1.0 Compliant Patent Applications
A patent application consists of many parts, only a few of which are required to be submitted to the Office to obtain a filing date. However, all the parts of the patent application must be submitted soon after the filing date in order to be compliant with the prescribed requirements of the Patent Act and the Patent Rules. There are also requirements for each of those parts that are assessed for compliance after the filing of a patent application and during its prosecution until either a patent is issued or the application is refused.
This document relates to the assessment of patent application requirements specific to submitting parts of the application or statements relating to entitlement of the application, as well as to how and when they are assessed. Other requirements, such as novelty, obviousness and utility, are assessed by examiners once a request for examination has been made. Assessment of these other requirements is described in more detail in the Manual of Patent Office Practice.
A compliant patent application must contain:
- a petition that conforms with section 53 of the Patent Rules
- the name and address of each inventor
- statements of entitlement or inventorship
- claims
- an abstract
- if applicable, drawings
- if applicable, a sequence listing that complies with PCT sequence listing standard
2.0 Notice of non-compliance
After the patent application has received a filing date or entered the national phase via the PCT, the Office will review the application to determine if all the required parts have been submitted and whether they are compliant with the prescribed requirements. If either a required part is missing or a submitted part is non-compliant, the Commissioner will send a notice under section 65 of the Patent Rules requiring the applicant to comply. The applicant will have three months to respond to the notice in good faith in order to avoid their patent application being deemed abandoned under subsection 73(2) of the Patent Act.
2.1 Notice of non-compliance - response to notice
The Office will review the response to the notice and assess whether the response renders the application compliant. If the application remains non-compliant following the response, a new Commissioner's notice of non-compliance under section 65 of the Patent Rules will be sent to the applicant. The applicant will once again have three months to respond to the notice in good faith in order to avoid their patent application being deemed abandoned under subsection 73(2) of the Patent Act.
3.0 Sequence Listings
If a sequence listing is not provided at filing or national phase entry, a determination as to whether a sequence listing is required under subsection 58(1) may occur after filing. A sequence listing that is provided at filing or national phase entry will be reviewed to ensure that it is compliant with the PCT sequence listing standard and any required statements set out in subsections 58(3) and (4) of the Patent Rules. If the sequence listing is non-compliant, the Commissioner will send a notice under section 65 of the Patent Rules requiring the applicant to comply with the standard.
If it is determined that a sequence listing is required for the patent application to be compliant, a notice under section 65 of the Patent Rules will be sent to the applicant. If the sequence listing submitted in response to the examiner's requisition is non-compliant with the PCT standard and/or if any required statements in subsections 58(3) and (4) are not made, the Commissioner will send a notice under section 65 of the Patent Rules requiring the applicant to comply with the standard.
4.0 Drawings
If drawings are not provided at filing or national phase entry, a determination as to whether drawings are required under section 27(5.1) of the Patent Act may be made. If it is determined that drawings are required for the patent application to be compliant, a notice under section 65 of the Patent Rules will be sent to the applicant.
5.0 Inventor Information and Establishing entitlement
Pursuant to subsection 54(1) of the Patent Rules, the application 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.
If the applicant is the inventor, the application must also contain a statement to that effect that 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, the applicants are all inventors and the sole inventors of that subject-matter.
Where the applicant is not the inventor, the application must contain a statement to the effect that the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent.
The statements referred to above must be included in the petition or submitted in a document other than the abstract, specification or drawings.
5.1 Inventor Information and Establishing entitlement – changes to applicant
The Office takes the position that the requirement to provide a statement relating to entitlement is an ongoing requirement. When amendments are made such that the subject-matter of the invention for which an exclusive privilege or property is claimed changes, applicants are advised to update inventorship and entitlement as needed so that they remain compliant with the Patent Rules. It may also need to be updated when applicant information on record in the Patent Office changes, such as after a transfer is recorded or after a change in identity results from a correction.
5.2 PCT national phase applications – applicant or legal representative
Pursuant to subsection 154(7) of the Patent Rules, in respect of PCT national phase applications, where the Commissioner has reasonable grounds to believe that the person who complied with the requirements to enter national phase in Canada is neither the applicant of the international application nor their legal representative, the Commissioner must require by notice the person who complied with the requirements to enter national phase in Canada to establish that they are either the applicant of the international application or their legal representative.
The person may establish that they are either the applicant of the international application or their legal representative by providing to the Office a PCT/IB/306 form showing a change in the applicant of the international application, an assignment to the person who complied with the requirements to enter national phase in Canada, or a change of name document.
Pursuant to subsection 154(8) of the Patent Rules, where the person does not comply with the notice not later than three months after the date of the notice, that person is deemed never to have complied with the requirements to enter national phase in Canada.