Representation

1.0 Introduction

Most applicants choose a patent agent to prosecute their patent application on their behalf. The Office recommends that all persons considering submitting a patent application consult a registered patent agent for advice. While individual inventors or joint inventors who have not assigned their rights may prosecute and represent themselves before the Patent Office, all applicants are required by the Patent Rules to appoint a patent agent to represent them.

The following sections describe provisions in the Patent Rules with respect to representation of applicants and patentees by common representatives and patent agents as well as who is permitted to act on their behalf in various situations.

2.0 Common Representative

The common representative is a joint applicant or joint patentee who is entitled to act on behalf of the other joint applicants or joint patentees in some actions before the Office, in particular the appointment of patent agents. In all cases where there are joint applicants or joint patentees, one of those joint applicants or joint patentees will be the common representative. The joint applicants or patentees may collectively appoint one person as the common representative. Otherwise, one of the joint applicants or patentees will be deemed to be appointed as the common representative by default, in accordance with the Patent Rules.

2.1 Appointment of common representative in the petition or in the request for PCT national phase entry

For non-PCT applications, the common representative may be appointed in the petition of the application, if that petition is included in the application on the filing date (paragraph 26(3)(b) of the Patent Rules). For PCT national phase applications, the common representative may be appointed in the request for national phase entry or in a notice submitted to the Commissioner at the PCT national phase entry date (paragraph 26(3)(c) of the Patent Rules). These appointments do not require a signature.

2.2 Appointment of common representative by notice

The common representative may also be appointed at any time during the life of an application or a patent in a notice to the Commissioner signed by each of the other joint applicants or joint patentees (paragraph 26(3)(a) of the Patent Rules). Any previous appointment of a common representative is revoked by the appointment of a new common representative (subsection 26(9) of the Patent Rules).

The Office recommends that joint applicants appoint their common representative in the petition or request for national phase entry.

2.3 Common representative by default - applications

If no common representative is appointed by the other joint applicants, one of the joint applicants or joint patentees will be deemed to be appointed as common representative, as follows:

• Non-PCT applications: (paragraph 26(4)(a) of the Patent Rules)
  • Petition or other document naming applicants submitted on the filing date - first person named as applicant
  • No document naming the joint applicants at the filing date – the joint applicant whose name appears first when listed in alphabetical order.^{Footnote 1}
• PCT applications: (paragraph 26(4)(b) of the Patent Rules)
  • the first person named as a joint applicant in the request under Article 4 of the PCT who is also named as an applicant in the request to enter the PCT national phase
• Divisional applications: (subsection 26(5) of the Patent Rules)
  • if the person who was the common representative in the original application is also a joint applicant for the divisional, that person
  • in any other case, the first person named in the petition on the presentation date.

Exception: Where no common representative has been explicitly appointed and one has been deemed appointed and there has been a correction to the name of a joint applicant under section 104 or subsection 155(6) of the Patent Rules, the joint applicant whose name appears first in alphabetical order is deemed to be appointed as the common representative (subparagraph 26(4)(a)(iii) and paragraph 26(4)(b) of the Patent Rules).

2.4 Common representative by default – patents

The person who was the common representative immediately before the patent was granted will remain the common representative (subsection 26(6) of the Patent Rules) unless the joint patentees make a new appointment (paragraph 26(3)(a) of the Patent Rules). The same is true for reissued patents (subsection 26(7) of the Patent Rules).

2.5 Common representative by default in case of transfers (applications and patents)

The recordal of a transfer of rights to an application or a patent under section 49 of the Patent Act will affect the appointment of common representative (where deemed or not) if the full or partial rights of the common representative are the subject of that transfer. So long as the appointed or deemed appointed common representative remains a joint applicant or patentee, the common representative will remain the same.

Where the full rights to a patent application or patent of the common representative are transferred and recorded under section 49 of the Patent Act to one person, that person, the transferee, is deemed to be appointed as common representative in respect of the application or patent. If the common representative transfers all of their rights to multiple persons, or transferees, the transferee whose name appears first in the request to record the transfer is deemed to be appointed as the common representative (subsection 26(8) of the Patent Rules).

3.0 Patent agents

Any applicant, patentee or third party may appoint a patent agent to represent them in their business before the Patent Office. Examples of third party activities that may benefit from appointing a patent agent include filing a protest of an application, or requesting re-examination of a patent.

3.1 Requirement to appoint a patent agent

An applicant must appoint a patent agent to represent them if they are not the inventor. Similarly, if there are multiple applicants and not all of them are inventors, they must appoint a patent agent. Applicant(s) must appoint a patent agent when a transfer of the rights of an application under section 49 of the Patent Act has been recorded by the Commissioner (subsection 27(2) of the Patent Rules).

3.1.1 Commissioner's notice – Requirement to appoint a patent agent

The Commissioner will send a notice to the applicant requiring that a patent agent be appointed within three months of the date of the notice if one is required and none is appointed (subsection 31(1) of the Patent Rules). If there are joint applicants, the notice will be sent to the common representative. Failure to appoint a patent agent residing in Canada, or a non-resident patent agent who in turn must appoint an associate patent agent within the three months following the date of the notice, will result in the deemed abandonment of the application.

3.2 Appointment of patent agents

Patent applicants may appoint their patent agent at the time of filing or national phase entry as described in 3.2.1 below. A patent agent may also be appointed by notice at any time during the life of a patent application or patent, as described in 3.2.2 below.

3.2.1 Appointment of patent agent in the petition or in the request for PCT national phase entry

For non-PCT applications, the appointment of a patent agent may be made in the petition if the application includes a petition on its filing date. For PCT national applications, the appointment may be made in a notice submitted to the Commissioner on or before the national phase entry date. For divisional applications, the appointment may be made in the petition that is included with the application on its presentation date (subsections 27(3)(b), (c) and (d) of the Patent Rules). These appointments do not require a signature.

3.2.2 Appointment of patent agent by notice

At any time, a patent agent may be appointed in a notice to the Commissioner signed by the applicant or patentee, or a third party who is appointing a patent agent. In cases where there are joint applicants or joint patentees, the notice must be signed by the common representative (paragraph 27(3)(a) and subsection 27(4) of the Patent Rules).

3.2.3 Consent of the patent agent

The patent agent must consent to their appointment. If the document effecting the appointment of agent (petition, request to enter the PCT national phase, notice of appointment of agent) is submitted by the agent, then the agent's consent is implied and evidence is not required. If the appointment of the agent is submitted by somebody other than the agent, the appointment will not be effective until evidence of the agent's consent is received (subsection 27(5) of the Patent Rules). A letter written by the agent stating that they agree to the appointment is considered to be evidence of the agent's consent to the appointment. The Office recommends that evidence of the agent's consent be submitted along with the appointment in order to avoid non-compliance with the Patent Rules.

3.2.4 Default appointment of patent agent – patents

The appointment of a patent agent to represent applicants is deemed to also have been made for the resulting patent (subsection 27(6) of the Patent Rules). Please note that the Office cannot keep track of conditional appointments of agents and encourages applicants and patentees to submit instructions to the Patent Office at the time they wish the appointment to cease/be revoked in order for the Patent Office to give it effect.

3.2.5 Default appointment of patent agent – transfers

A patent agent appointed to represent the applicant or patentee is deemed also to have been appointed to represent a transferee when a transfer of an application or a patent is recorded by the Commissioner under section 49 of the Patent Act unless the request to record the transfer states otherwise (section 30 of the Patent Rules).

3.3 Revocation of patent agents

The appointment of a patent agent may be revoked by way of a notice submitted to the Commissioner, signed by the agent, or the applicant or patentee (common representative if joint applicants or patentees) or other person who appointed the agent. An appointment of an agent is automatically revoked when the Commissioner removes the agent from the register of patent agents or refuses to recognize them as a patent agent (subsections 27(7) and (8) of the Patent Rules).

4.0 Associate patent agents

An associate patent agent is a patent agent appointed by the appointed patent agent. Though an appointed patent agent residing in Canada may appoint an associate patent agent who also resides in Canada, when the appointed patent agent in respect of any business before the Patent Office does not reside in Canada, the patent agent must appoint an associate patent agent in respect of that business. Associate patents agents must reside in Canada.

(subsection 28(2) of the Patent Rules).

4.1. Commissioner's notice – Requirement to appoint an associate patent agent in Canada

The Commissioner will send a notice to the appointed patent agent requiring that an associate patent agent residing in Canada be appointed within three months of the date of the notice if one is required and none is appointed (subsection 31(2) of the Patent Rules). Failure to do one of the following within the three months following the date of the notice will result in the deemed abandonment of the application:

• appointment of an associate patent agent residing in Canada by the appointed patent agent not residing in Canada;
• the applicant appoints a patent agent residing in Canada;
• the applicant appoints a different patent agent not residing in Canada and they in turn appoint an associate patent agent residing in Canada.

4.2 Appointment of the associate patent agent

An associate patent agent may be appointed at the time of filing or national phase entry, as described in 4.2.1 below. An associate patent agent may also be appointed by notice at any time during the life of a patent application or patent, as described in 4.2.2 below.

4.2.1 Appointment of associate patent agent in the petition or in the request for PCT national phase entry

For non-PCT applications, the appointment of an associate patent agent may be made in the petition if the application includes a petition on its filing date if the petition is submitted by the patent agent. For PCT national applications, the appointment may be made in a notice submitted to the Commissioner by the patent agent on or before the national phase entry date. For divisional applications, the appointment may be made in the petition that is included with the application on its presentation date if the petition is submitted by the patent agent. (subsections 28(3)(b), (c) and (d) of the Patent Rules). These appointments do not require a signature.

4.2.2 Appointment of associate patent agent by notice

At any time, an associate patent agent may be appointed in a notice to the Commissioner signed by the appointed patent agent (subsections 28(3)(a) of the Patent Rules).

4.2.3 Default appointment of associate patent agent – patents

The appointment of an associate patent agent by the appointed patent agent is deemed to also have been made for the resulting patent (subsection 28(4) of the Patent Rules). Please note that the Office cannot keep track of conditional appointments of associate patent agents and encourages agents to submit instructions to the Office at the time they wish the appointment to cease/be revoked in order for the Patent Office to give it effect.

4.3 Revocation of associate patent agents

The appointment of an associate patent agent may be revoked by way of a notice submitted to the Commissioner, signed by the appointed patent agent, or the associate patent agent. The appointment of an associate patent agent is automatically revoked when the appointment of the patent agent who appointed them is revoked. It is also automatically revoked when the Commissioner removes the agent from the register of patent agents or refuses to recognize them as a patent agent (subsection 28(5) of the Patent Rules).

5.0 Representation Requirements – what actions can be taken by whom?

5.1 Representation during prosecution of the patent application

If there is a patent agent resident in Canada appointed to represent the applicant(s), the appointed patent agent resident in Canada must take action on behalf of the applicant(s) during the prosecution phase of the application. This appointed patent agent residing in Canada could be either the patent agent, or the associate patent agent. If a patent agent is not required and there is a single applicant/inventor, the single applicant must represent themselves during the prosecution phase, and if there are joint applicants/inventors, they must be represented by the common representative (subsection 36(1) of the Patent Rules).

5.1.1 Representation by Others

There are exceptions provided in the Patent Rules where the applicant(s) may represent themselves and where other persons may represent the applicant(s), even if a patent agent is appointed to represent the applicant(s).

Note: Some actions with respect to applications are permitted by "persons authorized" by an applicant, patentee, or common representative. In these cases, the Office does not require evidence or proof of that authorization and will implicitly assume that the person is authorized.

5.1.1.1 Filing an application for a patent, paying the application fee for a patent or submission of the request to enter the PCT national phase and the paying the associated fees

The following persons may file an application, pay the application fee, or in the case of PCT national phase applications, satisfy the requirements for national entry and pay the associated fees:

• the appointed patent agent residing in Canada
• the applicant (any applicant if there are joint applicants)
• any person authorized by any of the applicants

(subsection 36(2) of the Patent Rules)

5.1.1.2 Payment of annual maintenance fees - applications

The following persons may pay maintenance fees for applications and patents:

• the appointed patent agent residing in Canada
• the applicant (any applicant if there are joint applicants)
• any person authorized by any of the applicants

(subsection 36(2) of the Patent Rules)

5.1.1.3 Payment of all other fees relating to an application

All other fees related to a patent application, such as the final fee, may be paid by:

• the appointed patent agent residing in Canada,
• the single applicant, or
• the common representative

(subsection 36(5) of the Patent Rules).

5.1.1.4 Signing of small entity declaration

A small entity declaration may be signed by the appointed agent (either the patent agent or the associate patent agent) or by the applicant (any applicant if there are joint applicants) (paragraph 44(3)(c) of the Patent Rules).

5.1.1.5 Reinstatement of an application deemed abandoned for failure to pay maintenance fee

Where an application has been deemed abandoned for failure to pay a maintenance fee, the necessary steps to reinstate the application (outlined in paragraph 73(3)(a) of the Patent Act) may be taken by the appointed agent residing in Canada or by the single applicant or, where there are joint applicants, the common representative (subsection 36(5) of the Patent Rules).

5.1.1.6 Submission of request to record a transfer

If there is a single applicant, the following persons may submit the request to record a transfer under subsection 49(2) of the Patent Act:

• the appointed patent agent residing in Canada
• the applicant
• any person authorized by the applicant

If there are joint applicants and the rights of a single joint applicant are being transferred, the following persons may submit the request to record a transfer:

• the appointed patent agent residing in Canada
• the common representative
• a person authorized by the common representative
• the joint applicant whose rights are being transferred
• any person authorized by the joint applicant whose rights are being transferred

If there are joint applicants and the rights of multiple joint applicants are being transferred, the following persons may submit the request to record a transfer:

• the appointed patent agent residing in Canada
• the common representative
• any person authorized by the common representative

(subsection 36(3) of the Patent Rules)

5.1.1.7 Submission of request to record a name change

If there is a single applicant, a request to record a name change under section 126 of the Patent Rules may be submitted by the following persons:

• the appointed patent agent residing in Canada
• the applicant
• any person authorized by the applicant

If there are joint applicants, a request to record a name change under section 126 of the Patent Rules may be submitted by the following persons:

• the appointed patent agent residing in Canada
• the common representative
• any person authorized by the common representative

(subsection 36(4) of the Patent Rules)

5.1.1.8 Submission of reference to a previously filed application or addition to specification or drawings

A reference to a previously filed application (section 27.01 of the Patent Act), or an addition to the specification of the application or additional drawing (section 28.01 of the Patent Act), may be submitted by the appointed patent agent residing in Canada or by the single applicant or common representative (subsection 36(5) of the Patent Rules).

5.1.1.9 Interview with Patent Office staff

If a patent agent has been appointed, the following persons may conduct an interview with Patent Office staff:

• the appointed patent agent residing in Canada
• the appointed patent agent not residing in Canada, with the permission of the appointed associate patent agent residing in Canada
• the single applicant (if applicable), with permission of the appointed patent agent residing in Canada
• the common representative (if applicable), with permission of the appointed patent agent residing in Canada

If a patent agent has not been appointed and is not required to be appointed:

• the single applicant (if applicable)
• the common representative (if applicable)

(section 39 of the Patent Rules)

5.2 Representation for procedures relating to patents

Once a patent is granted, a single patentee may represent themselves or be represented by any person authorized by them. Joint patentees may be represented by the common representative or by any person authorized by the common representative (subsection 37 of the Patent Rules). There are a few exceptions provided in the Patent Rules, which are outlined below.

Please note that in cases where actions with respect to patents may be taken by ‘persons authorized' by the single patentee, a joint patentee or the common representative, the Office does not require evidence or proof of that authorization and will implicitly assume that the person is authorized. Note that ‘any person' includes the appointed patent agent.

5.2.1 Payment of annual maintenance fees – patents

In accordance with the above, a single patentee may pay a maintenance fee in respect of a patent, or authorize any other person to do so on their behalf. If there are joint patentees, however, the maintenance fees may be paid by any one of the patentees or any person authorized by any of the patentees (subsection 37(1) of the Patent Rules).

5.2.2 Submission of request to record a transfer

If there is a single patentee, the following persons may submit the request to record a transfer under subsection 49(3) of the Patent Act:

• the appointed patent agent residing in Canada
• the patentee
• any person authorized by the patentee

If there are joint patentees and the rights of a single joint patentee are being transferred, the following persons may submit the request to record a transfer:

• the appointed patent agent residing in Canada
• the common representative
• a person authorized by the common representative
• the joint patentee whose rights are being transferred
• any person authorized by the joint patentee whose rights are being transferred

If there are joint patentees and the rights of multiple joint patentees are being transferred, the following persons may submit the request to record a transfer:

• the appointed patent agent residing in Canada
• the common representative
• any person authorized by the common representative

(paragraph 37(1)(a) and subparagraph 37(1)(b)(ii) of the Patent Rules)

5.2.3 Reissue, disclaimer and re-examination

The following persons may take action for the purpose of reissuing a patent under section 47 of the Patent Act, making a disclaimer under section 48 of the Patent Act, and filing a reply under subsection 48.2(5) of the Patent Act or participating in a process under section 48.3 of the Patent Act with respect to re-examination:

• If there is a single patentee, the single patentee or an appointed patent agent residing in Canada
• If there are joint patentees, the common representative or an appointed patent agent residing in Canada

(subsection 37(2) of the Patent Rules)

5.2.4 Signing of small entity declaration

A small entity declaration may be signed by the appointed agent (either the patent agent or the associate patent agent) or by the patentee (any patentee if there are joint patentees)

(paragraph 113(3)(c) of the Patent Rules)

5.3 Disregarded communication

If an applicant or patentee who is not the common representative communicates with the Office in order to take an action that must be taken by the common representative, or if a patent agent residing in Canada who is not the appointed resident patent agent communicates with the Office in order to take an action that must be taken by the appointed resident patent agent, the Office will respond to the person with a notice of disregarded communication. In either case, the person will have an opportunity to establish themselves as the correct representative of the applicant(s) or patentee(s) (either the common representative or the appointed resident patent agent) and have the Office give regard to their original communication. Details are provided below.

5.3.1 Applicant or Patentee who is not the common representative

If the Patent Office receives a communication from a joint applicant or joint patentee who is not the common representative, for a purpose which requires the common representative to represent the joint applicants or joint patentees, the Office must send a notice of disregarded communication to the joint applicant or joint patentee. This notice indicates that the Office will not have regard to the communication, unless within three months of the date of the notice the joint applicant or joint patentee is appointed as common representative and requests that the Commissioner have regard to their initial communication (subsection 40(1) of the Patent Rules).

If the joint applicant or joint patentee is then appointed as common representative before the expiry date of the notice (by notice submitted to the Commissioner in compliance with paragraph 26(3)(a) of the Patent Rules), and makes the necessary request for the Commissioner to have regard to that communication, the original communication is deemed to have been received from the common representative on the day that it was received at the Patent Office (subsection 40(3) of the Patent Rules). Note that these provisions do not apply to communications for purposes which may be carried out by any joint applicant or joint patentee or persons authorized by a joint applicant or joint patentee (subsection 40(2) of the Patent Rules).

5.3.2 Patent agent not appointed

The Office will also send a notice of disregarded communication to a patent agent residing in Canada who communicates with the Office on behalf of an applicant or patentee but is not appointed as the patent agent for that applicant or patentee in respect of that application or patent. The notice indicates that the Office will not have regard to the patent agent's communication unless within three months of the date of the notice, the patent agent is appointed as agent for that applicant or patentee in respect of that application or patent and requests that the Office have regard to their initial communication (subsection 41(1) of the Patent Rules).

If the patent agent is then appointed as the patent agent for that applicant or patentee in respect of that application or patent (by notice submitted to the Commissioner in compliance with paragraph 27(3)(a) of the Patent Rules), and makes the necessary request for the Commissioner to have regard to the communication, the original communication is deemed to have been received from the applicant or patentee on the date that it was received at the Office (subsection 41(3) of the Patent Rules). Note that these provisions apply to communications for purposes which must be carried out by the appointed agent residing in Canada. They do not apply to communications for purposes which may be carried out by any person who is authorized by an applicant or patentee (subsection 41(2) of the Patent Rules).