the Commissioner or the Patent Office in respect of a patent must include the name of the patentee and the patent number.

Manner of submission of documents, information or fees

15 (1) Unless submitted by an electronic means under subsection 8.1 (1) of the Act, a document, information or fee for submission to the Commissioner or the Patent Office must be submitted by physical delivery to the Patent Office or to an establishment that is designated by the Commissioner on the website of the Canadian Intellectual Property Office.

Date—physical delivery to Patent Office

(2) Documents, information or fees that are submitted to the Commissioner or the Patent Office by physical delivery to the Patent Office are deemed to have been received by the Commissioner

  1. (a) in the case that they are delivered during the Office's ordinary business hours, on the day on which they are delivered to the Office; and
  2. (b) in any other case, on the day on which the Office is next open.
Date—physical delivery to designated establishment

(3) Documents, information or fees that are submitted to the Commissioner or the Patent Office by physical delivery to a designated establishment are deemed to have been received by the Commissioner

  1. (a) in the case that they are delivered during the establishment's ordinary business hours,
    1. (i) on the day on which they are delivered, if the Patent Office is open that day, or
    2. (ii) on the day on which the Patent Office is next open, if it is closed that day; and
  2. (b) in any other case, on the day on which the Patent Office is next open that falls on or after the day on which the establishment is next open.
Date—submission by electronic means

(4) Documents, information or fees that are submitted by electronic means under subsection 8.1 (1) of the Act are deemed to have been received on the day, according to the local time of the place where the Patent Office is located, on which the Patent Office receives them.

Communication deemed not sent

16 If the Commissioner decides to refuse to recognize a person as a patent agent under section 16 of the Act or decides to remove the name of a person from the register of patent agents under subsection 30 (2) of these Rules, any communication respecting a patent or an application for a patent sent by the Commissioner or by the Patent Office to that person within the four-month period before the date of the decision and to which no reply has been made by that date is deemed not to have been sent to the patentee or applicant.

Acknowledgment by Commissioner

17 Written communications submitted to the Commissioner in respect of a filing under section 34.1 of the Act and written communications submitted to the Commissioner before the granting of a patent with the stated or apparent intention of protesting against the granting of that patent must be acknowledged, but, subject to section 10 of the Act, information must not be given as to the action taken.

Presentation of Documents to Commissioner or Patent Office

Manner of presentation

18 (1) Subject to subsection (2), documents submitted in paper form in connection with patents and applications for a patent must

Exception

(2) Certified copies of documents and documents concerning transfers referred to in section 49 of the Act may be submitted on sheets of paper that are no larger than 21.6 cm x 35.6 cm (8.5" x 14").

Replacement of a non-conforming document

(3) If a document is initially submitted to the Commissioner or the Patent Office in an electronic form not specified by the Commissioner under subsection 8.1 (1) of the Act, it must be replaced by a document that conforms with the Act and these Rules and a statement must be submitted to the Commissioner or the Patent Office, as the case may be, to the effect that the replacement document is the same as the document initially submitted.

Layout

19 (1) Subject to subsection (2), the contents on each page of a document must be presented upright.

Exception

(2) If it aids in presentation, figures, tables and chemical or mathematical formulae may be presented sideways with the top of the figures, tables or formulae at the left side of the page.

Text in English or French

20 The text matter of the abstract, the description, the drawings and the claims, individually and altogether, must be entirely in English or entirely in French.

Documents not in English or French

21 (1) The Commissioner must not have regard to any part of a document submitted to the Commissioner in a language other than English or French, except

  1. (a) a document submitted or made available under paragraph 70 (2) (b) or 73 (3) (a) or subsection 75 (1);
  2. (b) the specification and drawings included in an application for a patent on its filing date if, on or before the filing date, the document referred to in paragraph 72 (d) is not entirely in English or not entirely in French;
  3. (c) a document submitted under paragraph 83 (1) (b); and
  4. (d) a copy of an international application submitted under paragraph 150 (1) (a).
Translation

(2) If under paragraph 70 (2) (b) a copy of the specification and drawings from a previously filed application for a patent is submitted to the Commissioner or made available from a digital library in a language other than English or French, the applicant must submit to the Commissioner a translation into English or French of the previously filed specification and drawings.

Translation

(3) If the Commissioner receives a document under in subsection 28 (1) of the Act that is not entirely in English or entirely in French and that on the face of it appears to be a description, the applicant must submit a translation into English or French of any part of the specification or the drawings that, on the filing date, was included in the application for a patent in a language other than English or French.

Notice requiring translation

(4) If an applicant does not submit a translation required under subsection (2) before the end of the day on which they submit or make available the copy referred to in that subsection or submit a translation required under subsection (3) before the filing date of the application for a patent, the Commissioner must by notice require the applicant to submit a translation into English or French of the document to the Commissioner before the end of two months after the date of the notice.

Translation replaces original

(5) A translation submitted under subsection (2) or (3) or submitted after the notice referred to in subsection (4) replaces the text of the specification or drawings that was in a language other than English or French, including for the application of paragraph 38.2 (3) (b) of the Act.

Non-application of subsection 8 (1)

(6) The Commissioner must not under subsection 8 (1) extend a time set out in subsection (4).

Clarification

22 For greater certainty, a translation submitted under these Rules must be accurate and must not introduce new matter or amendments.

Confidentiality

Information respecting an application for a patent

23 Unless otherwise required by law, the Commissioner and the Patent Office must not provide any information respecting an application for a patent that is not open to public inspection under subsection 10 (2) of the Act to any person other than

  1. (a) the applicant or, if there are joint applicants, any of the applicants;
  2. (b) a patent agent appointed in respect of that application who resides in Canada; or
  3. (c) a person authorized by
    1. (i) the applicant, if there is a single applicant,
    2. (ii) the common representative, if there are joint applicants, or
    3. (iii) a patent agent appointed in respect of that application who resides in Canada.

Prescribed date—withdrawal of request for priority

24 For the purposes of subsection 10 (4) of the Act, if a request for priority with respect to a particular previously regularly filed application for a patent is withdrawn under section 76 of these Rules, the prescribed date is the day on which a period of sixteen months after the filing date of the previously regularly filed application expires.

Prescribed date—withdrawn applications

25 For the purposes of subsection 10 (5) of the Act, the prescribed date is the earlier of

  1. (a) the day that is two months before the end of the confidentiality period referred to in subsection 10 (2) of the Act, and
  2. (b) if applicable, the day on which the applicant submits their approval, under subsection 10 (2) of the Act, that the application for a patent be open to public inspection before the end of the confidentiality period.

Register of Patent Agents

Eligibility for qualifying examination

26 A person is eligible to sit for a paper of the qualifying examination for patent agents if the person meets the following requirements:

  1. (a) on the day of that paper, resides in Canada and
    1. (i) has been employed for at least 24 months on the examining staff of the Patent Office,
    2. (ii) has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, or
    3. (iii) has worked in the area of patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, at least 12 of which were worked in Canada and the rest of which were worked in another country where the person was authorized to act as a patent agent under the law of that country; and
  2. (b) within two months after the day on which the notice referred to in subsection 28 (2) was published,
    1. (i) notifies the Commissioner in writing of their intention to sit for that paper,
    2. (ii) pays the fee set out in item 36 of Schedule 2 for that paper, and
    3. (iii) furnishes the Commissioner with a statement indicating that they will meet the requirements set out in paragraph (a), along with supporting justifications.

Establishment of Examining Board

27 (1) An Examining Board is established for the purposes of preparing, administering and marking a qualifying examination for patent agents.

Membership

(2) The Commissioner must appoint the members of the board. The chairperson and at least three other members must be employees of the Patent Office and at least five other members must be patent agents nominated by the Intellectual Property Institute of Canada.

Frequency of qualifying examination

28 (1) The Examining Board must administer a qualifying examination for patent agents at least once a year.

Notice of date of qualifying examination

(2) The Commissioner must publish on the website of the Canadian Intellectual Property Office a notice that specifies the dates of the next qualifying examination and indicates that a person who intends to sit for one or more papers of the examination must meet the requirements set out in section 26.

Designation of place of examination

(3) The Commissioner must designate the place or places where the qualifying examination is to be held and must notify, at least two weeks before the first day of the examination, every person who meets the requirements set out in paragraph 26 (b) of the designated place or places.

Entry on register

29 The Commissioner must, on written request and payment of the fee set out in item 35 of Schedule 2, enter on the register of patent agents kept under section 15 of the Act the name of

  1. (a) a resident of Canada who has passed the qualifying examination for patent agents;
  2. (b) a resident of another country who is authorized to act as a patent agent under the law of that country; and
  3. (c) a firm at least one member of which has their name entered on the register.

Maintenance of name on register

30 (1) During the period beginning on January 1 and ending on March 31 of each year

  1. (a) a resident of Canada whose name is entered on the register of patent agents must, in order to maintain their name on the register, pay the fee set out in item 37 of Schedule 2;
  2. (b) a resident of another country whose name is entered on the register of patent agents must, to maintain their name on the register, file a statement signed by them setting out their country of residence and declaring that they are authorized to act as a patent agent under the law of that country; and
  3. (c) a firm whose name is entered on the register of patent agents must, to maintain its name on the register, file a statement signed by one of its members whose name is on the register, indicating all of its members whose names are on the register.
Removal from register

(2) The Commissioner must remove from the register of patent agents the name of any patent agent who

  1. (a) fails to comply with subsection (1); or
  2. (b) is not a person referred to in paragraph 29 (a) or (b) or a firm referred to in paragraph 29 (c).

Reinstatement

31 If the name of a patent agent has been removed from the register of patent agents under subsection 30 (2), it may be reinstated on the register if the patent agent

  1. (a) applies to the Commissioner, in writing, for reinstatement within one year after the day on which their name was removed from the register; and
  2. (b) as the case may be
    1. (i) is a person referred to in paragraph 29 (a) and pays the fees set out in items 37 and 38 of Schedule 2,
    2. (ii) is a person referred to in paragraph 29 (b) and files the statement referred to in paragraph 30 (1) (b), or
    3. (iii) is a firm referred to in paragraph 29 (c) and files the statement referred to in paragraph 30 (1) (c).

Amendment of register

32 If the Commissioner decides to refuse to recognize a person as a patent agent under section 16 of the Act or to remove the name of a person from the register of patent agents under subsection 30 (2) of these Rules, the Commissioner must amend the register accordingly and publish the decision on the website of the Canadian Intellectual Property Office and notify that person of the decision.

Appointment of Common Representative

Power to appoint a common representative

33 (1) In respect of a patent or an application for a patent, in respect of which there are joint applicants or joint patentees, one applicant or patentee may be appointed by the other applicants or patentees as their common representative.

Manner of appointment

(2) An appointment of a common representative may be made

  1. (a) in any case, in a notice to that effect submitted to the Commissioner and signed by the other applicants or patentees;
  2. (b) in respect of an application for a patent, other than a divisional application or a PCT national phase application, that includes a petition on the filing date, in the petition as submitted on that date; or
  3. (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner on or before the day on which the applicant complies with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3), without taking into account subsection 150 (4), or on or before the day on which the applicant complies with the requirements of paragraph 150 (4) (a).
Common representative by default—applications for a patent

(3) Subject to subsection (7), in respect of an application for a patent—other than a divisional application—in respect of which there are joint applicants and no common representative is appointed under subsection (2), the following person is deemed to be appointed as the common representative:

  1. (a) in respect of an application for a patent, other than a PCT national phase application,
    1. (i) if the application included a petition on the filing date, the first person named as applicant in the petition, or
    2. (ii) if the application did not include a petition on the filing date, the applicant whose name on that date appears first when listed in alphabetical order; or
  2. (b) in respect of a PCT national phase application, the first person named as applicant in the request under Article 4 of the Patent Cooperation Treaty.
Common representative by default—divisional applications

(4) Subject to subsection (7), in respect of a divisional application, in respect of which there are joint applicants and no common representative is appointed under paragraph (2) (a), the person who, at the end of the division date of the divisional application, is the common representative of the original application is deemed to be appointed as the common representative of the divisional application.

Common representative by default—patents

(5) Subject to subsection (7), in respect of a patent other than a reissued patent, in respect of which there are joint patentees and no common representative is appointed under paragraph (2) (a), the person who was, immediately before the patent is granted, the common representative in respect of the application on which the patent was granted is deemed to be appointed as the common representative of the patent.

Common representative by default—reissued patent

(6) Subject to subsection (7), in respect of a reissued patent, in respect of which there are joint patentees and no common representative is appointed under paragraph (2) (a), the person who was the common representative in respect of the original patent immediately before the time of reissue is deemed to be appointed as the common representative of the reissued patent.

Common representative by default—transfers

(7) If the transfer of the whole of the rights of a common representative in a patent or an application for a patent is recorded by the Commissioner under section 49 of the Act and another common representative is not appointed under paragraph (2) (a), the following person is deemed to be appointed as the common representative in respect of that application or patent:

  1. (a) if the common representative whose rights were transferred has only one current successor in title, that successor in title, or
  2. (b) if the common representative whose rights were transferred has more than one current successor in title, the current successor in title whose name appears first when listed in alphabetical order.
Revocation of common representative

(8) An appointment of a common representative is revoked by the subsequent appointment of another common representative under paragraph (2) (a) or subsection (7).

Appointment of Patent Agents

Power to appoint a patent agent

34 (1) An applicant, patentee or other person may appoint a patent agent to represent them in business before the Patent Office.

Mandatory appointment of patent agent

(2) An applicant must appoint a patent agent to represent them before the Patent Office in respect of an application for a patent if

  1. (a) the application is filed by a person other than the inventor;
  2. (b) there is more than one inventor and the application is not filed by all of the inventors jointly; or
  3. (c) a transfer, in whole or in part, of the application is recorded by the Commissioner under section 49 of the Act.
Manner of appointment of patent agent by applicant or patentee

(3) An appointment of a patent agent by an applicant or patentee may be made

  1. (a) in any case, in a notice to that effect submitted to the Commissioner and signed by the
    1. (i) applicant or patentee, if there is a single applicant or patentee, or
    2. (ii) common representative, if there are joint applicants or patentees;
  2. (b) in respect of an application for a patent, other than a divisional application or a PCT national phase application, that includes a petition on the filing date, in the petition as submitted on that date;
  3. (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner on or before the day on which the applicant complies with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3), without taking into account subsection 150 (4), or the day on which the applicant complies with the requirements of paragraph 150 (4) (a); or
  4. (d) in respect of a divisional application, in the petition as submitted on its division date.
Manner of appointment of a patent agent by a person other than applicant or patentee

(4) An appointment of a patent agent other than an associate patent agent by a person other than an applicant or patentee may be made in a notice to that effect submitted to the Commissioner and signed by that person.

Patent agent by default—patents

(5) If a person appoints a patent agent to represent them before the Patent Office in respect of an application for a patent, unless the appointment document indicates otherwise the person is deemed to have also appointed the patent agent to represent them in respect of a patent granted on the basis of the application.

Revocation of appointment of patent agent by applicant or patentee

(6) The appointment of a patent agent in respect of business before the Patent Office by an applicant or patentee is revoked if

  1. (a) a notice to that effect is submitted to the Commissioner and signed by the patent agent or
    1. (i) the applicant or patentee, if there is a single applicant or patentee; or
    2. (ii) the common representative, if there are joint applicants or patentees.
  2. (b) the Commissioner refuses to recognize, under section 16 of the Act, the patent agent as a patent agent either generally or in respect of that business; or
  3. (c) the Commissioner removes, under subsection 30 (2), the name of the patent agent from the register of patent agents.
Revocation of appointment of patent agent by person other than applicant or patentee

(7) The appointment of a patent agent in respect of business before the Patent Office by a person other than an applicant or patentee is revoked if

  1. (a) a notice to that effect signed by the patent agent or that person is submitted to the Commissioner;
  2. (b) the Commissioner refuses to recognize, under section 16 of the Act, the patent agent as a patent agent either generally or in respect of that business; or
  3. (c) the Commissioner decides under subsection 30 (2) to remove the name of the patent agent from the register of patent agents.

Power to appoint an associate patent agent

35 (1) A patent agent appointed by an applicant, patentee or other person to represent them in business before the Patent Office may appoint a patent agent who resides in Canada as the associate patent agent in respect of that business.

Mandatory appointment of associate patent agent

(2) If a patent agent does not reside in Canada and is appointed as the patent agent by an applicant, patentee or other person to represent them in business before the Patent Office, the agent must appoint a patent agent who resides in Canada as an associate patent agent in respect of that business.

Manner of appointment of associate patent agent

(3) Subject to subsection (4), the appointment of an associate patent agent must be made

  1. (a) in any case, in a notice to that effect submitted to the Commissioner and signed by the patent agent appointing the associate patent agent;
  2. (b) in respect of an application for a patent, other than a divisional application or a PCT national phase application, that includes a petition on the filing date, in the petition as submitted on that date;
  3. (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner on or before the day on which the applicant complies with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3), without taking into account subsection 150 (4), or the day on which the applicant complies with the requirements of paragraph 150 (4) (a); or
  4. (d) in respect of a divisional application, in the petition as submitted on its division date.
Exception

(4) If the appointment of the patent agent appointing the associate patent agent is made by a person other than the applicant or the patentee, the appointment of an associate patent agent must be made in a notice to that effect submitted to the Commissioner and signed by the patent agent appointing the associate patent agent.

Associate patent agent by default—patents

(5) If a patent agent appoints an associate patent agent in respect of an application for a patent, unless the appointment document indicates otherwise, the patent agent is deemed to have also appointed the associate agent in respect of a patent granted on the basis of the application.

Revocation of appointment of associate patent agent

(6) The appointment of an associate patent agent in respect of business before the Patent Office is revoked if

  1. (a) a notice to that effect signed by the associate patent agent or the patent agent who appointed the associate patent agent is submitted to the Commissioner;
  2. (b) the appointment of the patent agent who appointed the associate patent agent is revoked in respect of that business;
  3. (c) the Commissioner refuses to recognize, under section 16 of the Act, the associate patent agent or the person who appointed the associate patent agent as a patent agent, either generally or in respect of that business; or
  4. (d) the Commissioner removes, under subsection 30 (2), the name of the associate patent agent or the person who appointed the associate patent agent from the register of patent agents.

Address

36 A patent agent's postal address must be included in the appointment document.

Patent agent by default—transfers

37 (1) If the Commissioner records the transfer of a patent or an application for a patent under subsection 49 (2) or (3) of the Act at the request of a patent agent, other than an associate patent agent, that is appointed to represent the applicant or patentee in business before the Patent Office in respect of the patent or application, unless otherwise indicated in the request the transferee is deemed to have appointed the patent agent to represent them in respect of the patent or the application.

Associate patent agent by default—transfers

(2) If the Commissioner records the transfer of a patent or an application for a patent under subsection 49 (2) or (3) of the Act at the request of an associate patent agent that is appointed to represent the applicant or the patentee in business before the Patent Office in respect of the patent or application, unless otherwise indicated in the request the transferee is deemed to have appointed, to represent them in respect of the patent or the application, the patent agent who appointed the associate patent agent.

Notice requiring appointment of patent agent

38 (1) If an applicant is required under subsection 34 (2) to appoint a patent agent but no patent agent is appointed, the Commissioner must by notice to the applicant require that, before the end of three months after the date of the notice, the applicant appoint either a patent agent who resides in Canada or a non-resident patent agent who, in turn before the end of the same three months, must appoint an associate patent agent.

Notice requiring appointment of a Canadian resident

(2) If the applicant is required under subsection 34 (2) to appoint a patent agent and the applicant appoints a patent agent who does not reside in Canada but, contrary to subsection 35 (2), no associate patent agent is appointed, the Commissioner must by notice to the non-resident patent agent require that, before the end of three months after the date of the notice, either

  1. (a) the non-resident patent agent appoint an associate patent agent, or
  2. (b) the applicant appoint either a patent agent who resides in Canada or a different non-resident patent agent who, in turn must appoint an associate patent agent before the end of the same three months.
Exception

(3) Subsection (2) does not apply during the three-month period referred to in subsection (1).

Successor patent agent

39 If a patent agent withdraws from practice, a patent agent who is the successor to that patent agent and who has so established to the Commissioner, is deemed to be the appointed patent agent under section 34 or 35, as applicable, until another patent agent is appointed, in respect of any patent or application for a patent in respect of which the patent agent who has withdrawn from practice was appointed.

Representation

Effect of an act by common representative

40 In business before the Patent Office, an act by or in relation to a common representative in respect of a patent or an application for a patent, other than an appointment under paragraph 33 (2) (a), has the effect of an act by or in relation to all of the applicants or patentees.

Effect of an act by a patent agent

41 In business before the Patent Office, an act—other than an appointment under paragraph 33 (2) (a)or 34 (3) (a) or subsection 34 (4)—in respect of a patent or an application for a patent by or in relation to a patent agent, other than an associate patent agent, who resides in Canada and is appointed in respect of that application or patent, has the effect of an act by or in relation to the applicant, patentee or other person who appointed the patent agent.

Effect of an act by an associate patent agent

42 In business before the Patent Office, an act—other than an appointment under paragraph 33 (2) (a) or 34 (3) (a) or subsection 34 (4)—in respect of a patent or an application for a patent by or in relation to an associate patent agent appointed in respect of that application or patent, has the effect of an act by or in relation to the applicant, patentee or other person who appointed the patent agent who appointed the associate patent agent.

Prosecuting or maintaining an application for a patent

43 (1) Subject to subsections (2) to (4), in business before the Patent Office for the purpose of prosecuting or maintaining an application for a patent,

  1. (a) if, in respect of the application, a patent agent residing in Canada is appointed or if there is a requirement under subsection 34 (2) to appoint a patent agent, the applicant must be represented by a patent agent who resides in Canada and is appointed in respect of that application; and
  2. (b) in any other case
    1. (i) if there is a single applicant, they must represent themselves, and
    2. (ii) if there are joint applicants, they must be represented by the common representative.
Exceptions

(2) For the purposes of filing an application for a patent, paying a fee under section 27.1 of the Act or complying with the requirements of subsections 150 (1) or (3) or paragraph 150 (4) (a)of these Rules,

  1. (a) if there is a single applicant, they must represent themselves or be represented by any person authorized by the applicant; and
  2. (b) if there are joint applicants, they must be represented by any of the applicants or any person authorized by any of the applicants.
Exception

(3) For the purposes of submitting a request to record a transfer under subsection 49 (2) of the Act,

  1. (a) if there is a single applicant, they must represent themselves or be represented by any person authorized by the applicant; and
  2. (b) if there are joint applicants, they must be represented by the common representative or any person authorized by the common representative.
Exceptions

(4) For the purposes of section 27.01 or 28.01 of the Act, for the purpose of paying a fee in respect of an application for a patent—other than a fee under section 27.1 of the Act or a fee referred to in subsection 150 (1), (3) or (4) of these Rules—or for the purpose of taking any of the actions required by subparagraphs 73 (3) (a) (i) to (iv) of the Act to reinstate an application for a patent deemed to be abandoned under paragraph 73 (1) (c) of the Act

  1. (a) if there is a single applicant, they may represent themselves; and
  2. (b) if there are joint applicants, they may be represented by the common representative.

Procedures relating to a patent

44 (1) Subject to subsection (2), in business before the Patent Office for the purpose of a procedure relating to a patent,

  1. (a) if there is a single patentee, they must represent themselves or be represented by any person authorized by them; or
  2. (b) if there are joint patentees,
    1. (i) for the purpose of paying a fee under section 46 of the Act, the patentees must be represented by any of the patentees or by any person authorized by any of the patentees, and
    2. (ii) in any other case, the patentees must be represented by the common representative or by any person authorized by the common representative.
Reissue or disclaimer or participating in re-examination

(2) In business before the Patent Office for the purpose of reissuing a patent under section 47 of the Act, making a disclaimer under section 48 of the Act, filing a reply under subsection 48.2 (5) of the Act or participating in a re-examination proceeding under section 48.3 of the Act,

  1. (a) if there is a single patentee, they must represent themselves or be represented by a patent agent who resides in Canada appointed in respect of that business; or
  2. (b) if there are joint patentees, the patentees must be represented by the common representative or by a patent agent who resides in Canada appointed in respect of that business.

Interviews with officers or employees

45 Only the following persons may have interviews with officers or employees of the Patent Office regarding an application for a patent

  1. (a) if, in respect of that application, a patent agent residing in Canada is appointed or if there is a requirement under subsection 34 (2) to appoint a patent agent,
    1. (i) a patent agent appointed in respect of that application who resides in Canada;
    2. (ii) with the permission of the associate patent agent appointed in respect of that application, a patent agent appointed in respect of that application who does not reside in Canada; or
    3. (iii) with the permission of the patent agent appointed in respect of that application who resides in Canada, the
      1. (A) applicant, if there is a single applicant; or
      2. (B) common representative, if there are joint applicants; and
  2. (b) in any other case, the
    1. (i) applicant, if there is a single applicant; or
    2. (ii) common representative, if there are joint applicants.

Notice of disregarded communication

46 (1) If, in respect of a patent or an application for a patent, a joint applicant or joint patentee who is not the common representative sends a written communication to the Commissioner in respect of business for which the common representative is entitled to represent the applicants or the patentees, the Commissioner must by notice inform that joint applicant or joint patentee that the Commissioner must not have regard to that communication unless, before the end of three months after the date of the notice, that joint applicant or joint patentee is appointed under paragraph 33 (2) (a) to represent the applicants or patentees as their common representative and requests that the Commissioner have regard to the communication.

Exception

(2) Subsection (1) does not apply to a communication in respect of business under subsection 43 (2) or (3) or to a communication in respect of business for the purpose of a procedure relating to a patent, except for a communication in respect of business referred to in subsection 44 (2).

Date communication received

(3) If, before the end of three months after the date of the notice referred to in subsection (1), the joint applicant or joint patentee who sent a written communication to the Commissioner is appointed under paragraph 33 (2) (a) to represent the applicants or patentees as their common representative and requests that the Commissioner have regard to the communication, the communication is deemed to have been received from the common representative on the date on which it was originally received.

Date communication received

47 (1) If a patent agent who resides in Canada but who is not appointed to represent an applicant or patentee in respect of a patent or an application for a patent communicates with the Commissioner on behalf of that applicant or patentee in respect of that application or patent, the Commissioner must by notice inform the patent agent that the Commissioner must not have regard to that communication unless, before the end of three months after the date of the notice, the patent agent is appointed to represent that applicant or patentee in respect of that application or patent and requests that the Commissioner have regard to the communication.

Exception

(2) Subsection (1) does not apply to a communication in respect of business under subsection 43 (2) or (3) or to a communication in respect of business for the purpose of a procedure relating to a patent, except for a communication in respect of business referred to in subsection 44 (2).

Date communication received

(3) If, before the end of three months after the date of the notice referred to in subsection (1), the patent agent is appointed to represent that applicant or patentee in respect of that patent or application for a patent and requests that the Commissioner have regard to the communication, the communication is deemed to have been received from the applicant or patentee on the date on which the communication was received from the patent agent.

Government-Owned Patents

Notification of order to keep non-assigned application for a patent secret

48 If the Governor in Council orders under subsection 20 (17) of the Act that an invention described in an application for a patent must be treated for the purposes of section 20 of the Act as if it had been assigned or agreed to be assigned to the Minister of National Defence, the Commissioner must, as soon as the Commissioner is informed of the order, notify the applicant.

Inspection of defence-related application for a patent

49 The Commissioner must permit a public servant authorized in writing by the Minister of National Defence, or an officer of the Canadian Forces authorized in writing by the Minister of National Defence, to inspect a pending application for a patent that relates to an instrument or munition of war and to obtain a copy of the application.

Presentation of Applications for a Patent

Page margins—description, claims or abstract

50 (1) The minimum margins of pages containing the description, the claims or the abstract must be as follows:

Page margins - drawings

(2) The minimum margins of pages containing the drawings must be as follows:

Margins must be blank

(3) Subject to subsections (4) and (5), the margins of the pages referred to in subsections (1) and (2) must be completely blank.

File reference

(4) The top margin of the pages referred to in subsections (1) and (2) may contain in either corner an indication of the applicant's file reference.

Line numbering

(5) The lines of each page of the description and of the claims may be numbered in the left margin.

Line spacing

51 (1) All text matter in the description or claims must be at least 1 1/2 line spaced, except for sequence listings, tables and chemical and mathematical formulae.

Font size

(2) All text matter in the description or claims must be in characters the capital letters of which are not less than 0.21 cm high.

New page

52 The petition, the abstract, the description, the drawings and the claims must each commence on a new page.

Page numbering

53 (1) The pages of the specification must be numbered consecutively.

Position of page numbers

(2) The page numbers must be centered at the top or bottom of the sheet, but must not be placed in the margin.

No drawing

54 (1) The petition, the abstract, the description and the claims must not contain drawings.

Formulae

(2) The abstract, the description and the claims may contain chemical or mathematical formulae.

Identification of trademarks

55 A trademark mentioned in an abstract, specification or drawing must be identified as such.

Petition

Title and content

56 A petition must bear the title"Petition" or "Request" and must contain

  1. (a) a request for the grant of a patent;
  2. (b) the title of the invention as stated in the description; and
  3. (c) the name and postal address of the applicant.

Inventors and Entitlement

Application by sole inventor or sole inventors

57 (1) If, at the filing date of an application for a patent, the applicant is the sole inventor of the subject matter of the invention for which an exclusive privilege or property is claimed or, if there are joint applicants at the filing date, the applicants are all inventors and the sole inventors of that subject matter, the application must contain a declaration to that effect.

Application by a person other than inventor

(2) If subsection (1) does not apply, the application for a patent must indicate the name and postal address of each inventor of the subject matter of the invention for which an exclusive privilege or property is claimed and contain a declaration that the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent.

Declaration and information

(3) The declaration and information required by this section must be included in the petition or submitted in a document other than the abstract, specification or drawings.

Abstract

Inclusion of abstract

58 (1) An application for a patent must contain an abstract that contains a concise summary of the disclosure as contained in the description, claims and drawings and, if applicable, must contain the chemical formula that, among all the formulae included in the application, best characterizes the invention.

Technical field

(2) The abstract must specify the technical field to which the invention relates.

Drafting

(3) The abstract must be drafted in a way that allows an understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention.

Scanning tool

(4) The abstract must be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art.

Word limit

(5) The abstract must not contain more than 150 words.

Reference to drawings

(6) In the abstract, a technical feature may be followed by a reference character placed between parentheses if that feature is illustrated in the drawings of the application for a patent.

Amendment or replacement of abstract by Commissioner

(7) If the Commissioner considers that an abstract does not comply with subsections (1) to (6), the Commissioner is authorized to amend or replace the abstract.

Abstract not relevant

(8) An abstract must not be taken into account for the purpose of interpreting the scope of protection sought or obtained.

Description

Contents, manner and order

59 (1) The description must, in the following manner and order,

  1. (a) state the title of the invention, which must be short and precise and must not include a trademark, coined word or personal name;
  2. (b) specify the technical field to which the invention relates;
  3. (c) describe the background art that, as far as is known to the applicant, is important for the understanding, searching and examination of the invention;
  4. (d) describe the invention in terms that allow the understanding of the technical problem, even if not expressly stated as such, and its solution;
  5. (e) briefly describe the figures in the drawings, if any;
  6. (f) set forth at least one mode contemplated by the inventor for carrying out the invention in terms of examples, if appropriate, and with reference to the drawings, if any; and
  7. (g) contain a sequence listing, if required by subsection 61 (1).
Exception

(2) The description may be presented in a different manner or order if, because of the nature of the invention, a different manner or order would result in a better understanding or more economical presentation of the invention.

No incorporation by reference

60 (1) The description must not incorporate by reference a document.

No reference to certain documents

(2) The description must not refer to a document that does not form part of the application for a patent unless the document is available to the public.

Identification of documents

(3) A document referred to in the description must be fully identified.

Sequence Listings

PCT sequence listing standard

61 (1) If a specification discloses a nucleotide sequence or amino acid sequence other than a sequence identified as forming a part of the prior art, the description must contain, in respect of that sequence, a sequence listing in electronic form, and both the electronic form and the content of the sequence listing must comply with the PCT sequence listing standard.

One copy per application

(2) The application for a patent must not contain more than one copy of a particular sequence listing regardless of its form of presentation.

Statement - application originally filed without sequence listing

(3) If an application for a patent originally filed without a sequence listing is amended to include a sequence listing, the applicant must file a statement to the effect that the listing does not go beyond the disclosure in the application as filed.

Statement - application not in compliance

(4) If a sequence listing filed in paper form that does not comply with the PCT sequence listing standard or in an electronic form that does not comply with the PCT sequence listing standard is replaced by a sequence listing in an electronic form that does comply with that standard, the applicant must file a statement to the effect that the replacement listing does not go beyond the disclosure in the application for a patent as originally filed.

Definitions

(5) The following definitions apply in this section.

amino acid sequence
has the meaning assigned by the PCT sequence listing standard. (séquence d'acides aminés)
nucleotide sequence
has the meaning assigned by the PCT sequence listing standard. (séquence de nucléotides)

Drawings

Requirements

62 (1) Subject to subsection (2), the drawings must be in black, sufficiently dense and dark, well-defined lines to permit satisfactory reproduction, must be without colourings and must not include photographs.

Exception

(2) If an invention does not admit of illustration by means of drawings complying with subsection (1) but does admit of illustration by means of photographs, the drawings that must be furnished for the purposes of subsection 27 (5.1) or (5.2) of the Act may be photographs.

Cross-sections

(3) Except in the case of photographs, cross-sections in the drawings must be indicated by hatching that does not impede the reading of the reference characters and lead lines.

Numbers, letters and lead lines

(4) All numbers, letters and lead lines in the drawings must be simple and clear.

Proportionality

(5) Elements of the same figure must be in proportion to each other unless a difference in proportion is necessary for the clarity of the figure.

Font size

(6) Numbers and letters in the drawings must be at least 0.32 cm in height.

Multiple figures

(7) A single page of the drawings may contain several figures.

Figure spread out on multiple pages

(8) If a figure is spread out on two or more pages, the partial figures must be so arranged that the whole figure can be assembled without concealing any part of the partial figures.

Numbering of figures

(9) Figures must be numbered consecutively.

Reference characters

(10) Reference characters not mentioned in the description must not appear in the drawings and vice versa.

Consistent use of reference characters

(11) A reference character used for a particular feature must be the same throughout the abstract, specification and drawings.

No unnecessary text

(12) The drawings must not contain text matter except to the extent necessary to understand the drawings.

Claims

Form

63 The claims must be clear and concise and must be fully supported by the description independently of any document referred to in the description.

Numbering of claims

64 If there is more than one claim, they must be numbered consecutively in Arabic numerals beginning with the number "1".

No references to description or drawings

65 (1) Subject to subsections (2) to (4), claims must not, except if necessary, rely, in respect of the features of the invention, on references to the description or the drawings and, in particular, they must not rely on such references as: "as described in Part... of the description" or "as illustrated in figure... of the drawings".

Reference characters

(2) If the application for a patent contains drawings, the features mentioned in the claims may be followed by the reference characters, placed between parentheses, appearing in the drawings denoting such features.

Sequence identifier

(3) If the description contains a sequence listing, the claims may refer to sequences represented in the sequence listing by the sequence identifier, as defined in the PCT sequence listing standard, and preceded by "SEQ ID NO:".

Deposit of biological material

(4) If the description refers to a deposit of biological material, the claims may refer to that deposit.

Dependent claims

66 (1) Subject to subsection (2), a claim that includes all the features of one or more other claims (in this section referred to as a "dependent claim" ) must refer by number to the other claim or claims and must state the additional features claimed.

Refer to preceding claim

(2) A dependent claim may only refer to a preceding claim or claims.

Refer to claims in the alternative only

(3) A dependent claim that refers to more than one claim must refer to those claims in the alternative only.

Limitations of dependent claims

(4) A dependent claim must be understood as including all the limitations contained in the claim to which it refers or, if the dependent claim refers to more than one claim, any particular alternative of the dependent claim must be understood as including all the limitations contained in the particular claim in respect of which it is considered.

Non-compliant Application for a Patent

Prescribed date—requirements not met

67 For the purposes of subsection 27 (6) of the Act, the prescribed date is the last day of the period of three months after the date of the notice referred to in that subsection.

Notice

68 If, after the filing date, an application for a patent does not comply with the Act or these Rules, the Commissioner may by notice require the applicant to meet those requirements before the end of three months after the date of the notice.

Prescribed date—application fee not paid

69 (1) For the purposes of subsection 27 (7) of the Act, the prescribed date is the last day of the period of two months after the date of the notice referred to in that subsection.

Deemed withdrawal of application

(2) If an applicant fails to comply with a notice given under subsection 27 (7) of the Act, the application for a patent is deemed to be withdrawn.

Reference to Previously Filed Application for a Patent

Prescribed period

70 (1) For the purpose of section 27.01 of the Act, the prescribed period begins on the earliest date on which the Commissioner receives any document or information under subsection 28 (1) of the Act and ends at the earlier of

  1. (a) the later of the end of two months after that date or, if a notice is sent under subsection 28 (2) of the Act, two months after the date of the notice, and
  2. (b) the end of the filing date.
Prescribed requirements

(2) For the purposes of section 27.01 of the Act, the prescribed requirements are that

  1. (a) the statement referred to in subsection 27.01 (1) of the Act must indicate the name of the country or office of filing of the previously filed application for a patent and
    1. (i) if the number of the previously filed application for a patent is known to the applicant or to a patent agent appointed in respect of the application, the number of the previously filed application, or
    2. (ii) if the number of the previously filed application for a patent is not known to the applicant or to the patent agent appointed in respect of the application,
      1. (A) the provisional number for the previously filed application given by the office,
      2. (B) the date on which the previously filed application was sent to the office and be accompanied by a copy of the request part of the previously filed application, or
      3. (C) the reference number given to the previously filed application by the applicant and indicated in the previously filed application, the name and postal address of the applicant, the title of the invention and the date on which the previously filed application was sent to the office; and
  2. (b) the applicant must, before the end of two months after the date of the submission of that statement, either
    1. (i) submit to the Commissioner a copy of the specification and drawings contained in the previously filed application for a patent, or
    2. (ii) make a copy of the specification and drawings contained in the previously filed application for a patent available to the Commissioner from a digital library that is specified on the website of the Canadian Intellectual Property Office as being accepted for that purpose and inform the Commissioner that it is so available.
Non-application of subsection 8 (1)

(3) Subsection 8 (1) does not apply in respect of the time period prescribed in subsections (1) or (2).

Maintenance Fees—Application for Patent

Date

71 For the purposes of subsection 27.1 (1) of the Act, the prescribed dates are

  1. (a) for the fee referred to in subsection 3 (8) of these Rules, the anniversaries of the filing date of the application for a patent set out in item 32 of Schedule 2 but not including, in respect of a PCT national phase application, any anniversary falling before
    1. (i) if the applicant failed to comply with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3), without taking into account subsection 150 (4), the date on which the requirements of paragraph 150 (4) (a) were complied with; and
    2. (ii) in any other case, the date on which the applicant complies with subsections 150 (1) and, if applicable, 150 (3); and
  2. (b) for the fee referred to in subsection 3 (9) of these Rules, the division date of the divisional application.

Filing Date

Prescribed documents and information

72 The documents and information prescribed for the purpose of subsection 28 (1) of the Act are

  1. (a) an explicit or implicit indication that the granting of a Canadian patent is sought;
  2. (b) information allowing the identity of the applicant to be established;
  3. (c) information allowing the Commissioner to contact the applicant; and
  4. (d) a document, in any language, that on the face of it appears to be a description.

Addition to Specification or Addition of Drawing

Notice of missing parts of application

73 (1) If, within two months after the earliest date on which the Commissioner receives any document or information under subsection 28 (1) of the Act, the Commissioner finds that a part of the description appears to be missing from the application for a patent or that the application refers to a drawing that appears to be missing from the application, the Commissioner must by notice inform the applicant accordingly as soon as feasible.

Prescribed period

(2) For the purposes of subsections 28.01 (1) and (2) of the Act, the prescribed period for adding to the specification or drawings is the period that begins on the earliest date on which the Commissioner receives any document or information under subsection 28 (1) of the Act and ends two months after that date or, if the Commissioner notifies the applicant under subsection (1), two months after the date of the notice.

Requirements

(3) For the purposes of paragraph 28.01 (2) (d) of the Act, the prescribed requirements are that the applicant, within the period prescribed under subsection (2),

  1. (a) if the previously regularly filed application for a patent was not filed in or for Canada, either
    1. (i) submit to the Commissioner a copy of that previously regularly filed application, or
    2. (ii) make a copy of that previously regularly filed application available to the Commissioner from a digital library that is specified on the website of the Canadian Intellectual Property Office as being accepted for that purpose and inform the Commissioner that it is so available;
  2. (b) if that previously regularly filed application for a patent is not entirely in English or entirely in French, submit to the Commissioner a translation of any part of the application that is in a language other than English or French; and
  3. (c) submit to the Commissioner an indication as to where, in that previously regularly filed application for a patent or in the translation referred to in paragraph (b), the addition is contained.
Non-application of subsection 8 (1)

(4) Subsection 8 (1) does not apply in respect of the times prescribed in this section.

Exceptions

(5) Section 28.01 of the Act does not apply to a divisional application filed under subsection 36 (2) or (2.1) of the Act or to an application for a patent in respect of which a statement is submitted under section 27.01 of the Act.

Prohibited addition

(6) An applicant must not, under section 28.01 of the Act, add a claim from a previously filed application to the specification contained in their application for a patent.

Requests for Priority

Requirements

74 (1) For the purposes of subsection 28.4 (2) of the Act, the request for priority must be made in the petition of the pending application for a patent or in a document other than the abstract, specification or drawings, before the earlier of

  1. (a) the later of the end of
    1. (i) sixteen months after the earliest filing date of the previously regularly filed applications for a patent on which the request is based, and
    2. (ii) four months after the filing date of the pending application, and
  2. (b) if applicable, the day on which the applicant submits their approval, under subsection 10 (2) of the Act, that the application for a patent be open to public inspection before the end of the confidentiality period, unless that approval is withdrawn in time to permit the Commissioner to stop technical preparations to open the application to public inspection.
Time to submit information

(2) The information required under subsection 28.4 (2) of the Act must be submitted to the Commissioner before the end of the time prescribed in subsection (1).

Requirement

(3) A request for priority in respect of an application for a patent (the "pending application" ) may be based on a previously regularly filed application only if the filing date of the pending application is, or under subsection 28.4 (6) of the Act is deemed to be, within 12 months after the filing date of the previously regularly filed application.

Corrections—error in filing date

(4) An error in a filing date submitted under subsection 28.4 (2) of the Act may be corrected on request submitted before the earlier of

  1. (a) the end of the time prescribed in subsection (1), as determined using the corrected filing date, and
  2. (b) the end of the time prescribed in subsection (1), as determined using the uncorrected filing date.
Corrections—error in name of country or office

(5) Subject to subsection (6), an error in the name of a country or office of filing submitted under subsection 28.4 (2) of the Act may be corrected on request submitted before the day on which the pending application for a patent is open to inspection under section 10 of the Act.

Exception

(6) An error in the name of the country or office of filing submitted under subsection 28.4 (2) of the Act may be corrected on request submitted on or before the date on which the final fee prescribed in subsection 84 (1), (5), (9) or (11) is paid, or, if the final fee is refunded, on or before the date on which the final fee is paid again if, on the day on which the pending application for a patent is open to inspection under section 10 of the Act, it would, from the application and documents filed in connection with the application, have been obvious that the name of another country or office of filing was intended by the applicant.

Correction in number of application

(7) An error in a number of an application for a patent submitted under subsection 28.4 (2) of the Act may be corrected on request submitted on or before the date on which the final fee prescribed in subsection 84 (1), (5), (9) or (11) is paid, or, if the final fee is refunded, on or before the date on which the final fee is paid again.

Withdrawal of request for priority

(8) If a request for priority is withdrawn with respect to a particular previously regularly filed application for a patent before the end of the sixteen-month period after the date of filing of that application, the time prescribed in subsection (1) must be computed as if the request for priority had never been made on the basis of that application.

Non-application of subsection 8 (1)

(9) Subsection 8 (1) does not apply in respect of the time period prescribed in subsection (1).

Requirements

75 (1) If an applicant requests priority in respect of a pending application for a patent on the basis of one or more previously regularly filed applications for a patent—other than an application for a patent previously regularly filed in or for Canada—the applicant must, before the end of the day referred to in subsection (2), with respect to each previously regularly filed application,

  1. (a) submit to the Commissioner a copy of the previously regularly filed application certified as correct by the patent office with which it was filed and a certificate from that office showing the filing date; or
  2. (b) make a copy of the previously regularly filed application available to the Commissioner from a digital library that is specified on the website of the Canadian Intellectual Property Office as being accepted for that purpose and inform the Commissioner that it is so available.
Date

(2) For the purposes of subsection (1), the day is the later of

  1. (a) the day that is sixteen months after the earliest filing date of the previously regularly filed applications for a patent on which the request for priority is based,
  2. (b) the day that is four months after the filing date of the pending application for a patent, and
  3. (c) if the pending application for a patent is a PCT national phase application, the day on which the applicant complies with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3), without taking into account subsection 150 (4), or the day on which the applicant complies with the requirements of paragraph 150 (4) (a).
Notice

(3) If the applicant does not comply with subsection (1), the Commissioner must by notice require the applicant to comply with the requirements prescribed in paragraph (1) (a) or (b) before the end of two months after the date of the notice.

Deemed compliance

(4) If the applicant complies with the requirements prescribed in paragraph (1) (a) or (b) after the period prescribed in subsection (1) but before a notice is sent under subsection (3) or, if a notice is sent, before the end of two months after the date of the notice, the applicant is deemed to have complied with subsection (1).

Non-compliance

(5) If the applicant does not comply with the requirements prescribed in paragraph (1) (a) or (b) in respect of a particular previously regularly filed application for a patent before the end of two months after the date of the notice referred to in subsection (3), the request for priority is deemed not to have been made on the basis of that previously regularly filed application unless

  1. (a) not later than two months before the end of the period prescribed in subsection (1) the applicant requests the patent office with which the previously regularly filed application was filed to provide the applicant with the copy and certificate referred to in paragraph (1) (a); and
  2. (b) before the end of two months after the date of the notice referred to in subsection (3) the applicant submits to the Commissioner a request that the Commissioner restore the right of priority on the basis of that previously regularly filed application and a statement indicating the patent office to which the request referred to in paragraph (a) was made and the date of that request.
Deemed compliance

(6) If the conditions set out in paragraphs (5) (a) and (b) are met in respect of a particular previously regularly filed application for a patent the applicant is deemed to have complied with subsection (1) in respect of that previously regularly filed application.

Submission of copy and certificate

(7) If the conditions set out in paragraphs (5) (a) and (b) are met in respect of a particular previously regularly filed application for a patent and if the patent office with which that previously regularly filed application was filed provides the applicant—or, if a patent has issued on the pending application, the patentee—with the copy and certificate referred to in paragraph (1) (a), the applicant or patentee must submit the copy and certificate to the Commissioner within two months after the date on which they were provided to the applicant or patentee.

Contravention of subsection (7)

(8) If the applicant or patentee contravenes subsection (7) in respect of a particular previously regularly filed application for a patent, the request for priority is deemed not to have been made on the basis of that previously regularly filed application.

Deemed compliance—divisional application

(9) The applicant of a divisional application is deemed to have complied with subsection (1) in respect of a particular previously regularly filed application for a patent if, on or before the division date of the divisional application, the applicant of the original application is deemed to have complied with subsection (1) in respect of that previously regularly filed application.

Deemed non-compliance—divisional application

(10) A request for priority in respect of a divisional application is deemed not to have been made on the basis of a particular previously regularly filed application for a patent if, in respect of the original application,

  1. (a) a request for priority is, on or before the division date of the divisional application, deemed under subsection (5) not to have been made on the basis of that previously regularly filed application; or
  2. (b) a request for priority is deemed under subsection (8) not to have been made on the basis of that previously regularly filed application.
Exception

(11) Subsections (1) to (10) do not apply if the pending application for a patent is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application and if the requirements of Rule 17.1 (a), (b) or (b-bis) of the Regulations under the PCT are complied with in respect of the international application on which the PCT national phase application is based.

Withdrawal of request for priority

76 (1) For the purposes of subsection 28.4 (3) of the Act, a request for priority may be withdrawn by filing a request with the Commissioner.

Effective date

(2) The effective date of the withdrawal of a request for priority is the date the request for withdrawal is received by the Commissioner.

Notice to submit translation

77 (1) If a previously regularly filed application for a patent in respect of which a request for priority in respect of a pending application for a patent is based is not in English or French and if, for the purposes of examining the pending application, an examiner takes into account the previously regularly filed application, the examiner may by notice require the applicant of the pending application to submit to the Commissioner a translation into English or French of the whole or a specified part of the previously regularly filed application before the end of four months after the date of the notice.

Translation not accurate

(2) If the examiner has reasonable grounds to believe that a translation submitted under subsection (1) is not accurate, the examiner may by notice request the applicant of the pending application for a patent to submit to the Commissioner before the end of four months after the date of the notice

  1. (a) a statement by a translator to the effect that, to the best of the translator's knowledge, the translation is accurate; or
  2. (b) a new translation into English or French together with a statement by its translator to the effect that, to the best of the translator's knowledge, the new translation is accurate.
Non-compliance

(3) If the applicant of the pending application for a patent does not comply with a notice under subsection (1) or (2) in respect of a previously regularly filed application for a patent, the request for priority is deemed not to have been made on the basis of that previously regularly filed application.

Restoration of Priority

Prescribed time

78 (1) For the purposes of paragraph 28.4 (6) (b) of the Act, the prescribed time is two months after the filing date of the pending application or the co-pending application, as the case may be.

Requirements

(2) For the purposes of subparagraph 28.4 (6) (b) (iii) of the Act, the prescribed requirements are that the applicant

  1. (a) makes a request for priority in the petition or in a document other than the abstract, specification or drawings; and
  2. (b) submits to the Commissioner the filing date and the country or office of filing of the previously regularly filed application for a patent.
Non-application of subsection 8 (1)

(3) Subsection 8 (1) does not apply in respect of the time specified in subsection (1).

Divisional application—within 12 months

79 Paragraph 28.4 (6) (b) of the Act does not apply in respect of a divisional application if the filing date of the original application is deemed under subsection 28.4 (6) of the Act to be within 12 months after the filing date of the previously regularly filed application for a patent.

Requests for Examination

Content

80 For the purposes of subsection 35 (1) of the Act, a request for examination of an application for a patent must contain the following information:

  1. (a) the name and postal address of the person making the request;
  2. (b) if the person making the request is not the applicant, the name of the applicant; and
  3. (c) the application number or other information sufficient to identify the application.

Time—subsection 35 (2) of the Act

81 (1) For the purposes of subsection 35 (2) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before

  1. (a) in respect of an application for a patent other than a PCT national phase application or a divisional application, the end of three years after the filing date of the application;
  2. (b) in respect of a PCT national phase application, the later of the end of
    1. (i) three years after the filing date of the application, and
    2. (ii) if applicable, the day on which the applicant complies with the requirements of paragraph 150 (4) (a); and
  3. (c) in respect of a divisional application, the later of the end of
    1. (i) the time that is applicable under this subsection in respect of the original application, and
    2. (ii) three months after the division date of the divisional application.
Time—subsection 35 (5) of the Act

(2) For the purposes of subsection 35 (5) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before the end of three months after the date of the notice.

Non-application of subsection 8 (1)

(3) Subsection 8 (1) does not apply in respect of the times prescribed in subsections (1) or (2).

Examination

Advanced examination

82 (1) In respect of an application for a patent that is open to public inspection under section 10 of the Act, the Commissioner must advance out of its routine order the examination of the application on the request of

  1. (a) any person, on payment of the fee set out in item 5 of Schedule 2, if failure to advance the examination of the application is likely to prejudice that person's rights; or
  2. (b) the applicant, if the applicant files with the Commissioner a declaration indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.
Exception

(2) In respect of a request made under subsection (1) by an applicant, the Commissioner must not advance the examination of the application for a patent out of its routine order or, if the examination is advanced, must return it to its routine order if

  1. (a) the Commissioner has extended, under subsection 8 (1) of these Rules, the time fixed for doing anything in respect of the application;
  2. (b) the application is deemed to be abandoned, whether or not it is reinstated; or
  3. (c) a notice of allowance sent in respect of the application is deemed, under subsection 84 (16), never to have been sent.

Notice regarding invention in foreign application

83 (1) If an examiner examining an application for a patent has reasonable grounds to believe that an application for a patent disclosing the same invention has been filed, in or for any country other than Canada, by an inventor of that invention or a person claiming through them, the examiner may by notice requisition the applicant

  1. (a) to submit any of the following information or, if the information is not known to the applicant, to so indicate and state the reasons why it is not known:
    1. (i) an identification of any prior art cited in respect of the foreign application for a patent,
    2. (ii) the application number of the foreign application for a patent, the filing date and, if granted, the patent number, and
    3. (iii) particulars of opposition, re-examination, impeachment or similar proceedings;
  2. (b) to submit a copy of any related document or, if the document is not available to the applicant, to so indicate and state the reasons why it is not available; and
  3. (c) if a document, or a part of the document, whose submission is requisitioned under paragraph (b) is not in either English or French and is available to the applicant, to submit a translation of the document, or the part of the document, into English or French.
Notice regarding invention previously published or patented

(2) If an examiner has reasonable grounds to believe that an invention disclosed in an application for a patent was, before the filing date of the application, published or the subject of a patent, the examiner may by notice requisition the applicant to identify the first publication of or patent for that invention or, if that information is not known to the applicant, to so indicate and to state the reasons why it is not known.

Notice—application found allowable by examiner

84 (1) If an examiner has reasonable grounds to believe that an application for a patent complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the application has been found allowable and require the payment of the final fee set out in item 7 of Schedule 2 within four months after the date of the notice.

Notice of defects

(2) If an examiner has reasonable grounds to believe that an application for a patent does not comply with the Act or these Rules, the examiner must by notice inform the applicant of the application's defects and requisition the applicant to amend the application in order to comply, or to submit arguments as to why the application does comply, within four months after the date of the notice.

Rejection for defects

(3) If an applicant replies in good faith to the requisition within the time provided but the examiner has reasonable grounds to believe that the application for a patent still does not comply with the Act or these Rules in respect of one or more of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.

Final Action

(4) If an examiner rejects an application for a patent, the examiner must send a notice bearing the notation "Final Action" or "Décision finale" , indicating the outstanding defects and requisitioning the applicant to amend the application in order to comply with the Act and these Rules or to submit arguments as to why the application does comply, within four months after the date of the notice.

Notice—application found allowable after Final Action

(5) If an applicant replies in good faith to the requisition on or before the date set out in subsection (7), the examiner has reasonable grounds to believe that the application for a patent complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn, the application has been found allowable and require the payment of the final fee set out in item 7 of Schedule 2 before the end of four months after the date of the notice.

Rejection not withdrawn after Final Action

(6) If an applicant replies in good faith to a requisition under subsection (4) on or before the date set out in subsection (7) but, after that date, the examiner still has reasonable grounds to believe that the application for a patent does not comply with the Act and these Rules,

  1. (a) the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;
  2. (b) any amendments made during the period beginning on the date of the Final Action notice and ending on the date set out in subsection (7) are deemed not to have been made; and
  3. (c) the rejected application must be reviewed by the Commissioner.
Date

(7) For the purposes of subsections (5) and (6) the date is four months after the date of the Final Action notice or, if the application for a patent is deemed to be abandoned under paragraph 73 (1) (a) of the Act for failure to reply in good faith to a requisition under subsection (4), the day on which the conditions for reinstatement set out in subsection 73 (3) of the Act are met in respect of that abandonment.

Additional defects

(8) If, during the review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the Final Action notice, the Commissioner must by notice inform the applicant of those defects and invite the applicant to submit arguments as to why the application does comply within the time specified by the Commissioner.

Notice—rejection withdrawn

(9) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found allowable and require the payment of the final fee set out in item 7 of Schedule 2 within four months after the date of the notice.

Notice requiring specific amendments

(10) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules and specific amendments are necessary to make the application allowable, the Commissioner must by notice inform the applicant that those specific amendments must be made within three months after the date of the notice.

Notice of allowance after specific amendments

(11) If the applicant complies with the notice referred to in subsection (10), the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found allowable and require the payment of the final fee set out in item 7 of Schedule 2 within four months after the date of the notice.

Right to hearing

(12) Before refusing an application for a patent under section 40 of the Act, the Commissioner must give the applicant an opportunity to be heard.

Withdrawal of notice of allowance

(13) If, after a notice of allowance is sent under subsection (1), (5), (9) or (11) but before a patent is issued, the Commissioner has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules, the Commissioner must

  1. (a) by notice, inform the applicant of that fact and that the notice of allowance is withdrawn; and
  2. (b) if the final fee has been paid, refund it.
Exception

(14) Subsection (13) does not apply in respect of an application for a patent that is deemed to be abandoned, unless the application is reinstated.

Consequence of notice sent under subsection (13)

(15) If a notice is sent to the applicant under subsection (13),

  1. (a) the notice of allowance that was sent under subsection (1), (5), (9) or (11) is deemed never to have been sent; and
  2. (b) the application for a patent is subject to further examination.
Notice of allowance deemed never to have been sent

(16) A notice of allowance under subsection (1), (5) or (9) is deemed never to have been sent and the application for a patent is subject to further examination if, within four months after the day on which the Commissioner sends the notice to the applicant but before the day on which the final fee is paid, the applicant pays the fee set out in item 6 of Schedule 2 and requests that the notice of allowance be withdrawn and that the application be subject to further examination.

Non-application of subsection 8 (1)

(17) Subsection 8 (1) does not apply in respect of the times prescribed in subsections (1), (5), (9), (11) or (16).

Divisional Applications

Definition of one invention

85 For the purposes of section 36 of the Act, one invention includes a group of inventions so linked as to form a single general inventive concept.

Requirements

86 An application for a patent is a divisional application if on its division date

  1. (a) the application contains a petition that contains a statement to the effect that the application results from the division of an original application filed in Canada and the petition identifies that original application;
  2. (b) the applicant is the same applicant as for the original application; and
  3. (c) the application contains one or more claims.

Translation

87 If an applicant is required to submit a translation under subsection 21 (2) or (3), an invention disclosed in the application for a patent must not be made the subject of a divisional application unless the applicant has submitted the translation.

Time for filing if original application refused

88 If an application for a patent is refused by the Commissioner under section 40 of the Act, the time for filing a divisional application resulting from the division of that application is any time before

  1. (a) if an appeal is not taken under section 41 of the Act, the end of the day that falls six months after notice as provided for in section 40 of the Act is mailed; or
  2. (b) if an appeal is taken under section 41 of the Act, the later of the following times, or if a patent issues on the original application before that time, before the issue of the patent
    1. (i) the end of the day referred to in paragraph (a), and
    2. (ii) the end of two months after the date on which final judgment is rendered in the appeal or, if the appeal is discontinued, the end of two months after the date on which the appeal was discontinued.

Clarification

89 For greater certainty, the specification and drawings contained in a divisional application on its division date must not contain matter, unless it is admitted in the specification that the matter is prior art with respect to the application, that

  1. (a) is not contained in the original application on its filing date, or if the original application is itself a divisional application, on the division date of this latter application; or
  2. (b) may not be or could not have been added, under section 38.2 of the Act, to the specification and drawings contained in the original application.

Amendment of claims

90 An original application must not be amended to include a claim for an invention that has at any time been the subject of a divisional application that results from the division of that original application.

Actions deemed taken in respect of divisional application

91 If, on or before the division date of a divisional application, any of the following actions has been taken in respect of the original application, the same action is deemed to have been taken, in respect of the divisional application, on the date the action was taken in respect of the original application:

  1. (a) a request for priority has been made and has not been withdrawn;
  2. (b) information required under subsection 28.4 (2) of the Act has been submitted to the Commissioner in respect of a request for priority;
  3. (c) a copy or a translation of a previously regularly filed application for a patent, or a certificate showing its filing date, has been submitted to the Commissioner;
  4. (d) a copy of a previously regularly filed application for a patent has been made available to the Commissioner from a digital library;
  5. (e) information required under paragraph 92 (1) (b) in respect of a deposit of biological material has been submitted to the Commissioner; or
  6. (f) a request has been submitted under subsection 94 (1).

Deposits of Biological Material

Conditions

92 (1) For the purpose of subsection 38.1 (1) of the Act, the following conditions apply to a deposit of biological material:

  1. (a) the deposit of biological material must be made by the applicant or their predecessor in title with an international depositary authority on or before the filing date of the application for a patent;
  2. (b) the applicant must inform the Commissioner of the name of the international depositary authority and the accession number given by the international depositary authority to the deposit before the application for a patent is open to public inspection under section 10 of the Act;
  3. (c) the information required by paragraph (b) must be included in the description;
  4. (d) in the case where a sample of the biological material is transferred to a substitute authority under Rule 5 of the Regulations under the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by the substitute authority before the end of the three-month period after the date of issuance of a receipt by the substitute authority;
  5. (e) in the case where the depositor is notified under Article 4 of the Budapest Treaty of the inability of the international depositary authority to furnish samples, a new deposit must be made in accordance with that Article; and
  6. (f) in the case where a new deposit of the biological material is made with another international depositary authority under Article 4 (1) (b) (i) or (ii) of the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by that authority before the end of the three-month period after the date of issuance of a receipt by that authority.
Non-application of subsection 8 (1)

(2) Subsection 8 (1) does not apply to the time set out in paragraph (1) (b).

Description must include date of deposit

93 If a specification refers to a deposit of biological material and the deposit is taken into consideration by an examiner in determining whether the specification complies with subsection 27 (3) of the Act and the date of that deposit is not already included in the description, the examiner may by notice requisition the applicant to amend the description to include the date of that deposit.

Request to furnish sample to independent expert

94 (1) If the specification of an application for a patent refers to a deposit of biological material, the applicant may, before the application is open to public inspection under section 10 of the Act, submit to the Commissioner a request that, until a patent has been issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, the Commissioner only authorize in respect of that application the furnishing of a sample of the deposited biological material to an independent expert nominated under section 95.

Non-application of subsection 8 (1)

(2) Subsection 8 (1) does not apply to the time to submit the request set out in subsection (1).

Nomination of independent expert

95 (1) If an applicant submits a request under section 94, the Commissioner must, upon the request of any person and with the agreement of the applicant, nominate an independent expert.

No agreement on nomination of independent expert

(2) If the Commissioner and the applicant cannot agree on the nomination of an independent expert, the request under section 94 is deemed never to have been filed.

Form for making request

96 (1) The Commissioner must publish on the website of the Canadian Intellectual Property Office a form for making a request for the furnishing of a sample of deposited biological material, the contents of which must be the same as the contents of the form referred to in Rule 11.3 (a) of the Regulations under the Budapest Treaty.

Certification

(2) Subject to section 97, if a specification in a Canadian patent or in an application for a patent filed in Canada that is open to public inspection under section 10 of the Act refers to a deposit of biological material by the applicant, and if a person submits to the Commissioner a request made on the form referred to in subsection (1), the Commissioner must make the certification referred to in Rule 11.3 (a) of the Regulations under the Budapest Treaty in respect of that person if

  1. (a) a patent has issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement; or
  2. (b) the Commissioner has received an undertaking by that person
    1. (i) not to make any sample of biological material furnished by the international depositary authority or any material derived from such sample available to any other person before either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, and
    2. (ii) to use the sample of biological material furnished by the international depositary authority and any material derived from such sample only for the purpose of experiments that relate to the subject-matter of the application until either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement.
Copy of request and certification

(3) Except if subsection 97 (2) applies, if the Commissioner makes a certification under subsection (2), the Commissioner must send a copy of the request together with the certification to the person who submitted the request.

Person authorized to submit request

97 (1) If an applicant submits a request under section 94, until a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, a request under section 96 may only be submitted by an independent expert nominated under section 95.

Copy of request and certification

(2) If the Commissioner makes a certification under subsection 96 (2) in respect of an independent expert nominated by the Commissioner, the Commissioner must send a copy of the request together with the certification to the applicant and to the person who requested the nomination of the independent expert.

Amendments of Specification and Drawings

Before the submission of translation

98 If an applicant is required to submit a translation under subsections 21 (2) or (3), the specification and drawings contained in the application for a patent must not be amended before the applicant submits the translation.

After notice of allowance

99 (1) Subject to subsection (2), the specification and drawings contained in an application for a patent must not be amended after a notice of allowance is sent under subsection 84 (1), (5), (9) or (11).

Exception

(2) The specification and drawings may be amended not later than the date on which the final fee prescribed in subsection 84 (1), (5), (9) or (11) is paid or, if the final fee is refunded, on or before the date on which the final fee is paid again if, from the specification and drawings contained in the application for a patent on the day on which the notice of allowance was sent, it is obvious that something else was intended than what appears in the specification and drawings and that nothing else could have been intended than the proposed amendment.

After rejection

100 If an application for a patent is rejected by an examiner under subsection 84 (3), the specification and drawings contained in the application must not be amended after the end of the date prescribed in subsection 84 (7), except

  1. (a) if a notice is sent to the applicant under subsection 84 (5), (9) or (11) informing the applicant that the rejection is withdrawn;
  2. (b) to make specific amendments required in a notice under subsection 84 (10);
  3. (c) if an Order of the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendment.

Documents and information—divisional application

101 (1) For the purpose of paragraph 38.2 (3.1) (b) of the Act, the prescribed documents and information are

  1. (a) an explicit or implicit indication that the granting of a Canadian patent is sought;
  2. (b) information allowing the identity of the applicant to be established;
  3. (c) information allowing the Commissioner to contact the applicant; and
  4. (d) a document that on the face of it appears to be a description.
Division date

(2) The division date of an application for a patent is the date on which the Commissioner receives the documents and information referred to in subsection (1) or, if they are received on different dates, the latest of those dates.

Manner

102 An amendment to the specification or drawings contained in an application for a patent must be made by submitting a new page in place of the page altered by the amendment and a statement explaining the purpose of the amendment and identifying the differences between the new page and the replaced page.

Corrections

Error in identification of applicant

103 An error in the identification of the applicant in an application for a patent other than a PCT national phase application arising from inadvertence, accident or mistake without any fraudulent or deceptive intention may be corrected on the request of the person who submitted the application to the Commissioner if the request contains a statement to the effect that the error arose from inadvertence, accident or mistake without any fraudulent or deceptive intention and the request is made not later than the earlier of

  1. (a) the day on which the application becomes open to public inspection under section 10 of the Act, and
  2. (b) the day on which the Commissioner records a transfer of the application under section 49 of the Act.

Error in identification of inventor

104 An error in the identification of an inventor in an application for a patent may be corrected on the request of the applicant if the request is submitted before the day on which a notice of allowance is sent under subsection 84 (1), (5), (9) or (11).

Error in name

105 An error in the name of an applicant or an inventor in an application for a patent may be corrected on the request of the applicant if the request is submitted before the day on which a notice of allowance is sent under subsection 84 (1), (5), (9) or (11) if the correction does not change their identity.

Obvious error made by Commissioner

106 (1) The Commissioner may, within six months after the day on which a patent is issued under the Act, correct an error made by the Commissioner in the patent or in the specification or drawings referenced in the patent if, from the documents relating to the patent that were in the possession of the Patent Office on that day, it is obvious both that something else was intended than what appears in the applicable patent, specification or drawings, and that nothing else could have been intended than the correction.

Date of correction

(2) A correction under subsection (1) is deemed to have been made on the day on which the patent was issued.

Obvious error made by re-examination board

107 (1) The Commissioner may, within six months after the day on which a certificate is issued under section 48.4 of the Act, correct an error made by the re-examination board in the certificate if, from the documents relating to the patent that were in the possession of the Patent Office on that day, it is obvious both that something else was intended than what appears in the certificate and that nothing else could have been intended than the correction.

Date of correction

(2) A correction under subsection (1) is deemed to have been made on the day on which the certificate was issued.

Correction on request of patentee

108 (1) On the request of the patentee in accordance with subsection (2) within four months after the day on which a patent is issued under the Act and upon payment of the fee set out in item 22 of Schedule 2, the Commissioner must correct

  1. (a) an error in the name of the patentee or an inventor, if the correction does not change the identity of the patentee or inventor; or
  2. (b) an error in the specification or drawings referenced in the patent, if from the specification or drawings referenced in the patent at the time the patent was issued it would have been obvious to a person skilled in the art or science to which the patent pertains that something else was intended than what appears in the specification or drawings and that nothing else could have been intended than the correction.
Contents of request

(2) A request under subsection (1) must contain

  1. (a) an indication to the effect that a correction of an error is requested;
  2. (b) the number of the patent concerned;
  3. (c) the correction to be made; and
  4. (d) new pages to replace the pages altered by the correction, if the error is in the specification or drawings and the error was not made by the Commissioner.
Notice

(3) If a request under subsection (1) does not comply with subsection (2) or if the fee referred to in subsection (1) is not paid, the Commissioner must by notice require the patentee, as applicable, to submit the elements referred to in subsection (2) or pay the fee referred to in subsection (1) before the end of three months after the date of the notice.

Request deemed never to have been made

(4) If the patentee does not comply with the notice before the end of three months after the date of the notice, the request under subsection (1) is deemed never to have been made.

Date of correction

(5) A correction under subsection (1) is deemed to have been made on the day on which the patent was issued.

Certificate

109 If the Commissioner corrects an error under section 106, 107 or 108, the Commissioner must, under the seal of the Patent Office, issue a certificate setting out the correction.

Non-application of subsection 8 (1)

110 Subsection 8 (1) does not apply in respect of the times specified in subsections 106 (1), 107 (1) or 108 (1) or (3).

Maintaining Rights Accorded by a Patent

Date

111 For the purposes of subsection 46 (1) of the Act, the prescribed dates are

  1. (a) in respect of a reissued patent, the anniversaries of the filing date of the original application that occur on or after the date on which the original patent was issued, set out in item 32 of Schedule 2; and
  2. (b) in respect of any other patent, the anniversaries of the filing date of the application for a patent that occur on or after the date on which the patent was issued, set out in item 32 of Schedule 2.

Time: paragraph 46 (5) (a) of the Act

112 For the purposes of paragraph 46 (5) (a) of the Act, the prescribed time to do the actions referred to in that paragraph is any time before the end of twelve months after the end of the six month period referred to in subsection 46 (4) of the Act.

Additional prescribed fee

113 For the purpose of subparagraph 46 (5) (a) (iii) of the Act, the additional prescribed fee is the fee set out in item 34 of Schedule 2.

Non-application of subsection 8 (1)

114 Subsection 8 (1) does not apply in respect of the times set out in section 112.

Reissue

Form

115 An application for reissue under section 47 of the Act must be in Form 1 of Schedule 1.

Fee

116 For the purpose of subsection 47 (1) of the Act, the prescribed fee is the fee set out in item 16 of Schedule 2.

Disclaimer

Form

117 A disclaimer under section 48 of the Act must be in Form 2 of Schedule 1.

Fee

118 For the purpose of subsection 48 (1) of the Act, the prescribed fee is the fee set out in item 17 of Schedule 2.

Re-examination

Duplicate

119 A request for re-examination and the prior art filed under section 48.1 of the Act must be filed in duplicate, except if filed by the patentee or if filed in electronic form.

Numbering of claims

120 An amended claim or a new claim proposed by a patentee under subsection 48.3 (2) of the Act must be numbered consecutively in Arabic numerals beginning with the number immediately following the number of the last claim in the patent.

Registration of Documents and Recording of Transfers

Related documents

121 The Commissioner must, on request and on payment of the fee set out in item 23 of Schedule 2, register in the Patent Office a document relating to a patent or an application for a patent.

Name change

122 If an applicant or a patentee changes their name, the Commissioner must record the change in the name on the request of the applicant or patentee and on payment of the fee set out in item 24 of Schedule 2.

Request to record transfer

123 A request to record a transfer under subsection 49 (2) or (3) of the Act must contain the name and postal address of the transferee and include the fee set out in item 25 of Schedule 2.

Person to whom patent granted

124 The Commissioner must not grant a patent to a transferee of an application for a patent unless the request to record the transfer under subsection 49 (2) of the Act and, if applicable, the evidence referred to in that subsection, is submitted to the Commissioner on or before the date on which the final fee prescribed in subsection 84 (1), (5), (9) or (11) is paid, or, if the final fee is refunded, on or before the date on which the final fee is paid again.

Third-party Rights

Period

125 For the purposes of subsections 55.11 (2) and (3) of the Act, the prescribed periods are

  1. (a) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11 (1) (a) (i) of the Act, any period beginning six months after a date on which the prescribed fee referred to in subsection 27.1 (1) of the Act was due under that subsection but was not paid, without taking into account subsection 27.1 (3) of the Act, and ending
    1. (i) if the application was deemed to be abandoned in respect of that non-payment under paragraph 73 (1) (c) of the Act, on the earlier of
      1. (A) the day on which the conditions for reinstatement set out in subsection 73 (3) of the Act are met in respect of that abandonment, and
      2. (B) the day on which the patent was granted, or
    2. (ii) if the application was not deemed to be abandoned under paragraph 73 (1) (c) of the Act, on the earlier of
      1. (A) the day on which that prescribed fee and the late fee referred to in subsection 27.1 (2) of the Act were paid—or, if they were paid on different days, the last day—without taking into account subsection 27.1 (3) of the Act, and
      2. (B) the day on which the patent was granted;
  2. (b) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11 (1) (a) (ii) of the Act, the period six months after the end of the prescribed time referred to in subsection 35 (2) of the Act and ending
    1. (i) if the application was deemed to be abandoned under paragraph 73 (1) (d) of the Act, on the earlier of
      1. (A) the day on which the conditions for reinstatement set out in subsection 73 (3) of the Act are met in respect of that abandonment, and
      2. (B) the day on which the patent was granted, or
    2. (ii) if the application was not deemed to be abandoned under paragraph 73 (1) (d) of the Act, on the earlier of
      1. (A) the day on which the request referred to in subsection 35 (3) of the Act was made and the prescribed fee and late fee referred to in that subsection were paid–or, if the request was made and the fees paid on different days, the last day—without taking into account subsection 35 (4) of the Act; and
      2. (B) the day on which the patent was granted;
  3. (c) in the case of a patent that was granted on the basis of a divisional application referred to in paragraph 55.11 (1) (b) of the Act, any period that applies under this section in respect of the original patent or that would apply to that patent if it were granted, but excluding any part of that period that is after the division date of the divisional application; and
  4. (d) in the case of a patent referred to in paragraph 55.11 (1) (c) of the Act, any period beginning six months after a date on which the prescribed fee referred to in subsection 46 (1) of the Act was due under that subsection but was not paid, without taking into account subsection 46 (3) of the Act, and ending
    1. (i) if, without taking into account subsection 46 (5) of the Act, the term limited for the duration of the patent was deemed to have expired under subsection 46 (4) of the Act in respect of that non-payment, on the day on which that subsection is deemed never to have produced its effects under subsection 46 (5) of the Act, or
    2. (ii) if, without taking into account subsection 46 (5) of the Act, the term limited for the duration of the patent was not deemed to have expired under subsection 46 (4) of the Act in respect of that non-payment, on the day on which that particular prescribed fee and the late fee referred to in subsection 46 (2) of the Act were paid or, if they were paid on different days, the last day, without taking into account subsection 46 (3) of the Act.

Abuse of Rights Under Patents

Application fee

126 (1) An applicant under section 65 of the Act must pay the fee set out in item 19 of Schedule 2.

Fee for advertisement

(2) If the applicant requests advertisement of the application on the website of the Canadian Intellectual Property Office, they must pay the fee set out in item 20 of Schedule 2.

Time to deliver counter statement

127 For the purposes of subsection 69 (1) of the Act, the prescribed time is the four-month period after the latest of the following dates:

  1. (a) in respect of a person or patentee that is served with copies of the application and the statutory declarations referred to in subsection 68 (1) of the Act, the date on which that person or patentee is served or, if the copies of the application and the statutory declarations are served on that person or patentee on different dates, the later of those dates,
  2. (b) the date on which the application is advertised in the Canada Gazette, and
  3. (c) the date on which the application is advertised on the website of the Canadian Intellectual Property Office.

Abandonment and Reinstatement

Time to reply

128 (1) For the purpose of paragraph 73 (1) (a) of the Act, the prescribed time is the four-month period after the date of the notice of the requisition made by the examiner.

Limit to time extensions under subsection 8 (1)

(2) The Commissioner is not authorized to extend under subsection 8 (1) the time prescribed by subsection (1) beyond six months after the date of the notice.

Application deemed abandoned

129 For the purposes of subsection 73 (2) of the Act, an application for a patent is deemed to be abandoned if

  1. (a) the applicant does not comply with a notice of the Commissioner referred to in subsection 21 (4) before the end of two months after the date of the notice;
  2. (b) a notice is sent under section 38 and the requirements are not complied with before the end of three months after the date of the notice;
  3. (c) the applicant does not reply in good faith to a request of the Commissioner for further drawings under subsection 27 (5.2) of the Act before the end of three months after the date of the request;
  4. (d) the applicant does not reply in good faith to a notice of the Commissioner referred to in section 68 before the end of three months after the date of the notice; or
  5. (e) the applicant does not pay the final fee set out in item 7 of Schedule 2 before the end of four months after the day on which a notice of allowance is sent under subsection 84 (1), (5), (9) or (11).

Prescribed time: request for reinstatement

130 (1) For the purposes of paragraph 73 (3) (a) of the Act, the prescribed time begins on the day on which the application for a patent is deemed to be abandoned and ends

  1. (a) if an application for a patent is deemed to be abandoned for failure to take an action under paragraph 73 (1) (a), (b), (d) or (e) or subsection 73 (2) of the Act, 12 months after the date on which the application was deemed to be abandoned as a result of that failure; and
  2. (b) if an application for a patent is deemed to be abandoned for failure to take the action referred to in paragraph 73 (1) (c) of the Act in respect of a maintenance fee payable under subsection 27.1 (1) of the Act, 12 months after the end of six months after the applicable prescribed date for payment of that maintenance fee.
Request for reinstatement in respect of multiple failures

(2) A request for reinstatement under subsection 73 (3) of the Act may be in respect of more than one failure to take an action if the request is made before the earliest of the applicable prescribed times.

Failure to pay certain fees

(3) If an application for a patent is deemed to be abandoned for failure to pay a fee referred to in subsection 3 (3), (5), (8) or (9), the action that should have been taken in order to avoid the abandonment for the failure to pay that fee is that the applicant must, before the end of the time prescribed by subsection (1),

  1. (a) pay the applicable standard fee; or
  2. (b) if the small entity status condition set out in subsection 4 (1) is met, file a small entity declaration in respect of the application in accordance with subsection 5 (1) and pay the applicable small entity fee.
Non-application of subsection 8 (1)

(4) Subsection 8 (1) does not apply to the time prescribed by subsection (1).

Prescribed fee

131 For the purposes of subparagraph 73 (3) (a) (iv) of the Act, the prescribed fee is the fee set out in item 8 of Schedule 2.

Non-application of parts of subsection 73 (3) of Act

132 (1) Subparagraph 73 (3) (a) (ii) and paragraph 73 (3) (b) of the Act do not apply

  1. (a) in respect of a failure under paragraph 73 (1) (a), (b) or (e) or subsection 73 (2) of the Act; or
  2. (b) in respect of a failure under paragraph 73 (1) (d) of the Act if, before the end six months after the applicable time prescribed by subsection 35 (2) of the Act and in respect of that failure, the applicant makes a request for reinstatement to the Commissioner, takes the action that should have been taken in order to avoid the abandonment and pays the fee prescribed by section 131 of these Rules.
Non-application of subsection 8 (1)

(2) Subsection 8 (1) does not apply to the time prescribed by paragraph (1) (b).

Fees for Services

Fee for certified copies

133 (1) A person who requests from the Commissioner a certified copy of a document in the Commissioner's possession must pay the fee set out in item 29 or 30 of Schedule 2, as applicable.

Exception

(2) Subsection (1) does not apply in respect of a certified copy transmitted under rule 318 of the Federal Courts Rules, including as modified by rule 350 of those Rules.

Fee for non-certified copies

134 A person who requests from the Commissioner a non-certified copy of a document in the Commissioner's possession must pay the fee set out in item 27 or 28 of Schedule 2, as applicable.

Fee for request of information

135 A person who requests that the Patent Office provide information concerning the status of a patent or an application for a patent must pay the fee set out in item 31 of Schedule 2.

Fee for requesting publication of patents available for licence or sale

136 A person who, after issuance of a patent, requests publication on the website of the Canadian Intellectual Property Office of a notice listing the patent numbers of patents available for licence or sale must pay the fee set out in item 21 of Schedule 2.

Part 2 Patent Cooperation Treaty

Definition

Definitions

137 The following definitions apply in this Part.

priority date
has the same meaning as in Article 2 (xi) of the Patent Cooperation Treaty. (date de priorité)
international filing date
means the date accorded to an international application under Article 11 of the Patent Cooperation Treaty. (date du dépot international)

Application of Treaty

Force of law

138 Subject to subsection 150 (10), the provisions of the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions apply in respect of

  1. (a) an international application filed with the Commissioner; and
  2. (b) an international application in which Canada is designated under the Patent Cooperation Treaty.

International Phase

Receiving Office

139 The Commissioner must act as a receiving Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions if an international application is filed with the Commissioner and the applicant or, if there is more than one applicant, at least one of the applicants is a national or resident of Canada.

English or French

140 An international application filed with the Commissioner, must be entirely in English or entirely in French.

International Searching Authority and International Preliminary Examining Authority

141 The Commissioner must act as an International Searching Authority and an International Preliminary Examining Authority, in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions.

Fees in Canadian currency

142 (1) Fees payable under Rules 15 and 57 of the Regulations under the PCT must be paid in Canadian currency.

Patent Cooperation Treaty Fund

(2) Money received under Rules 15 and 57 of the Regulations under the PCT must be deposited in the account entitled the Patent Cooperation Treaty Fund within the account entitled the Canadian Intellectual Property Office Revolving Fund and must be paid out of that account in accordance with those Rules.

Transmittal fee

143 An applicant of an international application filed with the Commissioner must pay the transmittal fee set out in item 9 of Schedule 2 for the performance of the tasks referred to in Rule 14 of the Regulations under the PCT.

Search fee

144 An applicant of an international application filed with the Commissioner must pay the search fee set out in item 10 of Schedule 2 for the performance of the tasks referred to in Rule 16 of the Regulations under the PCT.

Additional fee

145 The amount of the additional fee due for searching under Article 17 (3) (a) of the Patent Cooperation Treaty is set out in item 11 of Schedule 2.

Preliminary examination fee

146 An applicant of an international application filed with the Commissioner who requests an international preliminary examination must pay the preliminary examination fee set out in item 12 of Schedule 2 for the performance of the tasks referred to in Rule 58 of the Regulations under the PCT.

Additional fee

147 The amount of the additional fee due for international preliminary examination under Article 34 (3) (a) of the Patent Cooperation Treaty is set out in item 13 of Schedule 2.

National Phase

Designated Office

148 If an international application in which Canada is designated is filed, the Commissioner must act as the designated Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions.

Elected Office

149 If an international application in which Canada is designated is filed and the applicant has elected Canada under Article 31 of the PCT, the Commissioner must act as an elected Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions.

Requirements

150 (1) An applicant who designates Canada in an international application must, no later than 30 months after the priority date,

  1. (a) if the International Bureau of the World Intellectual Property Organization has not published the international application, submit to the Commissioner a copy of the international application;
  2. (b) if the international application is not entirely in English or entirely in French, submit to the Commissioner a translation of the international application into English or French; and
  3. (c) pay the basic national fee prescribed by subsection 3 (6).
Translation replaces original

(2) A translation submitted under paragraph (1) (b) replaces the text of the international application, including for the application of paragraph 38.2 (3) (b) of the Act.

Fee

(3) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date must, no later than 30 months after the priority date, pay the prescribed fee referred to in subsection 3 (8) for the second anniversary of the filing date of an application for a patent.

Reinstatement of rights

(4) In respect of an international application, if an applicant fails to comply with the requirements of subsection (1) and, if applicable, subsection (3) before the end of 30 months after the priority date, the applicant is deemed to have so complied within that time period if

  1. (a) before the end of 12 months after that time period, the applicant
    1. (i) submits to the Commissioner a request that the rights of the applicant be reinstated with respect to that international application, a declaration that the failure was unintentional and a statement of the reasons for the failure,
    2. (ii) complies with the requirements of paragraphs (1) (a), (b), and (c);
    3. (iii) pays the prescribed fee referred to in subsection 3 (8) for the date of the second anniversary of the filing date of an application for a patent;
    4. (iv) pays the additional fee for late payment set out in item 15 of Schedule 2, and
    5. (v) if the applicant complies with the requirements of subparagraphs (i) to (iii) after the third anniversary of the international filing date, pays the prescribed fee referred to in subsection 3 (8) for the date of the third anniversary of the filing date of an application for a patent; and
  2. (b) the Commissioner determines that the failure was unintentional.
Correction of error in identification

(5) An error in the identification of the person who complied with the requirements of subsection (1) and, if applicable, subsection (3) arising from inadvertence, accident or mistake without any fraudulent or deceptive intention may be corrected if

  1. (a) a request for the correction is made by the person who paid the basic national fee prescribed by subsection 3 (6);
  2. (b) the request contains a statement to the effect that the error arose from inadvertence, accident or mistake without any fraudulent or deceptive intention; and
  3. (c) the request is made
    1. (i) before the Commissioner records a transfer of the PCT national phase application under section 49 of the Act, and
    2. (ii) before the end of three months after the day on which the requirements of subsection (1) and, if applicable, subsection (3) were complied with or, if the applicant complies with the requirements of paragraph (4) (a), before the end of three months after the day on which the applicant complies with the requirements of paragraph (4) (a).
Notice

(6) If the Commissioner has reasonable grounds to believe that the person who complied with the requirements of subsection (1) and, if applicable, subsection (3) is neither the applicant of the international application nor their legal representative, the Commissioner must by notice require that person to establish that they are either the applicant of the international application or their legal representative.

Deemed never to have complied

(7) If the person who complied with the requirements of subsection (1) and, if applicable, subsection (3) does not comply with the notice before the end of three months after the date of the notice, that person is deemed never to have complied with those requirements.

Non-application of subsection 8 (1)

(8) Subsection 8 (1) does not apply in respect of the times specified in subsection (1), (3), (4) or (5).

Exception to subsection 8 (1)

(9) The Commissioner is not authorized under subsection 8 (1) to extend the time referred to in subsection (7) beyond the later of the end of six months after the date of the notice and the end of 30 months after the priority date.

Non-application of Article 48 (2) of the Patent Cooperation Treaty

(10) Article 48 (2) of the Patent Cooperation Treaty does not apply in respect of the times specified in subsection (1), (3), or (4) of this section or in respect of any time limit applicable to a PCT national phase application.

Further PCT national phase application

(11) Once an international application becomes a PCT national phase application, it must not become a new PCT national phase application unless the earlier PCT national phase application has been withdrawn.

Application of Canadian legislation

151 When an international application becomes a PCT national phase application, the application is from then on deemed to be an application for a patent filed in Canada and, subject to sections 153 to 157, the Act and these Rules apply from then on in respect of that application.

Clarification

152 (1) For greater certainty, in respect of an international application that has become a PCT national phase application, for the purposes of the Act and these Rules,

  1. (a) information or notices included in the international application as filed are deemed to have been received by the Commissioner on the international filing date; and
  2. (b) information or notices furnished in accordance with the requirements of the Patent Cooperation Treaty before the application has become a PCT national phase application are deemed to have been received by the Commissioner on the day on which they were so furnished.
Exception—Sequence listings

(2) Paragraph (1) (b) does not apply in respect of sequence listings that do not form part of the international application.

Non-application of section 27 (2) of Act

153 The requirements in subsection 27 (2) of the Act regarding the petition and the application fee do not apply to a PCT national phase application.

Non-application of various sections of the Act

154 Subsection 27 (7) of the Act and sections 27.01, 28 and 28.01 of the Act do not apply to a PCT national phase application.

Filing date

155 The filing date of a PCT national phase application is the international filing date.

Application deemed not to be referred to in paragraph 28.2 (1) (c) or (d) of Act

156 An international application is deemed not to be an application for a patent referred to in paragraph 28.2 (1) (c) of the Act or to be a co-pending application referred to in paragraph 28.2 (1) (d) of the Act unless it has become a PCT national phase application.

Open to public inspection

157 If, on or after the date of the publication of the application in English or French by the International Bureau of the World Intellectual Property Organization under Article 21 of the Patent Cooperation Treaty, the applicant complies with the requirements of subsection 150 (1) and, if applicable, subsection 150 (3) or the applicant complies with the requirements of paragraph 150 (4) (a), the application for a patent is deemed to be open to public inspection under section 10 of the Act on and after the date of that publication.

Patent not invalid

158 A patent that was granted on the basis of an international application must not be declared invalid by reason only that a fee referred to in section 150 was not paid.

Part 3 Repeal and Coming into Force

Repeal

159 The Patent RulesFootnote 1 are repealed.

Coming into Force

S.C. 2015, c. 36

160 These Rules come into force on the day on which section 53 of the Economic Action Plan 2015 Act, No. 1, chapter 36 of the Statutes of Canada, 2015, comes into force but, if they are registered after that day, they come into force on the day on which they are registered.


Schedule 1

(Sections 1, 115, 117)

Prescribed Forms

Form 1

(Section 47 of the Patent Act)

Application for Reissue

1 The patentee of Patent No. Patent number, granted on Date for an invention entitled Title, requests that a new patent be issued, in accordance with the accompanying amended description and specification, and agrees to surrender the original patent effective on the issue of a new patent.

2 The name and postal address of the patentee is Name and address.

3 The respects in which the patent is deemed defective or inoperative are as follows: respects.

4 The error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, in the following manner: Error

5 The knowledge of the new facts giving rise to the application were obtained by the patentee on or about Date in the following manner: manner.

Form 2

(Section 48 of the Patent Act)

Disclaimer

1 The patentee of Patent No. Patent number, granted on Date for an invention entitled TitleTitle, has, by mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public,

(a) made the specification too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor; or

(b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right.

2 The name and postal address of the patentee is Name and address.

3 (1) The patentee disclaims the entirety of claim claim.

(2) The patentee disclaims the entirety of claim claim with the exception of the subject matter of the invention defined by the following claim: claim.

Schedule 2

(Sections 3, 7 to 9, 30, 71, 82, 84, 108, 111, 113, 116, 118, 121 to 123, 126, 129, 131, 133 to 136, 143 to 147 and 150)

Tariff of Fees

Part 1 Fees in Respect of Applications for a Patent
Column 1 Column 2
Item Description Amount ($)
1 Application fee under subsection 27(2) of the Act
(a) small entity fee 200.00
(b) standard fee 400.00
2 Late fee under subsection 27(7) of the Act 150.00
3 Fee for examination of an application for a patent under subsection 35(1) of the Act
(a) if the application for a patent has been the subject of an international search by the Commissioner in the Commissioner’s capacity as an International Search Authority,
(i) small entity fee 100.00
(ii) standard fee 200.00
(b) in any other case,
(i) small entity fee 400.00
(ii) standard fee 800.00
4 Late fee under subsections 35(3) of the Act 150.00
5 Fee to request that an application for a patent be advanced out of it routine order under paragraph 82(1)(a) of these Rules 500.00
6 Fee to request that a notice of allowance be withdrawn and that an application for a patent be subject to further examination under subsection 84(16) of these Rules 400.00
7 Final fee
(a) the basic fee referred to in subsection 3(5) of these Rules,
(i) small entity fee 150.00
(ii) standard fee 300.00
(b) plus, for each page of specification and drawings, other than pages of a sequence listing submitted in electronic form, in excess of 100 pages 6.00
8 Fee to request reinstatement of an application deemed to be abandoned, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 129 of these Rules that is the subject of the request 200.00
Part 2 Fees in Respect of International Applications
Column 1 Column 2
Item Description Amount ($)
9 Transmittal fee for the performance of the tasks referred to in Rule 14 of the Regulations under the PCT 300.00
10 Search fee for the performance of the tasks referred to in Rule 16 of the Regulations under the PCT 1,600.00
11 Additional fee for searching under Article 17(3)(a) of the Patent Cooperation Treaty, in respect of each invention other than the main invention 1,600.00
12 Preliminary examination fee for the performance of the tasks referred to in Rule 58 of the Regulations under the PCT 800.00
13 Additional fee for international preliminary examination under Article 34(3)(a) of the Patent Cooperation Treaty, in respect of each invention other than the main invention 800.00
14 Basic national fee
(a) small entity fee 200.00
(b) standard fee 400.00
15 Additional fee for late payment under subsection 150(4) of these Rules 200.00
Part 3 Fees in Respect of Patents
Column 1 Column 2
Item Description Amount ($)
16 Fee for filing an application to reissue a patent under subsection 47(1) of the Act $ 1,600.00
17 Fee for a disclaimer under subsection 48(1) of the Act 100.00
18 Fee for re-examination of one or more claims of a patent under subsection 48.1(1) of the Act:
(a) small entity fee 1,000.00
(b) standard fee 2,000.00
19 Fee for presenting an application under section 65 of the Act:
(a) for the first patent to which the application relates 2,500.00
(b) for each additional patent to which the application relates 250.00
20 Fee to advertise an application under section 65 of the Act on the website of the Canadian Intellectual Property Office 200.00
21 Fee for requesting publication on the website of the Canadian Intellectual Property Office of a notice listing the patent numbers of patents available for licence or sale, for each patent number listed 20.00
Part 4 General
Column 1 Column 2
Item Description Amount ($)
22 Fee for requesting correction of an error under subsection 108(1) of these Rules $ 200.00
23 Fee for requesting the registration of a document under section 121 of these Rules, for each patent or application for a patent to which the document relates. 100.00
24 Fee for requesting the recording of a change of name under section 122 of these Rules, for each patent or application for a patent to which the change of name relates. 100.00
25 Fee for requesting that a transfer be recorded under subsection 49(2) or (3) of the Act, for each patent or application for a patent to which the transfer relates. 100.00
26 Fee for applying for an extension of time under section 8 or 9 of these Rules 200.00
Part 5 Fees in Respect of Information or Copies
Column 1 Column 2
Item Description Amount ($)
27 Fee for requesting a non-certified copy in paper form, for each page
(a) if the person requesting makes the copy using Patent Office equipment 0.50
(b) if the Patent Office makes the copy 1.00
28 Fee for requesting a non-certified copy in electronic form
(a) for each request 10.00
(b) for each patent or application for a patent to which the request relates 10.00
(c) if the copy is requested on a physical medium, for each physical medium requested other than the first 10.00
29 Fee for requesting a certified copy in paper form
(a) for each certification 35.00
(b) for each page 1.00
30 Fee for requesting a certified copy in electronic form
(a) for each certification 35.00
(b) for each patent or application or a patent to which the request relates 10.00
31 Fee for requesting that the Patent Office provide information concerning the status of a patent or an application for a patent, for each patent or application for a patent 15.00
Part 6 Maintenance Fees
Column 1 Column 2
Item Description Amount ($)
32 Fee for maintaining an application for a patent in effect or for maintaining the rights accorded by a patent in effect
(a) for the dates of each of the second, third and fourth anniversaries of the filing date,
(i) small entity fee 50.00
(ii) standard fee 100.00
(b) for the dates of each of the fifth, sixth, seventh, eighth and ninth anniversaries of the filing date,
(i) small entity fee 100.00
(ii) standard fee 200.00
(c) for the dates of each of the tenth, eleventh, twelfth, thirteenth and fourteenth anniversaries of the filing date,
(i) small entity fee 125.00
(ii) standard fee 250.00
(d) for the dates of each of the fifteenth, sixteenth, seventeenth, eighteenth and nineteenth anniversaries of the filing date,
(i) small entity fee 225.00
(ii) standard fee 450.00
33 Late fee under subsections 27.1(2) of the Act and subsections 46(2) of the Act 150.00
34 Additional fee under subparagraph 46(5)(a)(iii) of the Act 200.00
Part 7 Fees in Respect of Patent Agents
Column 1 Column 2
Item Description Amount ($)
35 Fee for applying for entry on the register of patent agents under section 29 of these Rules 350.00
36 Fee for notifying the Commissioner, under subparagraph 26(b)(i) of these Rules, of the intention to sit for one or more papers of the qualifying examination, per paper 200.00
37 Fee for maintaining the name of a patent agent on the register of patent agents 350.00
38 Fee for applying for reinstatement on the register of patent agents 200.00
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