Practice notice detailing the requirements for the recording of transfers and name changes and the registration of related documents for Canadian patents

By this Notice the Patent Office is clarifying its practice with respect to requests to record a transfer under s. 49 of the Patent Act and s.126 of the Patent Rules, requests to record a change of name under s.125 of the Patent Rules and requests to register documents under s.124 of the Patent Rules.

In order to process the request correctly under the Patent Act and Rules, applicants must clearly indicate what is being requested of the Commissioner and preferably indicate the section of the Patent Act or Rules you would like the office to consider when processing your request.

Let us take as an example the situation where an applicant sends correspondence to the Commissioner that includes the following:

In this scenario, it would not be clear whether this is a request for registration of a related document (s. 124 PR), a request to change the name of the applicant (s. 125 PR), or a request to record a transfer (s. 126 PR), or a combination of requests.

In cases where it is not clear from correspondence which request is being made, the Office will send a letter asking the requestor for clarification. In order to avoid delays in processing your request, it is recommended that requests include clear instructions and references to the appropriate sections of the Patent Act or Patent Rules.

For information on how to record transfers, change of names and register other documents please see sections 6.05, 6.06 and 6.07 of the Manual of Patent Office Practice which can be found online on CIPO's website.

Transfers

Comparison of Former and Current Legislation

Sections 49 and 50 of the Patent Act as it read prior to October 30, 2019 provided for the registration of documents related to the assignment of the right to obtain a patent, the assignment before or after filing an application of the property or interest in an invention, the assignment of a patent or the grant and conveyance of an exclusive right related to a patented invention.

Current s. 49 of the Patent Act (as it has read since October 30, 2019) provides for the recording of the fact of a transfer of an application or of a patent from a person currently recorded as an applicant or patentee in the records of the Patent Office to a transferee. Although transfer documents may be submitted to the Commissioner as evidence to support the recording of the fact of a transfer, s. 49 does not provide for the registration of transfer documents. If desired, however, any document relating to a patent or an application may be registered separately under s. 124 of the Patent Rules.

Right or Interest in an Invention

Although s. 49(1) of the Patent Act states that the right or interest in an invention is transferable, s. 49 does not provide for the recording of such transfers.

If a request is submitted for the recording of a transfer of a right or interest in an invention to a person who is currently recorded as an applicant in the records of the Patent Office, the Office will notify the requestor that the transfer cannot be recorded under s. 49.

If a request is submitted for the recording of a transfer of a right or interest in an invention to a person who is not currently recorded as an applicant in the records of the Patent Office, the Office will notify the requestor that s. 49 does not provide for the recording of rights or interest in an invention.

If a request is incorrectly submitted for the recording of a transfer of a right or interest in an invention, a refund may be requested of any fee paid in respect of that request.

International Applications

A transfer of an international application that took place before the national phase entry date in Canada is not considered to be a transfer of an application under s. 49(2) of the Patent Act since, under s.155(1) of the Patent Rules, an international application is considered to be an application for a patent filed in Canada beginning only on its national phase entry date.

If a request is submitted for the recording of the transfer of an international application that took place before the national phase entry date in Canada, the Office will notify the requestor that the Commissioner has not recorded the transfer. In this case, a refund of the fee for requesting that a transfer be recorded can be requested.

Name Changes

The Office takes the position that s.125 of the Patent Rules applies only to a name change of a person who is currently recorded as an applicant or patentee in the records of the Office. The Office will not record a name change of a previously recorded applicant or patentee.

Section 125 of the Patent Rules provides for the recording of the fact of a name change and does not provide for the registration of any related documents. If desired, however, any document relating to a patent or an application may be registered separately under s.124 of the Patent Rules.

Registration of Related Documents

An applicant may request registration of a related document under s.124 of the Patent Rules. Applicants may also choose to submit the document as an attachment to correspondence to the Office and not request registration of the document. In this case, the related document will be placed on file and be available to the public once the application is open to public inspection, but will not have a registration number.

Mergers

The Office does not take a position as to whether a merger in fact transferred the rights to the application or whether it was simply a name change that occurred through a merger.

If a merger affecting an applicant for a patent occurs, clients must decide how to manage their application. Applicants may choose to do nothing, or they may opt to make one of the following requests:

  1. Request the recording of a transfer of the application or patent under s.49 of the Patent Act and s.126 of the Patent Rules which allows for the applicant/patentee to be changed (amendment to the chain of title).
  2. Request the recording of a name change under s.125 of the Patent Rules which allows for the applicant/patentee to be changed (amendment to the chain of title).
  3. Request registration of a related document under s.124 of the Patent Rules which does not invoke any change in the applicant/patentee (no amendment to the chain of title).

Improvements to Recordal Certificates and Registration Certificates

Recordal Certificates and Registration Certificates processed on or after April 16, 2020 will include any reference number provided by the requestor.

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