Archived — Patent Law Treaty - Changes Required to Canadian Law & Practice
From: Canadian Intellectual Property Office
Prepared for the Canadian Intellectual Property Office (CIPO) by Alan Troicuk, Senior Counsel, Department of Justice
- Updated June 2013
- Updated January 2012
This paper is an updated version of the original, dated September 2002, previously published on our website.
- Article 5 and Rule 2 (Filing Date)
- Article 6 and Rules 3, 4 & 6 (Application)
- Article 7 and Rule 7 (Representation)
- Article 8 and Rules 8, 9 and 10 (Communications; Addresses)
- Article 10 (Validity of Patent; Revocation)
- Article 11 and Rule 12 (Relief in Respect of Time Limits)
- Article 12 and Rule 13 (Reinstatement of Rights)
- Article 13 and Rule 14 (Priority)
- Rule 15 (Recordation of Change in Name)
- Rule 16 (Recordation of Change in Applicant or Owner)
- Rule 18 (Correction of a Mistake)
The following analysis seeks to identify the changes that will be required to be made to Canadian law and practice in order for Canada to comply with the Patent Law Treaty. Headings for PLT Articles and Rules are included below only where requirements for change have been identified.
The following abbreviations are used throughout this document: CPA for Canadian Patent Act; CPR for Canadian Patent Rules; CPO for Canadian Patent Office; PCT for Patent Cooperation Treaty and PLT for Patent Law Treaty.
Article 5 and Rule 2 (Filing Date)
Indication that patent sought
The filing date requirement in s.27.1(1)(a) CPR [i.e. "an indication, in English or French, that the granting of a Canadian patent is sought"] must be changed to conform to the requirement set out in PLT A.5(1)(a)(i) [i.e. "an express or implicit indication to the effect that the elements are intended to be an application"]. PLT A.1(ii) defines "application" to mean "
an application for the grant of a patent, as referred to in Article 3."
PLT A.5(2)(a) would permit Canada to require the PLT A.5(1)(a)(i) indication to be in English or French.
Name and address
The filing date requirements in s.27.1(1)(a)(ii) and (iii) CPR [i.e. "the applicant's name" and "the applicant's address or that of their patent agent"] must be changed to conform to the requirement set out in PLT A.5(1)(a)(ii) [i.e. "indications allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office"].
Some flexibility in implementing the PLT A.5(1)(a)(ii) requirement is given in PLT A. 5(1)(c) which provides: "
For the purposes of the filing date, a Contracting Party may require both information allowing the identity of the applicant to be established and information allowing the applicant to be contacted by the Office, or it may accept evidence allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office, as the element referred to in subparagraph (a)(ii)."
PLT A.5(2)(a) would permit Canada to require the PLT A.5(1)(a)(ii) indication to be in English or French.
The filing date requirement in s.27.1(1)(a)(iv) CPR [i.e. "a document, in English or French, that on its face appears to describe an invention"] must be changed to conform to the requirement set out in PLT A.5(1)(a)(iii) [i.e. "a part which on the face of it appears to be a description"]. PLT A.5(1)(b) provides that a "
Contracting Party may, for the purposes of the filing date, accept a drawing as the element referred to in subparagraph (a)(iii)". In accordance with PLT A.5(2)(b), the "
part referred to in paragraph (1)(a)(iii) may, for the purposes of the filing date, be filed in any language."
The filing date requirement in s.27.1(a)(v) CPR [i.e. "either (A) a small entity declaration in accordance with section 3.01 and the small entity fee set out in item 1 of Schedule II as it read at the time of receipt, or (B) the standard fee set out in that item"] must be deleted since PLT A.5(1) does not permit fees to be a filing date requirement. The reference to "fees" in s.28(1) CPA, and s.28(2) CPA in its entirety, should also be deleted.
In accordance with PLT A.6(4),(7)&(8) Canada will be able to require, where the filing fee has not been paid at the time of filing, that the fee be paid within a specified time thereafter failing which the application could be considered to be abandoned (but the filing date would be maintained). PLT A.12 would require any such abandoned application to be subject to reinstatement under certain conditions. The PLT leaves Contracting Parties free to establish the amount of any fees to be paid and Canada could thus require a penalty fee to be paid whenever a filing fee is paid subsequent to the filing date.
The PLT provides two options that Canada could follow in setting time limits for the payment of filing fees:
- in accordance with PLT A.6(7)&(8) and R.6(1), Canada could, at any time after filing, send a notification requiring the applicant to pay the filing fee (together with any penalty fee) within not less than two months from the date of the notification (If notification is not possible because indications allowing the applicant to be contacted by the office have not been filed, PLT Rule 6(2) provides for a time limit of not less than three months from the initial filing.); and
- in accordance with PLT A.6(4) and R.6(3), Canada could specify that the initial time limit for payment of the filing fee was one month after the filing of the application and then, at any time after the expiration of that one-month period, send a notification requiring the applicant to pay the filing fee (together with any penalty fee) within one month from the date of the notification.
Non-compliance with minimum filing date requirements
PLT A.5(3)&(4) will require the CPO to notify any applicant whose application does not comply with the minimum filing date requirements and to give the applicant at least two months from the date of the notification to comply and obtain a filing date without any need to re-file and pay new fees. The filing date would be the date on which the last required element for a filing date was received. Although the CPA and CPR do not currently require the CPO to act in this way, the CPO does comply as a matter of practice and this would be sufficient for Canada to be in compliance with these PLT obligations. Consideration could, however, be given to amending the CPR to make such a procedure mandatory.
Missing part of description or drawing
PLT A.5(5) obliges an office, where it, in establishing the filing date, finds that a part of the description or a referenced drawing appears to be missing, to promptly notify the applicant. This provision does not require an office, in establishing the filing date, to make a check of whether a part of the description or a drawing is missing. As a matter of practice, the CPO already complies with the notification requirement under PLT A.5(5). The CPR could be amended to make such notification mandatory but this is unnecessary.
PLT A.5(6) sets out mandatory rules to be followed in establishing the filing date when a missing part of the description or drawing is filed. This will require amendment of s.27.1 CPR and probably also s.28(1) CPA.
For the purposes of PLT A.5(6)(a), Canada will have to establish a time limit for filing a missing part of the description or drawing which in view of PLT R. 2(3) must be at least two months from notification or, if no notification, at least two months from the date on which any element of the application was filed. If a missing part of the description or drawing is filed during this period, it appears that it must not be treated according to the usual amendment rules (i.e. accepted if no new matter) but rather in accordance with paragraphs (a), (b) and (c) of PLT A.5(6).
Paragraph (a) of PLT A.5(6) states that, subject to paragraphs (b) and (c), the filing date shall be the later of the date on which the missing part of the description or drawing is received and the date on which all filing date requirements are satisfied. Paragraph (b) provides that (subject to certain conditions that a contracting party may impose as discussed below in the following paragraph) the missing part of the description or drawing must be included in the application without loss of filing date if the missing part or drawing is contained in a priority document and priority based on that document was claimed at the earliest date on which any element of the application was filed. Paragraph (c) permits an applicant to withdraw a later filed missing part of the description or missing drawing in order to avoid the date of receipt of that part or that drawing being accorded as the filing date under subparagraph (a).
Although PLT A.5(6)(b) is mandatory in requiring contracting parties to establish a regime allowing a missing part of the description or drawing to be included without loss of filing date where they are contained in a priority document, that paragraph and PLT R.2(4) allow contracting parties, at their option, to make this subject to a number of requirements and Canada will thus need to decide which if any of these it wishes to impose. PLT R.2(4) provides:
"Any Contracting Party may, subject to Rule 4(3), require that, for the filing date to be determined under Article 5(6)(b):
- a copy of the earlier application be filed within the time limit applicable under paragraph (3);
- a copy of the earlier application, and the date of filing of the earlier application, certified as correct by the Office with which the earlier application was filed, be filed upon invitation by the Office, within a time limit which shall be not less than four months from the date of that invitation, or the time limit applicable under Rule 4(1), whichever expires earlier;
- where the earlier application is not in a language accepted by the Office, a translation of the earlier application be filed within the time limit applicable under paragraph (3);
- the missing part of the description or missing drawing be completely contained in the earlier application;
- the application, at the date on which one or more elements referred to in Article 5(1)(a) were first received by the Office, contained an indication that the contents of the earlier application were incorporated by reference in the application;
- an indication be filed within the time limit applicable under paragraph (3) as to where,
in the earlier application or in the translation referred to in item (iii), the missing part of the description or the missing drawing is contained."
Although technically, as noted above, it would not appear that the normal amendment procedure can be applied when a missing part of the description or drawing containing no new matter is filed within the time limit established under PLT A.5(6)(a), in practice the same effective result could be obtained if the office advised an applicant filing a missing part or drawing within that period that it has two choices: 1) accept the date of filing of the missing part or description as being the filing date (as long as all other filing date requirements have been satisfied and unless PLT A.5(6)(b) applies); or 2) withdraw the missing part or drawing, as allowed under PLT A.5(6)(c) and resubmit the missing part or description after the time limit as part of a voluntary amendment. Because of the complicated nature of PLT A.5(6) and its interface with the amendment procedure, it would appear desirable for Canada to prescribe as the time limit for PLT A.5(6)(a) the shortest time limit permitted by PLT R.2(3).
S.28 CPA will require amendment to accommodate the requirement in PLT A.5(7)(a) that contracting parties accept, at the time of filing, the replacement of the description and any drawings in an application by a reference to a previously filed application subject to compliance with the requirements of PLT R.2(5).
PLT R.2(5)(a) requires the reference to indicate that, for the purposes of the filing date, the description and any drawings are replaced by the reference to the previously filed application and that the reference also indicate the number of that application and the office with which that application was filed. A contracting party, if it wishes, may also require that the reference indicate the filing date of the previously filed application. PLT R.2(5)(b) permits a contracting party to require a copy, or a certified copy, or where appropriate, a translation of the previously filed application. PLT R.2(5)(c) permits a contracting party to permit references to be made only to a previously filed application that had been filed by the applicant or his predecessor or successor in title.
The implementation of PLT A.5(6) and (7), relating to the handling of missing parts of the description or drawings and to reference filings, may require consequential amendments to s.38.2(2) and (3) CPA e.g. to allow amendments to be based on missing parts that are contained in a priority application and that are submitted in accordance with PLT A.5(6)(b).
As a result of changes to Canadian law required by various PLT provisions (such as the requirement to accept foreign language documents for filing date purposes; the requirement to accept reference filings; the requirement to provide restoration of the priority right; and the requirement to provide for reinstatement of rights for missed time limits), there may be rare cases where an application consisting only of a foreign language specification or a reference number becomes open to public inspection under s.10 CPA. As a result, it may be desirable to amend s.55(2) CPA to provide that liability to pay reasonable compensation begins only after an English or French copy of the specification becomes open to public inspection under s.10 CPA.
Article 6 and Rules 3, 4 & 6 (Application)
S.28.4(2) CPA; ss.88(1)(b) and (c)(ii) CPR and Item 4 of Form 3 of Schedule I CPR are inconsistent with PLT Article 6(1) insofar as they make informing the Commissioner of the number of the previously regularly filed application a mandatory requirement for making a valid request for priority. PLT A.6(1) makes applicable the restriction set out in PCT R.26bis.2(c)(i)that a "
priority claim shall not be considered void only because … the indication of the number of the earlier application ... is missing."
S.89 CPR is potentially inconsistent with PLT Rule 4(1) in that it does not place any time restriction on when an examiner may requisition an applicant to file a certified copy of a previously filed application. PLT Rule 4(1) specifies that a copy may be required "
within a time limit which shall not be less than 16 months from the filing date of that earlier application or, where there is more than one such earlier application, from the earliest filing date of those earlier applications". This limitation on when a copy can be required could be implemented administratively or a specific limitation could be added to s.89 CPR.
S.89 CPR is potentially inconsistent with PLT Rule 4(3) which would prohibit the CPO from requiring a copy of a priority document if the priority document had been filed with the CPO or if the priority document was available to the CPO from a digital library which was accepted by the CPO for that purpose.
Models and specimens
S.38 CPA, which authorizes the Commissioner to require models and specimens, is not consistent with PLT A.6(1).
S.27(2) CPA requires an application to contain a petition and s.77 CPR requires the petition to "
follow the form and the instructions for its completion set out in Form 3 of Schedule I to the extent that the provisions of the form and the instructions are applicable." These provisions will require amendment in order to comply with PLT A.6(2).
PLT A.6(2)(a) limits the contents of an application that can be required to be presented on a request form to: 1) contents that correspond to the contents of a PCT request form; 2) contents that can be required in the national phase for a PCT application; and 3) some limited additional contents that are prescribed pursuant to PLT A.6(1)(iii) including notably certain specified indications where the applicant wishes the application to be treated as a divisional application.
It will be important for the CPA and the CPR to clearly indicate what contents must be included in a request form for the grant of a Canadian patent. Consideration could be given to amending s.77 CPR to specifically indicate at least the required, and perhaps also the optionally permitted contents, of the request form. Currently, the only elements required by the CPR to be included in a petition are a request for the grant of a patent, the name and address of the applicant and, if the application is a divisional application, an indication to that effect and the number of the parent application. These requirements may all be maintained under the PLT (except that for a divisional application if the parent application has not yet been issued a number, PLT R.19 would permit an alternative means of identifying the parent application). The requirement in paragraph 1 of Form 3 of Schedule I CPR to include the specific words "
which is described and claimed in the accompanying specification" does not appear consistent with PLT A.6(2).
PLT A.6(2)(b) and R.3(2) will oblige the CPO to accept the presentation of the required contents on a request form corresponding to the PCT request form instead of a petition in the form set out in Form 3 of Schedule I CPR. In accordance with PLT A.14(1)(c) and A.17(2)(ii), the PLT Assembly has established a model international form for the request for the grant of a patent that the CPO will also be required to accept.
Canada could maintain Form 3 of Schedule I CPR as an optional or recommended form. For consistency with the PLT, it would appear desirable to change the title of the form from Petition for Grant of a Patent to Request for the Grant of a Patent. Some other wording changes would also be required for consistency with other changes made to the CPA or CPR to comply with the PLT. For example, paragraph 5 of the petition would require amendment to correspond with amendments made to s.29 CPA for compliance with PLT A.8(6) and R.10(4).
Non-compliance with application requirements
PLT A 6(7) & (8) and Rule 6(1) & (2) provide that, in respect of non-compliance with an application requirement under any of A.6(1) to (6) [i.e. a requirement relating to form or contents, translations, fees, priority documents or evidence], a contracting party may, with one exception, only apply a sanction after the expiry of a period of at least two months from the date of notification. The one exception applies in cases where notification is not possible because indications allowing the applicant to be contacted have not been filed, in which case a sanction can be applied without notification at any time after three months from the date on which one or more elements referred to in PLT Article 5(1)(a) were first received by the Office (i.e. meaning in most situations other than with respect to divisional applications, at any time after three months from the filing date).
PLT A.6(4) provides that a "
Contracting Party may require that fees be paid in respect of the application." There is some ambiguity as to precisely which fees are covered by this provision. PLT Explanatory Note 6.16 might be read as suggesting that the words "fees paid in respect of the application" are not intended to cover fees for requesting examination, publication or grant fees or maintenance fees however PLT Explanatory Note 10.04 seems to suggest that they cover all fees payable before grant. Under the CPA and the CPR, sanctions apply to the non-payment of a number of fees payable at the application stage without any legal requirement for notification, e.g. in respect of the fee for requesting examination and maintenance fees. If these fees are covered by PLT A.6(4), amendments would be required to the CPA and CPR to provide for the necessary notification.
Other than in respect of certain fees as discussed in the previous paragraph, under the CPA and CPR, no sanctions are applied because of the non-compliance with any of the requirements covered by PLT A.6(1) to (6) until after a requisition requesting compliance has been sent either by the Patent Office operations (e.g. formalities) section in the name of the Commissioner or by a patent examiner.
In accordance with s.25 CPR, requisitions sent by the operations section of the Patent Office have a time limit for reply of three months from the date of the requisition, which would thus be fully compliant with PLT Article 6(7) & (8).
In accordance with s.73(1)(a) CPA, requisitions sent by an examiner must be replied to within a time limit of six months after the requisition is made or within any shorter period established by the Commissioner; these time limits would be consistent with PLT Article 6(7) & (8) as long as the Commissioner did not establish a period shorter than two months. Although current practice is to never establish a period of less than three months to reply to an examiner's requisition (and maintaining such a practice would be sufficient for compliance with the PLT) consideration might still however be given to amending s.73(1)(a) to prohibit the Commissioner from establishing a time limit of less that two months in order to ensure that PLT requirements are always met in the future.
Article 4D(4) of the Paris Convention and PLT A.6(8)(b) provide that failure to comply with formalities related to priority claims shall not go beyond the loss of the right of priority. This would appear to require amendment of the CPA and the CPR to eliminate the possibility of an application being deemed abandoned under s.73(1) or (2) CPA for non-compliance with a priority requirement under s.28.4(2) CPA or s.88 or 89 CPR.
Article 7 and Rule 7 (Representation)
To comply with PLT A.7(2)(b), s.6 CPR will require amendment to permit maintenance fees to be paid by any person including for example by a maintenance fee payment company.
With respect to fees other than maintenance fees, s.6 CPR will also have to be amended to comply with PLT A.7(2)(ii) but Canada could choose between one of the following two options: 1) permit the fee to be paid by any person; or 2) require the fee to be paid, at the choice of the applicant, by either the applicant or the applicant's representative. For the purposes of the second option, Canada could define the term "applicant's representative" to include any person authorized by the applicant to act for them or to be limited to registered patent agents.
Consideration will also need to be given to whether amendments will be required to s.15 CPA in order to permit fees to be paid by a person other than the applicant or their patent agent.
Article 8 and Rules 8, 9 and 10 (Communications; Addresses)
PLT Rule 8(2)(a) will (under certain conditions that are likely to apply in the future) require the CPO to accept the electronic filing of communications in accordance with the PCT electronic filing requirements prescribed under PCT Rules 89bis and 92.4. This will require changes to current CPO practice.
Model International Forms
PLT A.8(3) will require the CPO to accept communications filed on the Model International Forms established by the PLT Assembly under PLT R. 20(1) in respect of: (i) a power of attorney; (ii) a request for recordation of change in name or address; (iii) a request for recordation of change in applicant or owner; (iv) a certificate of transfer; (v) a request for recordation, or cancellation of recordation, of a license; (vi) a request for recordation, or cancellation of recordation, of a security interest; (vii) a request for correction of a mistake. PLT A.8(3) deals only with the manner of presentation of certain communications and by itself would not appear to require any changes to the CPA or CPR. The contents of the model forms do however reflect requirements of other PLT provisions that will require changes to the CPA or the CPR e.g. the requirement, discussed below, under PLT R.16(2)(iii) to accept certificates of transfer of ownership by contract.
Under the CPA and CPR, signatures are only required in a few situations (i.e. for assignments under ss.49 and 50 CPA, small entity declarations under ss.3.01 and 3.02 CPR, statements under s.16 CPR and notices under ss.20 and 21 CPR). For those situations, PLT Rule 9(5)(b) will (under certain conditions that are likely to apply in the future) require the acceptance of signatures in electronic form that comply with PCT requirements for signatures in electronic form.
PLT A.8(4)(b) and Rule 9(6) provide that no contracting party may require the attestation, notarization, authentication, legalization or other certification of any signature which is communicated to its office, except in respect of any quasi-judicial proceedings or to confirm certain signatures in electronic form. This will require modification, and perhaps deletion of, ss.49(3) and 50(3) CPA.
Indications in communications
The requirement in s.7(c) CPR that communications addressed to the Commissioner in relation to an application must include the title of the invention is not consistent with PLT A.8(5) and R.10(1).
Representative for service
In accordance with PLT A.6(1), by reason of its incorporation of PCT A.27(7), and in accordance with PLT A.8(6) and R.10(2), Canada will be able under certain circumstances to require an applicant to provide an address for service in Canada. Under PLT R.10(4), however, for the purposes of communications to a patent office, where an agent has been appointed and in the absence of a contrary indication from the applicant, it will be necessary to consider the agent's address to be the applicant's address for service.
In accordance with PLT A.6(1), by reason of its incorporation of PCT R.4.4(c), an address for service may be required to satisfy the customary requirements for prompt postal delivery. However, it would not appear that an address for service could be required to include the name of a person.
In view of the above, it would not appear that the PLT would allow a requirement for a representative for service of the type currently required by s.29 CPA. Amendment of s.29 CPA will therefore be required.
Article 10 (Validity of Patent; Revocation)
PLT A.10(1) prohibits, in the absence of fraud, the invalidation of a patent on the basis of non-compliance with certain formal requirements during the application stage.
Of particular note, PLT A.10(1) prohibits, in the absence of fraud, the invalidation of a patent on the basis of the non-payment of any fee payable in respect of the application. As discussed above in relation to PLT A.6(4), there is some ambiguity as to precisely which fees are covered by this provision; however, regardless of its scope, some changes will be required to the CPA to limit invalidation of patents on the basis of non-payment of certain fees in the application stage.
It would probably be desirable to include the substance of PLT A.10(1) in its entirety directly in the CPA, both to cover the non-payment of fees situation and also to avoid any doubt with respect to non-compliance with any of the other formal requirements referred to in PLT A.10(1).
Article 11 and Rule 12 (Relief in Respect of Time Limits)
PLT Article 11 only applies to time limits fixed by the Office and does not apply to time limits set by statute or regulation. The term "Office" is defined in PLT A.1(i) as meaning "
the authority of a Contracting Party entrusted with the granting of patents or other matters covered by this Treaty", which under the Canadian Patent Act is the Commissioner of Patents.
In the Canadian context, the only time limit that would appear to be affected is the time limit under s.73(1)(a) CPA for responding to a requisition by an examiner when the Commissioner has established a period shorter than six months for reply. When the Commissioner does not exercise his discretion to establish a shorter period under s.73(1)(a) CPA, the default six-month period for reply would not appear to be a time limit set by the Office and thus would not be covered by PLT A.11.
The relief currently available under the CPA and CPR for missed shorter time limits established by the Commissioner under s.73(1)(a) CPA does not comply with PLT A.11 and R.12. The following are three options for amending the CPA and/or CPR in order to comply:
- Amend s.73(1)(a) to remove the discretion of the Commissioner to set a shorter period for reply. S.73(1)(a) could then either itself specify a fixed period or provide for this period to be prescribed by regulation.
- Amend s.12(1)(j.8) CPA and the CPR to provide, upon request in respect of missed shorter time limits set by the Commissioner under s.73(1)(a) CPA, for an automatic retroactive extension of time of at least two months [in accordance with PLT A.11(1)(ii)and R.12(1) and (2)].
- Amend s.98 CPR to provide that in the case of an abandonment due to a failure to reply within a shorter period established under s.73(1)(a) CPA, the time period for reinstating shall not expire until at least two months after the Office has notified the applicant of its failure to timely reply [in accordance with PLT A.11(2)(ii) and R.12(4)].
Options (ii) and (iii) above may not be desirable in that they would appear to necessitate the establishment of relatively complex legal and operational procedures. Option (i) may also be considered undesirable if the period for reply was to be fixed at six months for all cases.
One approach that might be considered and that would be consistent with the PLT would be to fix a standard four months for reply subject to the possibility of a single two-month extension of time being granted where the Commissioner was satisfied that the circumstances justify the extension. Such an approach would also ensure compliance with PLT A.6(7) and (8) in accordance with which, as discussed above in relation to PLT A.6, it would not be possible to set a time limit of less than two months from the date of a requisition to comply with requirements relating to form and contents, translations, fees, priority documents or evidence.
Article 12 and Rule 13 (Reinstatement of Rights)
PLT A.12 and R.13 will require changes to the current Canadian time limits for remedying missed maintenance fee payments. Current Canadian law in substance permits missed maintenance fee payments for both applications and patents to be remedied within a period of twelve months after the missed due date: i) for missed maintenance fee payments in respect of an application, s.98 CPR permits a request for reinstatement to be made before the expiry of the twelve-month period after the missed due date; ii) for missed maintenance fee payments in respect of a patent, Items 31 and 32 permit a missed payment to be made, together with an additional fee for late payment, within a period of grace of one year following the missed due date. In accordance with PLT R.13(2), the time limit for remedying a missed maintenance fee payment must be "
the earlier to expire of the following: (i) not less than two months from the date of the removal of the cause of the failure to comply with the time limit for the action in question; (ii) ... not less than 12 months from the date of expiration of the period of grace provided under Article 5bis of the Paris Convention."
Article 13 and Rule 14 (Priority)
Delayed filing of the subsequent application
PLT A.13(2) and R.14(4)(a) will require the CPA to be amended to provide for the restoration of the priority right where a subsequent application is filed within two months after the expiration of the priority period and the failure to file in time occurred in spite of due care required by the circumstances having been taken or, at the option of Canada, was unintentional.
Failure to timely file copy of priority application
As explained in Note 13.09 of the Explanatory Notes on the Patent Law Treaty and Regulations, PLT A.13(3) "
provides a remedy for the applicant where a right of priority is lost because of the failure, on the part of the Office with which the earlier application was filed to provide a copy of that application in time, to comply with the time limit applicable under Article 6(5), despite a timely request for that copy having been made." In practice, this remedy is very unlikely to ever be required in Canada since, in accordance with s.89 CPR, copies of priority applications are only required in very limited circumstances and only at the examination stage. However, to ensure full compliance with the PLT, it would appear preferable to amend the CPA and/or CPR to include such a remedy.
Rule 15 (Recordation of Change in Name)
S.39 CPR will require amendment to comply with PLT R.15(4) which, with respect to requests for the recordal of a change in the name of the owner of a patent or an application, states that a "
Contracting Party may require that evidence be filed with the Office only where the Office may reasonably doubt the veracity of any indication contained in the request."
Rule 16 (Recordation of Change in Applicant or Owner)
Ss.49 and 50 CPA and s.38 CPR will require amendment to comply with the simplified permissible requirements set out in PLT R.16 for requesting the recordal of assignments. PLT R.16(2)(a) notably, where the change in applicant or owner results from a contract, limits the documentation that an office can require to, at the option of the requesting party, one of the following [As per PLT R.16(5), further evidence may only be required where the office may reasonably doubt the veracity of an indication]:
- "a copy of the contract, which copy may be required to be certified, at the option of the requesting party, by a notary public or any other competent public authority or, where permitted under the applicable law, by a representative having the right to practice before the Office, as being in conformity with the original contract;
- an extract of the contract showing the change, which extract may be required to be certified, at the option of the requesting party, by a notary public or any other competent public authority or, where permitted under the applicable law, by a representative having the right to practice before the Office, as being a true extract of the contract;
- an uncertified certificate of transfer of ownership by contract drawn up with the content as prescribed in the Model International Form in respect of a certificate of transfer and signed by both the applicant and the new applicant, or by both the owner and the new owner."
Rule 18 (Correction of a Mistake)
PLT R.18 regulates the formal requirements and procedures concerning the request for correction, by the office, of a mistake not related to search or substantive examination but does not regulate the substantive requirements which a contracting party may apply in determining the allowability of a correction. PLT R.18 would not appear to permit the current requirement that a person requesting the correction of a clerical error under s.8 CPA provide information satisfying the Commissioner of Patents that the error is clerical in nature.
- Date modified: