- (a) has complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2); or
- (b) has, before October 30, 2019, complied with the requirements of subsection 58(1) and, if applicable, subsection 58(2) of the Patent Rules , as they read immediately before that date. ( demande PCT à la phase nationale )
means Standard ST.26 of the World Intellectual Property Organization, Recommended Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings using XML (eXtensible Markup Language) , as amended from time to time. ( norme PCT de listages des séquences )
means the date determined under subsection 103(2) or 202(2), as applicable. ( date de soumission )
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 )
means the Regulations under the Patent Cooperation Treaty, including any amendments made from time to time. ( Règlement d’exécution du PCT )
has the same meaning as in the PCT sequence listing standard. ( listage des séquences )
- SOR/2021-131, s. 2
- SOR/2022-120, s. 1
Marginal note: Clarification
2 For greater certainty, for the purposes of these Rules,
- (a) an application for the reissue of a patent is not considered to be an application for a patent; and
- (b) a patent granted on the basis of a divisional application that results from the division of an original application is not a patent granted on the basis of the original application.
PART 1 Rules of General Application
Extension of Time
Marginal note: Time fixed by Rules
- 3 (1) Subject to these Rules, the Commissioner is authorized to extend any period of time fixed by these Rules for doing anything — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the end of that period, the extension is applied for and, except in the case of the period of time fixed by subsection 86(9), the fee set out in item 1 of Schedule 2 is paid.
- Marginal note: Clarification (2) For greater certainty, for the purpose of subsection (1), a period of time fixed by the Act that is dependent on a date that is prescribed by these Rules is not considered to be a period of time fixed by these Rules.
- Marginal note: Other authorized extensions (3) The Commissioner is authorized to extend the period of time for the payment of a fee referred to in subsection 44(1), 68(1) or (2), 80(1), 85.1(5), 86(1), (1.1), (6), (10) or (12) or 112(1), paragraph 112(5)(a) or (c) or 154(1)(c), subsection 154(2) or subparagraph 154(3)(a)(iii) or (b)(i) or (ii) after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if
- (a) the amount of the small entity fee was paid before the end of that period;
- (b) it is later determined that the standard fee should have been paid;
- (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;
- (d) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee that was applicable on the day on which the small entity fee was paid; and
- (e) the applicant or patentee pays the fee set out in item 1 of Schedule 2.
- (a) the Commissioner provided erroneous information in writing concerning the amount of the fee;
- (b) the applicant or patentee paid an insufficient amount as a result of that erroneous information;
- (c) the applicant or patentee identifies the source of the erroneous information that was relied on and files a statement that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the amount paid was insufficient, unless the Commissioner considers that the circumstances do not justify requiring the statement and the application; and
- (d) the applicant or patentee pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made, unless the Commissioner waives payment of the difference under section 139.1.
- SOR/2022-120, s. 2
- SOR/2024-50, s. 1
Marginal note: Time fixed by subsection 18(2) of Act
4 The Commissioner is authorized to extend the period of time fixed by subsection 18(2) of the Act — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the end of that period, the extension is applied for and the fee set out in item 1 of Schedule 2 is paid.
Marginal note: Prescribed days
5 The following days are prescribed for the purposes of subsection 78(1) of the Act:
- (a) Saturday;
- (b) Sunday;
- (c) January 1 or, if January 1 falls on a Saturday or a Sunday, the following Monday;
- (d) Good Friday;
- (e) Easter Monday;
- (f) the Monday before May 25;
- (g) June 24 or, if June 24 falls on a Saturday or a Sunday, the following Monday;
- (h) July 1 or, if July 1 falls on a Saturday or a Sunday, the following Monday;
- (i) the first Monday in August;
- (j) the first Monday in September;
- (j.1) September 30 or, if September 30 falls on a Saturday or a Sunday, the following Monday;
- (k) the second Monday in October;
- (l) November 11 or, if November 11 falls on a Saturday or a Sunday, the following Monday;
- (m) December 25 and 26 or
- (i) if December 25 falls on a Friday, that Friday and the following Monday, and
- (ii) if December 25 falls on a Saturday or a Sunday, the following Monday and Tuesday; and
Prescribed Fee
Marginal note: Small entity declaration filed after payment
5.1 Despite any provision of these Rules that sets out a small entity fee and a standard fee in respect of a patent or an application for a patent, if a patentee or applicant pays the standard fee and a small entity declaration is later filed in respect of that patent or application, the applicable fee is the standard fee.
Marginal note: Extension of time for payment of fee
5.2 For greater certainty, if the Commissioner extends the period of time for the payment of a fee under subsection 3(3) or (4), the applicable fee is
- (a) in the case of an extension under subsection 3(3), the standard fee that was payable on the day on which the small entity fee was paid; or
- (b) in the case of an extension under subsection 3(4), the fee that was payable on the day on which the insufficient payment was made.
Communications
Marginal note: Written communications to Commissioner
6 Written communications intended for the Commissioner or the Patent Office must be addressed to the “Commissioner of Patents”.
Marginal note: Postal address
- 7 (1) A person who is doing business before the Patent Office must provide the Commissioner with their postal address and a written communication sent by the Commissioner or the Patent Office to that person at that address is, unless the communication is withdrawn, considered to have been sent to that person on the date that it bears.
- Marginal note: Email address (2) If a person who is doing business before the Patent Office provides the Commissioner with their email address and authorizes the sending of communications to that address, a written communication sent by the Commissioner or the Patent Office as an email attachment to that person at that address is, unless the communication is withdrawn, considered to have been sent to that person on the date borne by the communication.
Marginal note: One patent or application for patent per communication
- 8 (1) A written communication intended for the Commissioner or the Patent Office must not relate to more than one patent or one application for a patent.
- Marginal note: Exceptions (2) Subsection (1) does not apply in respect of a written communication relating to
- (a) a change in a name or an address;
- (b) a transfer;
- (c) a request to register a document;
- (d) a fee to maintain in effect an application for a patent or the rights accorded by a patent;
- (e) an appointment, or revocation of an appointment, of a patent agent; or
- (f) a correction of an error, if the error and correction are the same in each patent or application for a patent.
Marginal note: Minimum content of written communications — applications
- 9 (1) A written communication in respect of an application for a patent that is intended for the Commissioner or the Patent Office must include the name of the applicant and the application number or, if the application number is not known, information that allows the application to be identified.
- Marginal note: Minimum content of written communications — patents (2) A written communication in respect of a patent that is intended for the Commissioner or the Patent Office must include the name of the patentee and the patent number.
Marginal note: Manner of submitting documents, information or fees
- 10 (1) Unless they are submitted by electronic means under subsection 8.1(1) of the Act, any documents, information or fees must be submitted to the Commissioner or the Patent Office by physical delivery to the Patent Office or to an establishment that is designated by the Commissioner as being accepted for that purpose.
- Marginal note: Date of receipt — 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
- (a) if they are delivered when the Office is open to the public, on the day on which they are delivered; and
- (b) if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.
- (a) if they are delivered when the establishment is open to the public,
- (i) in the case where the Patent Office is open to the public for all or part of the day on which they are delivered, on that day, and
- (ii) in any other case, on the first day on which the Patent Office is next open to the public; and
Marginal note: Communication sent — suspension, revocation or surrender
11 Despite sections 34 and 35, if a patent agent’s licence is suspended, revoked or surrendered, any communication respecting a patent or an application for a patent that is sent by the Commissioner or the Patent Office to that patent agent is considered not to have been sent to the patentee or applicant if
- (a) it is sent within four months before the date of the suspension, revocation or surrender and no reply is provided before that date; or
- (b) it is sent on the date of the suspension, revocation or surrender.
Marginal note: Acknowledgment by Commissioner
12 A written communication submitted to the Commissioner in respect of a filing under section 34.1 of the Act and a written communication 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 information must not be given as to the action taken unless the application for the patent is open to public inspection at the Patent Office.
Presentation of Documents to Commissioner or Patent Office
Marginal note: Manner of submission
- 13 (1) Subject to subsection (2), documents submitted in paper form in connection with a patent and an application for a patent must
- (a) be submitted on sheets of white paper that are free of creases and folds and that are 21.6 cm x 27.9 cm (8.5” x 11”) or 21 cm x 29.7 cm (A4 format);
- (b) be submitted in a manner that permits direct reproduction by the Patent Office; and
- (c) be free of interlineations, cancellations or corrections.
Marginal note: Layout
- 14 (1) Subject to subsection (2), the contents of each page of a document must be in an upright position.
- Marginal note: Exception (2) If it aids in presentation, figures, tables and chemical or mathematical formulas may appear sideways.
Marginal note: Documents in English or French
- 15 (1) All documents or information submitted or made available to the Commissioner or the Patent Office must be in English or French, except for
- (a) a document submitted or made available under paragraph 67(2)(b) or 72(3)(a) or subsection 74(1);
- (b) the specification and the drawings included in an application for a patent on its filing date that are contained in a document referred to in paragraph 71(d);
- (c) a document submitted under paragraph 85(1)(b);
- (d) a copy of an international application submitted under paragraph 154(1)(a);
- (e) text matter contained in a sequence listing; or
- (f) a document or information that is deemed to have been received by the Commissioner under section 156.
- (a) if the sequence listing contains an indication that either English or French is the original language of that text matter, the version that is in that original language; and
- (b) in any other case, the version that is in the same language as the claims.
Confidentiality
Marginal note: Information respecting application for patent
16 Unless otherwise required by law, the Commissioner and the Patent Office must not provide any information in respect of an application for a patent that is not open to public inspection at the Patent Office to any person other than
- (a) the applicant or, if there are joint applicants, any of the applicants;
- (b) a patent agent appointed in respect of that application; or
- (c) a person authorized by
- (i) the applicant, if there is a single applicant,
- (ii) the common representative, if there are joint applicants, or
- (iii) a patent agent appointed in respect of that application.
Marginal note: Prescribed date — withdrawal of request for priority
17 For the purposes of subsection 10(4) of the Act, if a request for priority is withdrawn with respect to a previously regularly filed application for a patent, the prescribed date is the earlier of
- (a) the day on which a period of 16 months after the filing date of the previously regularly filed application expires, and
- (b) if the request for priority is based on more than one previously regularly filed application, the day on which a period of 16 months after the earliest of the filing dates of those applications expires.
Marginal note: Prescribed date — withdrawn application
18 For the purposes of subsection 10(5) of the Act, the prescribed date is the earlier of
- (a) the day that is two months before the expiry date of the confidentiality period referred to in subsection 10(2) of the Act, and
- (b) if applicable, the day on which the applicant submits their approval under subsection 10(2) of the Act for the application for a patent to be open to public inspection before the expiry of the confidentiality period.
19 [Repealed, SOR/2021-131, s. 6]
20 [Repealed, SOR/2021-131, s. 6]
21 [Repealed, SOR/2021-131, s. 6]
22 [Repealed, SOR/2021-131, s. 6]
23 [Repealed, SOR/2021-131, s. 6]
24 [Repealed, SOR/2021-131, s. 6]
25 [Repealed, SOR/2021-131, s. 6]
Appointment of Common Representative
Marginal note: Power of joint applicants to appoint common representative
- 26 (1) If, in respect of an application for a patent, there are joint applicants, one applicant may be appointed by the other applicants as their common representative.
- Marginal note: Power of joint patentees to appoint common representative (2) If, in respect of a patent, there are joint patentees, one patentee may be appointed by the other patentees as their common representative.
- Marginal note: Manner of appointment (3) The appointment of a common representative must be made by one of the following methods:
- (a) in respect of a patent or an application for a patent, in a notice to that effect that is signed by the other applicants or patentees and submitted to the Commissioner;
- (b) in respect of an application for a patent — other than a divisional application or an international application — that includes a petition on the filing date, in that petition; and
- (c) in respect of a PCT national phase application, in a notice to that effect that is submitted to the Commissioner on or before the national phase entry date of that application.
- (a) in respect of an application for a patent, other than a PCT national phase application,
- (i) in the case where the application included a petition on the filing date, the first person named as an applicant in that petition,
- (ii) in the case where, on the filing date, the application did not include a petition but did include a single other document naming the joint applicants, the joint applicant whose name appears first in that document, and
- (iii) in any other case, the joint applicant whose name appears first when listed in alphabetical order on the filing date; and
- (i) if joint applicants are named in the corresponding request under Article 4 of the Patent Cooperation Treaty, if more than one applicant complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2), and if the first person named as an applicant in that request is one of those applicants, the first person named as an applicant in that request, and
- (ii) in any other case, the joint applicant who complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2), and whose name appears first when listed in alphabetical order.
- (a) if, at the end of the day on the presentation date of the divisional application, the person who was the common representative in respect of the original application was an applicant of the divisional application, that person; and
- (b) in any other case, the first person named as an applicant in the petition contained in the divisional application on its presentation date.
- (a) if, immediately after the transfer is recorded, the person who transferred those rights is still an applicant of the application or a patentee of the patent, that person; and
- (b) if, immediately after the transfer is recorded, the person who transferred those rights is no longer an applicant of the application or a patentee of the patent, the transferee whose name appears first in the request to record the transfer.
- (a) in respect of an application for a patent, other than a PCT national phase application or a divisional application, the filing date of the application;
- (b) in respect of a PCT national phase application, the national phase entry date;
- (c) in respect of a divisional application, the presentation date of the application;
- (d) despite paragraphs (a) to (c), in respect of an application in relation to which one or more corrections or decisions referred to in subsection (6) have been made, the date of that correction or decision or, if there is more than one correction or decision, or both a correction and a decision, the date of the most recent of those corrections or decisions;
- (e) in respect of a patent, other than a reissued patent, the date on which the patent was granted; and
- (f) in respect of a reissued patent, the date on which the patent was reissued.
- (a) if the rights of the common representative are transferred to a single person, that person; and
- (b) if the rights of the common representative are transferred to more than one person, the transferee whose name appears first in the request to record the transfer.
Appointment of Patent Agents
Marginal note: Power to appoint patent agent
- 27 (1) An applicant for a patent, a patentee or other person may appoint either one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of a patent or an application for a patent.
- Marginal note: Mandatory appointment of patent agent (2) An applicant for a patent must appoint one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of their application for a patent if
- (a) the application is filed by a person other than the inventor;
- (b) there is more than one inventor and the application is not filed jointly by all of the inventors; or
- (c) a transfer, in whole or in part, of the application has been recorded by the Commissioner under section 49 of the Act.
- (a) in respect of a patent or an application for a patent, in a notice to that effect that is submitted to the Commissioner and signed by
- (i) if there is a single applicant or patentee, the applicant or patentee,
- (ii) if there is a single applicant or patentee and a document authorizing a foreign practitioner to appoint a patent agent is signed by the applicant or patentee and submitted at the same time to the Commissioner, that foreign practitioner,
- (iii) if there are joint applicants or patentees, the common representative, or
- (iv) if there are joint applicants or patentees and a document authorizing a foreign practitioner to appoint a patent agent is signed by the common representative and submitted at the same time to the Commissioner, that foreign practitioner;
- (a) that person; or
- (b) if a document signed by that person authorizing a foreign practitioner to appoint a patent agent is submitted at the same time to the Commissioner, that foreign practitioner.
- (a) a notice to that effect is submitted to the Commissioner and signed by that one patent agent or any of the patent agents at that firm or by
- (i) if there is a single applicant or patentee, the applicant or patentee,
- (ii) if there is a single applicant or patentee and a document authorizing a foreign practitioner to revoke the appointment is signed by the applicant or patentee and is submitted at the same time to the Commissioner, that foreign practitioner,
- (iii) if there are joint applicants or patentees, the common representative, or
- (iv) if there are joint applicants or patentees and a document signed by the common representative authorizing a foreign practitioner to revoke the appointment is submitted at the same time to the Commissioner, that foreign practitioner; or
- (a) a notice to that effect, signed by that person, by that one patent agent or by any of the patent agents at that firm, is submitted to the Commissioner;
- (b) a document signed by that person authorizing a foreign practitioner to revoke the appointment is submitted to the Commissioner at the same time as a notice revoking the appointment signed by that foreign practitioner; or
- (c) the licence of that one patent agent, or each of the patent agents at that firm, is suspended, revoked or surrendered.
Marginal note: Power to appoint associate patent agent
- 28 (1) A patent agent appointed by an applicant for a patent, a patentee or other person to represent them before the Patent Office in respect of a patent or an application for a patent may appoint one patent agent or all the patent agents at the same firm as an associate patent agent in respect of that patent or application.
- (2) [Repealed, SOR/2021-131, s. 8]
- Marginal note: Manner of appointment (3) The appointment of one patent agent or all the patent agents at the same firm as an associate patent agent must be made by one of the following methods:
- (a) in respect of a patent or an application for a patent, in a notice to that effect that is signed by the patent agent appointing the associate patent agent and submitted to the Commissioner;
- (b) in respect of an application for a patent — other than a divisional application or an international application — that includes a petition on the filing date, in that petition if the petition is submitted by a patent agent;
- (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner by a patent agent on or before the national phase entry date of that application; and
- (d) in respect of a divisional application, in the petition included in the application on its presentation date if the petition is submitted by a patent agent.
- (a) in the case where the associate patent agent was appointed by one patent agent who was appointed under subsection 27(3) or (4),
- (i) a notice of revocation signed by the associate patent agent or the patent agent is submitted to the Commissioner,
- (ii) the associate patent agent’s licence is suspended, revoked or surrendered, or
- (iii) the appointment of the patent agent is revoked; and
- (i) a notice of revocation signed by the associate patent agent or by one of the patent agents at the firm is submitted to the Commissioner,
- (ii) the associate patent agent’s licence is suspended, revoked or surrendered, or
- (iii) the appointment of all the patent agents at the firm is revoked.
- (a) in the case where they were appointed by one patent agent who was appointed under subsection 27(3) or (4),
- (i) a notice of revocation signed by one of the patent agents at the firm acting as an associate patent agent or by the patent agent who appointed them is submitted to the Commissioner,
- (ii) the licence of each of the patent agents acting as an associate patent agent is suspended, revoked or surrendered, or
- (iii) the appointment of the patent agent is revoked; and
- (i) a notice of revocation signed by one of the patent agents at the firm acting as an associate patent agent, or by one of the patent agents at the firm that appointed them, is submitted to the Commissioner,
- (ii) the licence of each of the patent agents acting as an associate patent agent is suspended, revoked or surrendered, or
- (iii) the appointment under subsection 27(3) or (4) of all the patent agents at the firm is revoked.
Marginal note: Patent agent — member of firm
28.1 If all the patent agents at the same firm have been appointed under section 27 or 28, the following rules apply:
- (a) a patent agent who becomes a member of the firm after the appointment is deemed to be appointed beginning on the day on which they become a member of the firm;
- (b) a person who is a member of the firm who becomes a patent agent after the appointment is deemed to have been appointed beginning on the day on which they become a patent agent;
- (c) the appointment of a patent agent who ceases to be a member of the firm is deemed to be revoked on the day on which they cease to be a member of the firm; and
- (d) the appointment of a patent agent whose licence is suspended, revoked or surrendered is deemed to be revoked on the day on which their licence is suspended, revoked or surrendered.
Marginal note: Appointment document — one patent agent
- 29 (1) A document appointing one patent agent must include the name and postal address of that patent agent.
- Marginal note: Appointment document — all the patent agents (2) A document appointing all the patent agents at the same firm must include the name and postal address of the firm. An appointment document that includes only the name and postal address of the firm is sufficient to appoint all the patent agents at that firm.
Marginal note: Written communications
29.1 If all the patent agents at the same firm have been appointed or are deemed to have been appointed under section 27 or 28, any written communication sent by the Commissioner or the Patent Office to the firm is considered to have been sent to all of the patent agents at the firm.
Marginal note: Patent agent by default — transfer
30 The patent agent or all the patent agents at the same firm who were appointed, other than as an associate patent agent, to represent an applicant or patentee before the Patent Office are, unless otherwise indicated in a request to record a transfer under subsection 49(2) or (3) of the Act, deemed to have been appointed by the transferee in respect of the patent or the application that is the subject of the recording.
Marginal note: Notice requiring appointment of patent agent
31 If an applicant for a patent is required under subsection 27(2) to appoint a patent agent but no patent agent is appointed, the Commissioner must by notice to the applicant require that, not later than three months after the date of the notice, the applicant appoint a patent agent.
Marginal note: Successor patent agent
- 32 (1) A patent agent who, in respect of a patent or application for a patent, demonstrates to the Commissioner that they are the successor to a patent agent or all the patent agents at the same firm who were appointed under section 27 or 28 and who have since withdrawn from practice is deemed to be appointed under section 27 or 28, as the case may be, in respect of that patent or application.
- Marginal note: Successor patent agents (2) All the patent agents at the same firm who, in respect of a patent or application for a patent, demonstrate to the Commissioner that they are the successors to a patent agent or all the patent agents at the same firm who were appointed under section 27 or 28 and who have since withdrawn from practice are deemed to be appointed under section 27 or 28, as the case may be, in respect of that patent or application.
Representation
Marginal note: Effect of act by common representative
33 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to a common representative, has the effect of an act done by or in relation to all of the applicants or patentees.
Marginal note: Effect of act by patent agent
34 Subject to sections 36 and 37, in any business before the Patent Office, an act done 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 is appointed in respect of that application or patent, has the same effect as an act done by or in relation to the applicant for a patent, a patentee or other person who appointed the patent agent.
Marginal note: Effect of act by associate patent agent
35 Subject to sections 36 and 37, in any business before the Patent Office, an act done 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 same effect as an act done by or in relation to the applicant for a patent, a patentee or other person who appointed the patent agent who appointed the associate patent agent.
Marginal note: Prosecuting or maintaining in effect application for patent
- 36 (1) Subject to subsections (2) to (5), only the following persons are authorized to act in any business before the Patent Office for the purpose of prosecuting or maintaining in effect an application for a patent:
- (a) if, in respect of the application, a patent agent is appointed or there is a requirement under subsection 27(2) to appoint a patent agent, the patent agent who is appointed; and
- (b) in any other case,
- (i) if there is a single applicant, the applicant, and
- (ii) if there are joint applicants, the common representative.
- (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and
- (b) if there are joint applicants, they must be represented by one of the applicants or by a person authorized by one of the applicants.
- (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and
- (b) if there are joint applicants,
- (i) in the case where the transfer is a transfer of the right or interest of a single joint applicant, the joint applicants must be represented by that joint applicant or by the common representative, or by a person authorized by that joint applicant or by the common representative, and
- (ii) in any other case, the joint applicants must be represented by the common representative or by a person authorized by the common representative.
- (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and
- (b) if there are joint applicants, they must be represented by the common representative or by a person authorized by the common representative.
- (a) if there is a single applicant, they may represent themselves; and
- (b) if there are joint applicants, they may be represented by the common representative.
- SOR/2021-131, s. 11
- SOR/2022-120, s. 7(E)
Marginal note: Procedure relating to patent
- 37 (1) Subject to subsection (2), in any business before the Patent Office for the purpose of a procedure relating to a patent,
- (a) if there is a single patentee, they must represent themselves or be represented by any person authorized by them; and
- (b) if there are joint patentees,
- (i) for the purpose of paying a fee under section 46 of the Act, the patentees must be represented by one of the patentees or by a person authorized by one of the patentees,
- (ii) for the purpose of submitting a request to record a transfer under subsection 49(3) of the Act,
- (A) in the case where the transfer is a transfer of the right or interest of a single joint patentee, the joint patentees must be represented by that joint patentee or by the common representative, or by a person authorized by that joint patentee or by the common representative, and
- (B) in any other case, the joint patentees must be represented by the common representative or a person authorized by the common representative, and
- (a) if there is a single patentee, they must represent themselves or be represented by a patent agent who has been appointed in respect of that business; and
- (b) if there are joint patentees, the patentees must be represented by the common representative or by a patent agent who has been appointed in respect of that business.
Marginal note: Clarification
38 For greater certainty, sections 33 to 37 do not apply to the act of signing
- (a) a small entity declaration;
- (b) a notice of appointment of a common representative or a patent agent;
- (c) a notice of revocation of an appointment of a patent agent; or
- (d) a document authorizing a foreign practitioner to appoint or revoke the appointment of a patent agent, have an interview with an examiner or sign a small entity declaration.
Marginal note: Interview with examiner
39 Only the following persons may have an interview with an examiner regarding an application for a patent:
- (a) if, in respect of that application, a patent agent is appointed or there is a requirement under subsection 27(2) to appoint a patent agent,
- (i) the patent agent who is appointed, and
- (ii) with the permission of the patent agent who is appointed,
- (A) if there is a single applicant, the applicant,
- (B) if there is a single applicant and a document authorizing a foreign practitioner to have an interview with an examiner is signed by the applicant, that foreign practitioner,
- (C) if there are joint applicants, the common representative, or
- (D) if there are joint applicants and a document authorizing a foreign practitioner to have an interview with an examiner is signed by the common representative, that foreign practitioner; and
- (i) the applicant, if there is a single applicant, and
- (ii) the common representative, if there are joint applicants.
Marginal note: Notice of disregarded communication
- 40 (1) If, in any business for the purpose of prosecuting or maintaining in effect an application for a patent or for the purpose of a procedure relating to a patent, a joint applicant or joint patentee who is not the common representative of the joint applicants or joint patentees sends a written communication to the Commissioner in respect of any 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 will not have regard to that communication unless, not later than three months after the date of the notice, that joint applicant or joint patentee is appointed in accordance with paragraph 26(3)(a) to represent the applicants or patentees as the common representative and requests that the Commissioner have regard to the communication.
- Marginal note: Exception (2) Subsection (1) does not apply to a communication in respect of any business under subsection 36(2), (3) or (4) or to a communication in respect of any business for the purpose of a procedure relating to a patent, other than a communication in respect of business referred to in subsection 37(2).
- Marginal note: Communication deemed received (3) If, not later than 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 26(3)(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 from the joint applicant or joint patentee.
Marginal note: Notice of disregarded communication
- 41 (1) If a patent agent who is not appointed to represent an applicant or patentee in respect of a patent or an application for a patent communicates in writing with the Commissioner on behalf of that applicant or patentee for the purpose of prosecuting or maintaining in effect that application or for the purpose of a procedure relating to that patent and the communication identifies that patent agent, the Commissioner must by notice inform the patent agent that the Commissioner will not have regard to that communication unless, not later than 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.
- Marginal note: Exception (2) Subsection (1) does not apply to a communication in respect of any business under subsection 36(2), (3) or (4) or to a communication in respect of any business for the purpose of a procedure relating to a patent, other than a communication in respect of any business referred to in subsection 37(2).
- Marginal note: Communication deemed received (3) If, not later than 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 originally received from the patent agent.
Marginal note: Named patent agent
- 41.1 (1) In any business before the Patent Office in respect of which a patent agent acts under subsection 36(1) or (5), or represents a patentee under subsection 37(2), written communications on behalf of the applicant or patentee must be submitted to the Commissioner or the Patent Office by a named patent agent.
- Marginal note: Notice (2) If the patent agent is not named, the Commissioner must by notice inform the sender that the Commissioner will not have regard to the communication unless, not later than three months after the date of the notice, the patent agent who submitted the communication provides their name to the Commissioner and requests that the Commissioner have regard to the communication.
- Marginal note: Date communication received (3) If the name of the patent agent and the request referred to in subsection (2) are provided to the Commissioner within the time limit set out in that subsection, the original communication is considered to have been received on the day on which it was actually received by the Commissioner or the Patent Office.
Government-owned Patents
Marginal note: Notice to applicant
42 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.
Marginal note: Inspection of defence-related application for patent
43 The Commissioner must permit a public servant who is authorized in writing by the Minister of National Defence, or an officer of the Canadian Forces who is 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 to do so and to obtain a copy of the application.
Presentation of Application for a Patent
General
Marginal note: Application fee
- 44 (1) For the purposes of subsection 27(2) of the Act, the prescribed application fee is
- (a) the small entity fee set out in item 6 of Schedule 2, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in respect of the application for a patent in accordance with subsection (3),
- (i) on or before the filing date of the application or, in the case of a divisional application, on or before the presentation date of the divisional application, or
- (ii) if a notice is required to be given under subsection 27(7) of the Act, before the notice is given or, if the notice has been given, not later than three months after the date of the notice; and
- (a) in respect of an application for a patent — other than a PCT national phase application or a divisional application — the applicant of the application on the filing date is, on that date, an entity that has fewer than 100 employees or is a university, other than
- (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 employees or more, or
- (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 has 100 employees or more;
- (a) be filed with the Commissioner in the petition or in a document other than the abstract, the specification or the drawings, that identifies the application for a patent to which the declaration relates;
- (b) contain a statement to the effect that the applicant believes that the small entity status condition set out in subsection (2) is met in respect of that application for a patent;
- (c) be signed by a patent agent appointed in respect of that application or
- (i) if there is a single applicant, the applicant,
- (ii) if there is a single applicant and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the applicant and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,
- (iii) if there are joint applicants, any one of the applicants, or
- (iv) if there are joint applicants and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the applicants and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and
- SOR/2021-131, s. 18
- SOR/2023-113, s. 1
Marginal note: Late fee
45 For the purposes of subsection 27(7) of the Act, the prescribed late fee is the fee set out in item 7 of Schedule 2.
Marginal note: Text in English or French
46 The text matter in the abstract, the description, the drawings and the claims, other than any text matter contained in a sequence listing, must be entirely in English or entirely in French.
Marginal note: Page margins — description, claims and abstract
-
47 (1) The minimum margins of pages that contain the description, the claims or the abstract must be as follows:
- 48 (1) All text matter in the description and the claims must be at least 1 1/2 line spaced, except for sequence listings, tables and chemical and mathematical formulas.
- Marginal note: Font size (2) All text matter in the description and the claims must be in characters the capital letters of which are not less than 0.21 cm in height.
- 50 (1) The pages of the specification must be numbered consecutively.
- Marginal note: Position of page numbers (2) The page numbers must be centered at the top or bottom of each page, but must not be placed in the margin.
- 51 (1) The petition, the abstract, the description and the claims must not contain drawings.
- Marginal note: Formulas (2) The abstract, the description and the claims may contain chemical or mathematical formulas.
- (a) a request for the grant of a patent;
- (b) the title of the invention; and
- (c) the name and postal address of the applicant.
- 54 (1) 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.
- Marginal note: Statement (2) The application must contain
- (a) a statement to the effect that the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent;
- (b) a statement to the 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; or
- (c) in respect of a PCT national phase application, a declaration as to the applicant’s or, if there are joint applicants, the applicants’ entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17(ii) of the Regulations under the PCT.
Abstract
Marginal note: Inclusion of abstract
- 55 (1) An application for a patent must contain an abstract that has a concise summary of the disclosure that appears in the description, claims and drawings and, if applicable, must include the chemical formula that, among all the formulas included in the application, best characterizes the invention.
- Marginal note: Technical field (2) The abstract must specify the technical field to which the invention relates.
- Marginal note: Drafting (3) The abstract must be drafted in a manner that allows an understanding of the technical problem, the gist of the solution of that problem by means of the invention and the principal use or uses of the invention.
- Marginal note: Scanning tool (4) The abstract must be drafted in a manner that can efficiently serve as a scanning tool for the purposes of searching in the particular art.
- Marginal note: Word limit (5) The abstract must not contain more than 150 words.
- Marginal note: Reference to drawings (6) In the abstract, a 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.
- Marginal note: Amendment or replacement of abstract (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.
- Marginal note: 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
Marginal note: Contents, manner and order
- 56 (1) The description must include the following information, set out in the following manner and order:
- (a) the title of the invention must be stated in a short and precise manner and must not include a trademark, coined word or personal name;
- (b) the technical field to which the invention relates must be specified;
- (c) the background art that, as far as is known to the applicant, is important for the understanding, searching and examination of the invention must be described;
- (d) a description of the invention must be set out in terms that permit the technical problem and its solution to be understood, even if that problem is not expressly stated;
- (e) the figures in the drawings, if any, must be concisely described;
- (f) at least one mode contemplated by the inventor for carrying out the invention must be set out using examples, if appropriate, and with reference to the drawings, if any; and
- (g) a sequence listing, if required by subsection 58(1), must be included.
Marginal note: No incorporation by reference
- 57 (1) The description must not incorporate any document by reference.
- Marginal note: 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.
- Marginal note: Identification of documents (3) Every document referred to in the description must be fully identified.
Sequence Listings
Marginal note: PCT sequence listing standard
- 58 (1) If a specification discloses a nucleotide sequence or amino acid sequence that must, in accordance with the PCT sequence listing standard, be included in a sequence listing and that is not identified as forming a part of the prior art, the description must contain the 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.
- Marginal note: One copy per application (2) An application for a patent must not contain more than one copy of a particular sequence listing regardless of its form of presentation.
- Marginal note: Statement — application originally filed without sequence listing (3) If an application for a patent originally filed without a sequence listing is amended to include one, the applicant must file a statement that the listing does not go beyond the disclosure in the application as filed.
- Marginal note: Sequence identification number (4) If a sequence included in a sequence listing is referred to in the claims, the drawings or the part of the description other than sequence listings, the reference must include the sequence identification number, as defined in the PCT sequence listing standard, preceded by “SEQ ID NO:”.
- Marginal note: Definitions (5) The following definitions apply in this section. has the same meaning as in the PCT sequence listing standard. ( séquence d’acides aminés ) has the same meaning as in the PCT sequence listing standard. ( séquence de nucléotides )
Drawings
Marginal note: Requirements
- 59 (1) Subject to subsection (2), the drawings must be in black, sufficiently dense and dark, well-defined lines to permit legible reproduction and must not be photographs.
- Marginal note: 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.
- Marginal note: No colourings (3) Except in the case of photographs, the drawings must be without colourings.
- Marginal note: Cross-sections (4) 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.
- Marginal note: Numbers, letters and lead lines (5) All numbers, letters and lead lines in the drawings must be simple and clear.
- Marginal note: Proportionality (6) 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.
- Marginal note: Font size (7) Numbers and letters in the drawings must be at least 0.32 cm in height.
- Marginal note: Multiple figures (8) A single page of the drawings may contain several figures.
- Marginal note: Figure spread out on multiple pages (9) If a figure is spread out over two or more pages, each part of the figure must be so arranged that the entire figure can be assembled without concealing any part of the figure.
- Marginal note: Numbering of figures (10) If there is more than one figure, the figures must be numbered consecutively.
- Marginal note: Reference characters (11) A reference character not mentioned in the description must not appear in a drawing and vice versa.
- Marginal note: Consistent use of reference characters (12) A reference character used for a particular feature must be the same throughout the abstract, the specification and the drawings.
- Marginal note: No unnecessary text (13) The drawings must not contain text matter except to the extent necessary to understand the drawings.
Claims
Marginal note: Form
60 The claims must be clear and concise and must be fully supported by the description independently of any document referred to in the description.
Marginal note: Numbering of claims
61 If there is more than one claim, the claims must be numbered consecutively in Arabic numerals beginning with the number “1”.
Marginal note: No references to description or drawings
- 62 (1) Subject to subsections (2) to (4), the claims must not, except when 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”.
- Marginal note: 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, that appear in the drawings and relate to those features.
- (3) [Repealed, SOR/2022-120, s. 10]
- Marginal note: Deposit of biological material (4) If the description refers to a deposit of biological material, the claims may refer to that deposit.
Marginal note: Dependent claim
- 63 (1) Subject to subsection (2), a claim that includes all the features of one or more other claims (referred to in this section as a “dependent claim”) must refer by number to the other claim or claims and must state the additional features claimed.
- Marginal note: Reference to preceding claim (2) A dependent claim may only refer to a preceding claim or claims.
- Marginal note: Reference 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.
- Marginal note: Limitations (4) A dependent claim is considered to include 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 is considered to include all the limitations contained in the particular claim in respect of which it is considered.
Non-compliant Application for a Patent
Marginal note: Prescribed date — requirements not met
64 For the purposes of subsection 27(6) of the Act, the prescribed date is the last day of a period of three months after the date of the notice referred to in that subsection.
Marginal note: Notice
65 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 modify the application in order to meet those requirements not later than three months after the date of the notice.
Marginal note: Prescribed date — application fee not paid
- 66 (1) For the purposes of subsection 27(7) of the Act, the prescribed date is the last day of a period of three months after the date of the notice referred to in that subsection.
- Marginal note: Application considered withdrawn (2) If an applicant fails to comply with a notice given under subsection 27(7) of the Act, the application for a patent is considered to be withdrawn.
Reference to Previously Filed Application for a Patent
Marginal note: Prescribed period
- 67 (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
- (a) the end of a period of two months after that date or, if a notice is sent under subsection 28(2) of the Act, the earlier of
- (i) the end of a period of two months after the date of the notice, and
- (ii) the end of a period of six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act, and
- (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
- (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 statement must indicate the number of the previously filed application, and
- (ii) if the number of the previously filed application for a patent is not known to the applicant or to a patent agent appointed in respect of the application, the statement must indicate
- (A) the provisional number for the previously filed application given by that office,
- (B) the date on which the previously filed application was sent to that office, and the statement must be accompanied by a copy of the request portion of the application, or
- (C) the reference number given to the previously filed application by the applicant and indicated in it, 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 that office; and
- (i) submit to the Commissioner a copy of the previously filed application for a patent, or
- (ii) make a copy of the previously filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose and inform the Commissioner that it is so available.
Maintenance Fees — Application for a Patent
Marginal note: Prescribed fee
- 68 (1) Subject to subsection (2), for the purposes of subsection 27.1(1) of the Act, the prescribed fee to maintain an application for a patent in effect is, for an anniversary date set out item 8 of Schedule 2, other than such an anniversary date that, in the case of a PCT national phase application, falls before the national phase entry date of that application,
- (a) the small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)
- (i) on or before that anniversary date, or
- (ii) if a notice is required to be sent under paragraph 27.1(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of a period of six months after that anniversary date and the end of a period of two months after the date of the notice; and
- (a) the small entity fees set out in item 8 of Schedule 2 for the anniversary dates falling in that period, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)
- (i) on or before the presentation date, or
- (ii) if a notice is required to be sent under paragraph 27.1(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of a period of six months after the presentation date and the end of a period of two months after the date of the notice, and
Marginal note: Dates
69 For the purposes of subsection 27.1(1) and paragraph 73(1)(c) of the Act, the prescribed dates are
- (a) for a fee referred to in subsection 68(1) of these Rules, the anniversary date for which it is paid; and
- (b) for the fee referred to in subsection 68(2) of these Rules, the presentation date of the divisional application.
Marginal note: Late fee
70 For the purposes of subsection 27.1(2) of the Act, the prescribed late fee is the fee set out in item 9 of Schedule 2.
Filing Date
Marginal note: Prescribed documents and information
71 The documents and information prescribed for the purposes of subsection 28(1) of the Act are
- (a) an explicit or implicit indication that the granting of a Canadian patent is being sought;
- (b) information allowing the identity of the applicant to be established;
- (c) information allowing the Commissioner to contact the applicant; and
- (d) a document, in any language, that on its face appears to be a description.
Addition to Specification or Addition of Drawing
Marginal note: Notice of missing parts of application
- 72 (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.
- Marginal note: Prescribed period for addition (2) For the purposes of subsection 28.01(1) of the Act, the additions referred to in that subsection may be made not later than two months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act or, if the Commissioner notifies the applicant under subsection (1), before the earlier of
- (a) the end of a period of two months after the date of the notice, and
- (b) the end of a period of six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act.
- (a) if the previously regularly filed application for a patent was not filed in Canada, must either
- (i) submit to the Commissioner a copy of that application, or
- (ii) make a copy of that application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose and inform the Commissioner that it is so available;
Request for Priority
Marginal note: Requirements
- 73 (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, the specification or the drawings included in that application, before the earlier of
- (a) the later of
- (i) the end of a period of 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request is based, and
- (ii) the end of a period of four months after the filing date of the pending application, and
- (a) the end of the time prescribed by subsection (1), as determined using the corrected filing date, and
- (b) the end of the time prescribed by subsection (1), as determined using the uncorrected filing date.
- SOR/2022-120, s. 11
- SOR/2022-120, s. 53
Marginal note: Requirements
- 74 (1) If an applicant for a patent has requested 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 Canada — the applicant must, not later than the day referred to in subsection (2), with respect to each previously regularly filed application,
- (a) submit to the Commissioner a copy of the previously regularly filed application certified by the patent office with which it was filed and a certificate from that office showing the filing date; or
- (b) make a copy of the previously regularly filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose and inform the Commissioner that it is so available.
- (a) the last day of a period of 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request for priority is based,
- (b) the last day of a period of four months after the filing date of the pending application for a patent, and
- (c) if the pending application for a patent is a PCT national phase application, the national phase entry date of that application.
- (a) before the end of the time prescribed by subsection (1), a request is made to the patent office where the previously regularly filed application was filed to provide the copy and certificate referred to in paragraph (1)(a); and
- (b) not later than two months after the date of the notice referred to in subsection (4), 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.
Marginal note: Withdrawal of request for priority
- 75 (1) For the purposes of subsection 28.4(3) of the Act, a request for priority may be withdrawn by filing a request to that effect with the Commissioner.
- Marginal note: Effective date (2) The effective date of the withdrawal of a request for priority is the date on which the request is received by the Commissioner.
Marginal note: Notice to submit translation
- 76 (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 partly or entirely in a language other than 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 an English or French translation of the whole or a specified part of the previously regularly filed application not later than four months after the date of the notice.
- Marginal note: 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 require the applicant of the pending application for a patent to submit to the Commissioner not later than four months after the date of the notice either
- (a) a statement by the translator that, to the best of the translator’s knowledge, the translation is accurate; or
- (b) a new English or French translation, as applicable, together with a statement by the translator that, to the best of the translator’s knowledge, the new translation is accurate.
Restoration of Right of Priority
Marginal note: Prescribed time
- 77 (1) For the purposes of paragraph 28.4(6)(b) of the Act,
- (a) in respect of a pending application, or a co-pending application, that is not a PCT national phase application, the applicant must meet the conditions set out in subparagraphs 28.4(6)(b)(i) to (iii) of the Act not later than two months after the filing date of the pending application or the co-pending application, as the case may be; and
- (b) in respect of a pending application, or a co-pending application, that is a PCT national phase application,
- (i) the applicant must meet the conditions referred to in subparagraphs 28.4(6)(b)(i) and (ii) of the Act not later than one month after the national phase entry date of that application, and
- (ii) the applicant must meet the condition referred to in subparagraph 28.4(6)(b)(iii) of the Act before the earlier of
- (A) the end of the time prescribed by subsection 73(1), and
- (B) the end of one month after the national phase entry date of that application.
- (a) must make a request for priority in the petition or in a document other than the abstract, the specification or the drawings; and
- (b) must submit to the Commissioner the filing date and the name of the country or office of filing of the previously regularly filed application for a patent.
Marginal note: Divisional application — within 12 months
78 Paragraph 28.4(6)(b) of the Act does not apply in respect of a divisional application, in relation to a previously regularly filed 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 that previously regularly filed application for a patent.
Request for Examination
Marginal note: Contents of request
79 A request for examination of an application for a patent, referred to in subsection 35(1) of the Act, must contain
- (a) the name and postal address of the person making the request;
- (b) the name of the applicant, if the person making the request is not the applicant; and
- (c) the application number or other information sufficient to identify the application.
Marginal note: Fee for examination of application
- 80 (1) For the purposes of subsection 35(1) of the Act, the prescribed fee for the examination of an application for a patent is
- (a) the small entity fee set out in subparagraph 10(a)(i) or (ii) of Schedule 2, as applicable, and, for each claim in excess of 20 that is included in the application on the day on which the request for examination is made, the small entity fee set out in paragraph 10(b) of that Schedule, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)
- (i) within the applicable time prescribed by section 81, or
- (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 has been sent, before the end of two months after the date of the notice; and
Marginal note: Prescribed time — subsection 35(2) of 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
- (a) in respect of an application for a patent other than a divisional application, the end of a period of four years after the filing date of the application; and
- (b) in respect of a divisional application, the later of
- (i) the end of the time that is applicable under this subsection in respect of the original application, and
- (ii) the end of a period of three months after the presentation date of the divisional application.
Marginal note: Late fee
82 For the purposes of subsection 35(3) of the Act, the prescribed late fee is the fee set out in item 11 of Schedule 2.
Marginal note: Prescribed time — subsection 35(5) and paragraph 73(1)(e) of Act
- 83 (1) For the purposes of subsection 35(5) and paragraph 73(1)(e) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before the end of a period of three months after the date of the notice referred to in that subsection or that paragraph.
- Marginal note: Non-application of subsection 3(1) (2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).
Marginal note: Date of payment
83.1 If an amount paid for the examination of an application for a patent is less than the prescribed fee set out in subsection 80(1) and an amendment is made to the application on or after the day on which the request for examination is made to reduce the number of claims such that the amount paid is greater than or equal to the amount of that prescribed fee, the fee is considered to have been paid on the day on which the amendment is made.
Examination
Marginal note: Advancing examination
- 84 (1) In respect of an application for a patent that is open to public inspection at the Patent Office, the Commissioner must advance out of its routine order the examination of the application under subsection 35(1) of the Act on the request of
- (a) any person, if they pay the fee set out in item 12 of Schedule 2 and file with the Commissioner a statement indicating that failure to advance the examination of the application is likely to prejudice that person’s rights; or
- (b) the applicant, if the applicant files with the Commissioner a statement 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 or natural resources.
- (a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application; or
- (b) the application is or was deemed to be abandoned.
Marginal note: Notice — invention in foreign application
- 85 (1) If, in the course of examining an application for a patent, an examiner 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
- (a) to submit the following information or, if any of the information is not known to the applicant, to so indicate:
- (i) any prior art cited in respect of the foreign application for a patent,
- (ii) the application number of the foreign application for a patent, the filing date and, if the patent has been granted, the patent number, and
- (iii) particulars of any opposition, re-examination, impeachment or similar proceedings in respect of the foreign application or any patent granted on the basis of that application;
Marginal note: Continued examination
- 85.1 (1) If three notices have been sent to the applicant under either or both of subsections 86(2) and (5) since the examination of an application for a patent under subsection 35(1) of the Act began, and a notice of allowance or conditional notice of allowance has not been set aside under subsection (4) before the third notice is sent, the examiner must, by notice, inform the applicant of the need to make a request for continued examination and pay the prescribed fee.
- Marginal note: Continued examination — subsequent request (2) If two notices have been sent to the applicant under either or both of subsections 86(2) and (5) since the most recent request for continued examination was made, the examiner must, by notice, inform the applicant of the need to make a request for continued examination and pay the prescribed fee.
- Marginal note: Time limit for making request (3) The applicant must make a request for continued examination and pay the prescribed fee not later than four months after the day on which a notice is sent under subsection (1) or (2) to inform the applicant of the need to make the request and pay the fee.
- Marginal note: Notice set aside (4) A notice of allowance or conditional notice of allowance that is sent to the applicant under subsection 86(1), (1.1), (6) or (10) is set aside if the applicant makes a request for continued examination and pays the prescribed fee not later than the earlier of
- (a) four months after the day on which the notice of allowance or conditional notice of allowance is sent; and
- (b) the day before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, the day before the day on which the final fee is paid again.
- (a) the small entity fee set out in item 13 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3) before the end of the applicable time, referred to in subsection (3) or (4), for the payment of the fee; or
- (b) in any other case, the standard fee set out in that item.
- SOR/2022-120, s. 15
- SOR/2023-113, s. 2
Marginal note: Notice — application found allowable by examiner
- 86 (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 to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.
- Marginal note: Conditional notice of allowance (1.1) If an examiner has reasonable grounds to believe that, but for certain minor defects, an application for a patent would comply with the Act and these Rules, the Commissioner may by notice inform the applicant that the application has been found to be allowable subject to certain amendments being made and require the applicant to, not later than four months after the day on which the notice is sent, make those amendments, or submit arguments as to why the application does comply, and pay the final fee set out in item 14 of Schedule 2.
- Marginal note: 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 with the Act and these Rules, or to submit arguments as to why the application does comply, not later than four months after the date of the notice.
- Marginal note: Rejection for defect (3) If an applicant replies in good faith to the requisition made under subsection (2), on or before the date set out in subsection (4), but the examiner, after receiving the reply, has reasonable grounds to believe that the application for a patent still does not comply with the Act or these Rules in respect of any 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.
- Marginal note: Date (4) For the purpose of subsection (3), the date is the last day of the period referred to in subsection (2) 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 made under subsection (2), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.
- Marginal note: Final action (5) 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, not later than four months after the date of the notice.
- Marginal note: Notice — application found allowable after final action (6) If an applicant, on or before the date set out in subsection (8), replies in good faith to a requisition made under subsection (5) and 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 and the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.
- Marginal note: Rejection not withdrawn after final action (7) If an applicant replies in good faith to a requisition made under subsection (5) on or before the date set out in subsection (8) but, after that date, the examiner still has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules,
- (a) the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;
- (b) any amendments made to that application during the period beginning on the date of the final action notice and ending on the date set out in subsection (8) are considered never to have been made; and
- (c) the application must be reviewed by the Commissioner.
- (a) by notice, inform the applicant that the application does not comply with the Act or these Rules and that the notice of allowance is withdrawn; and
- (b) if the final fee has been paid, refund it.
- (a) by notice, inform the applicant that the application does not comply with the Act or these Rules and that the conditional notice of allowance is withdrawn; and
- (b) if the final fee has been paid, refund it.
- (a) by notice, inform the applicant that the application does not comply with the Act or these Rules and that the conditional notice of allowance is withdrawn; and
- (b) if the final fee has been paid, refund it.
- SOR/2022-120, s. 16
- SOR/2022-120, s. 53
Marginal note: Final fee
- 87 (1) The prescribed final fee in respect of an application for a patent is
- (a) if the small entity status condition set out in subsection 44(2) is met and if a small entity declaration is filed in respect of the application in accordance with subsection 44(3) before the end of the applicable time for the payment of the fee, the sum of the following:
- (i) the small entity fee set out in paragraph 14(a) of Schedule 2,
- (ii) the fee set out in paragraph 14(b) of Schedule 2 for each page of specification and drawings in excess of 100 pages other than pages of a sequence listing submitted in electronic form, and
- (iii) the small entity fee set out in paragraph 14(c) of Schedule 2 for each claim in excess of 20 that is included in the application at any time during the period beginning on the day after the day on which the request for examination is made or, if section 83.1 applies in respect of the application, on the day after the day on which the amendment referred to in that section is made and ending on the day on which the final fee is paid and in respect of which the fee set out in paragraph 10(b) of Schedule 2 was not paid in connection with the request for examination; and
- (i) the standard fee set out in paragraph 14(a) of Schedule 2,
- (ii) the fee set out in paragraph 14(b) of Schedule 2 for each page of specification and drawings in excess of 100 pages other than pages of a sequence listing submitted in electronic form, and
- (iii) the standard fee set out in paragraph 14(c) of Schedule 2 for each claim in excess of 20 that is included in the application at any time during the period beginning on the day after the day on which the request for examination is made or, if section 83.1 applies in respect of the application, on the day after the day on which the amendment referred to in that section is made and ending on the day on which the final fee is paid and in respect of which the fee set out in paragraph 10(b) of Schedule 2 was not paid in connection with the request for examination.
Divisional Applications
Marginal note: Definition of
88 For the purposes of section 36 of the Act, includes a group of inventions linked in such a manner that they form a single general inventive concept.
Marginal note: Requirements
- 89 (1) An application for a patent is a divisional application only if
- (a) the application on its presentation date contains a petition that includes a statement to the effect that the application is a divisional application that results from the division of an original application filed in Canada;
- (b) the original application number is submitted to the Commissioner not later than three months after the presentation date;
- (c) the applicant, or if there are joint applicants, at least one of the joint applicants, was an applicant of the original application at any time during the period beginning on the filing date of the original application and ending on the presentation date;
- (d) the application on its presentation date contains one or more claims; and
- (e) if the applicant of the original application is required, under subsection 15(2) or (3), to provide a translation in respect of that application, that applicant has provided the translation to the Commissioner not later than the presentation date.
Marginal note: Time for filing if original application refused
90 Unless a shorter time is applicable under subsection 36(2), (2.1) or (3) of the Act, 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
- (a) if an appeal is not taken under section 41 of the Act, the end of a period of six months after the notice as provided for in section 40 of the Act is mailed;
- (b) if an appeal is taken under section 41 of the Act and no appeal is taken to the Federal Court of Appeal from the final judgment of the Federal Court on that appeal, the later of
- (i) the end of the period referred to in paragraph (a), and
- (ii) the end of a period of two months after the day on which final judgment is rendered in the appeal by the Federal Court or, if the appeal is discontinued, the end of a period of two months after the day on which the appeal is discontinued;
- (i) the end of a period of two months after the day on which the final judgment of the Federal Court of Appeal is rendered in the appeal or, if the appeal to the Federal Court of Appeal is discontinued, the end of a period of two months after the day on which the appeal is discontinued, and
- (ii) if an application is made in accordance with the Supreme Court Act for leave to appeal to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal, the end of a period of two months after the day on which the application is dismissed or granted; and
Marginal note: Clarification
91 For greater certainty, the specification and the drawings contained in a divisional application, other than a divisional application resulting from a PCT national phase application, must not contain matter that is not in the specification and the drawings contained in the original application on its filing date, or if the original application is itself a divisional application, on its presentation date, unless
- (a) the matter may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application; or
- (b) it is admitted in the specification contained in the divisional application that the matter is prior art.
Marginal note: Actions considered taken — divisional application
92 If, on or before the presentation date of a divisional application, any of the following measures has been taken with respect to the original application, the same measure is considered to have been taken, with respect to the divisional application, on the date the action was taken in respect of the original application:
- (a) a small entity declaration has been filed;
- (b) a request for priority has been made and has not been withdrawn;
- (c) information required under subsection 28.4(2) of the Act has been submitted to the Commissioner in respect of a request for priority;
- (d) a copy or an English or French translation of a previously regularly filed application for a patent, or a certificate showing its filing date, has been submitted to the Commissioner;
- (e) a copy of a previously regularly filed application for a patent has been made available to the Commissioner in a digital library;
- (f) information required by paragraph 93(1)(b) in respect of a deposit of biological material has been submitted to the Commissioner; or
- (g) a request has been submitted under subsection 95(1).
Deposit of Biological Material
Marginal note: Conditions
- 93 (1) For the purpose of subsection 38.1(1) of the Act, the following conditions apply to a deposit of biological material:
- (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;
- (b) the applicant must, before the day on which the application for a patent becomes open to public inspection at the Patent Office, inform the Commissioner of the name of the international depositary authority and the accession number given by the authority to the deposit;
- (c) the information required by paragraph (b) must be included in the description;
- (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 that authority not later than
- (i) in respect of an application for a patent other than a PCT national phase application, three months after the day on which the authority issues a receipt, and
- (ii) in respect of a PCT national phase application, the later of three months after the day on which the authority issues a receipt and three months after the national phase entry date of that application;
- (i) in respect of an application for a patent other than a PCT national phase application, three months after the day on which the authority issues a receipt, and
- (ii) in respect of a PCT national phase application, the later of three months after the day on which the authority issues a receipt and three months after the national phase entry date of that application.
Marginal note: Inclusion of date of deposit of biological material
94 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.
Marginal note: Request to furnish sample to independent expert
- 95 (1) If the specification contained in an application for a patent refers to a deposit of biological material, the applicant may, before the day on which the application becomes open to public inspection at the Patent Office, 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 96.
- Marginal note: Non-application of subsection 3(1) (2) Subsection 3(1) does not apply to the time for submitting the request referred to in subsection (1).
Marginal note: Nomination of independent expert
- 96 (1) If an applicant submits a request under section 95, the Commissioner must, on the request of any person and with the agreement of the applicant, nominate an independent expert.
- Marginal note: No agreement on nomination (2) If the Commissioner and the applicant cannot agree on the nomination of an independent expert, the request under section 95 is considered not to have been submitted.
Marginal note: Form for submitting request
- 97 (1) The Commissioner must publish on the website of the Canadian Intellectual Property Office a form for submitting 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.
- Marginal note: Certification (2) Subject to section 98, if a specification contained in a Canadian patent, or in an application for a patent filed in Canada that is open to public inspection at the Patent Office, refers to a deposit of biological material by the applicant and if a person submits a request to the Commissioner 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
- (a) a patent has been issued on the basis of the application or the application has been refused, withdrawn or deemed to be abandoned and is no longer subject to reinstatement; or
- (b) the Commissioner has received an undertaking by that person
- (i) not to make any sample of biological material furnished by the international depositary authority or any material derived from such a 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
- (ii) to use the sample of biological material furnished by the international depositary authority and any material derived from such a sample solely 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.
Marginal note: Person authorized to submit request
- 98 (1) If an applicant submits a request under section 95, 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 97 may only be submitted by an independent expert nominated under section 96.
- Marginal note: Copy of request and certification to be sent (2) If the Commissioner makes a certification under subsection 97(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 expert.
Amendment to Specification and Drawings
Marginal note: No amendment before submission of translation
99 If an applicant is required to submit a translation under subsection 15(2) or (3), the specification and the drawings contained in the application for a patent must not be amended by the applicant before they submit the translation to the Commissioner.
Marginal note: No amendment after notice of allowance or conditional notice of allowance
- 100 (1) Subject to subsection (2), the specification and the drawings contained in an application for a patent must not be amended by the applicant after a notice of allowance or conditional notice of allowance is sent, unless
- (a) the notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4); or
- (b) the amendments are those referred to in the conditional notice of allowance and are made in accordance with subsection 86(1.1) or, if the application is deemed to be abandoned under subsection 73(2) of the Act in the circumstances referred to in paragraph 132(1)(g) of these Rules, on or before the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.
- (a) if a notice of allowance was sent and has not been withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again; and
- (b) if a conditional notice of allowance was sent and has not been withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), on or before the day on which the applicant replies in good faith to the conditional notice of allowance.
Marginal note: No amendment after rejection
101 If an application for a patent is rejected by an examiner under subsection 86(3), the specification and the drawings contained in the application must not be amended by the applicant after the date prescribed by subsection 86(8), unless
- (a) a notice is sent to the applicant informing them that the rejection is withdrawn;
- (b) the amendments are those required in a notice sent under subsection 86(11); or
- (c) the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendments to be made.
Marginal note: Amendment to specification or drawings
102 An amendment by the applicant to the specification or the drawings contained in an application for a patent must be made by submitting a new page to replace each 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.
Marginal note: Prescribed Documents and information — divisional application
- 103 (1) For the purpose of paragraph 38.2(3.1)(b) of the Act, the prescribed documents and information are
- (a) an explicit or implicit indication that the granting of a Canadian patent is being sought;
- (b) information allowing the identity of the applicant to be established;
- (c) information allowing the Commissioner to contact the applicant; and
- (d) a document that, on its face, appears to be a description.
Corrections
Marginal note: Error – naming of applicants
104 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent, other than a PCT national phase application, 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 is made by the person who submitted the application not later than the earlier of
- (a) the day on which the application becomes open to public inspection at the Patent Office, and
- (b) if the Commissioner records a transfer of the application under section 49 of the Act, the day on which the Commissioner received the request to record that transfer.
Marginal note: Error – naming of applicants
105 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent if the request contains a statement to the effect that the correction does not add or delete the name of an applicant or change the identity of a named applicant and is made by the applicant on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again.
Marginal note: Error – naming of inventors
106 The Commissioner must, on request, correct an error with respect to the naming of inventors in an application for a patent if
- (a) in the case of a request that contains a statement to the effect that the correction does not add or delete the name of an inventor or change the identity of a named inventor, the request is made by the applicant on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again; or
- (b) in any other case, the request is made by the applicant before the day on which a notice of allowance or conditional notice of allowance is sent or, if the notice of allowance or conditional notice of allowance is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), before the day on which another notice of allowance or conditional notice of allowance is sent.
Marginal note: Obvious error made by Commissioner
- 107 (1) The Commissioner may, on his or her own initiative within 12 months after the day on which a patent is issued under the Act, or on the request of the patentee made within that period, correct an error made by the Commissioner in the patent or in the specification or the drawings referenced in the patent if, from the documents that were in the possession of the Patent Office on that day, it is obvious that something other than what appears in the patent, the specification or the drawings was intended and that nothing other than the correction could have been intended.
- Marginal note: Date of correction (2) A correction made under subsection (1) is considered to have been made on the day on which the patent was issued.
Marginal note: Obvious error made by re-examination board
- 108 (1) The Commissioner may, on his or her own initiative within six months after the day on which a certificate is issued under section 48.4 of the Act, or on the request of the patentee made within that period, correct an error made by the re-examination board in the certificate if, from the documents that were in the possession of the Patent Office on that day, it is obvious that something other than what appears in the certificate was intended and that nothing other than the correction could have been intended.
- Marginal note: Date of correction (2) A correction made under subsection (1) is considered to have been made on the day on which the certificate was issued.
Marginal note: Correction on request of patentee
- 109 (1) On the request of the patentee, made in accordance with subsection (2), not later than 12 months after the day on which a patent is issued under the Act and on payment of the fee set out in item 24 of Schedule 2, the Commissioner must correct
- (a) an error with respect to the naming of a patentee or an inventor included in the patent, if the request for a correction contains a statement to the effect that the correction does not add or delete the name of a patentee or an inventor or change the identity of a named patentee or inventor, as the case may be; or
- (b) an error in the specification or the drawings referenced in the patent, if from the specification or the 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 other than what appears in the specification or the drawings was intended and that nothing other than the correction could have been intended.
- (a) an indication that a correction of an error is being requested;
- (b) the number of the patent concerned;
- (c) the correction to be made; and
- (d) new pages to replace the pages altered by the correction, if the error is in the specification or the drawings and the error was not made by the Commissioner.
Marginal note: Non-application of subsection 3(1)
110 Subsection 3(1) does not apply in respect of the times referred to in section 104, 105 or 106 or subsection 107(1), 108(1) or 109(1), (3) or (4).
Marginal note: Certificate
- 111 (1) If the Commissioner corrects an error under section 107, 108 or 109, the Commissioner must, under the seal of the Patent Office, issue a certificate setting out the correction.
- Marginal note: Obvious error made by Commissioner (2) The Commissioner may correct an error made in the certificate if, from the documents that were in the possession of the Patent Office on the day on which the certificate was issued, it is obvious that something other than what appears in the certificate was intended and that nothing other than the correction could have been intended.
Maintaining Rights Accorded by a Patent
Marginal note: Prescribed fee
- 112 (1) Subject to subsection (5), 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, for an anniversary date set out in item 25 of Schedule 2 that falls on or after the day on which the patent was issued,
- (a) the applicable small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in accordance with subsection (3) in respect of the patent, or in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted,
- (i) on or before that anniversary date, or
- (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 later of the end of six months after that anniversary date and the end of two months after the date of the notice; and
- (a) in respect of a patent granted on the basis of an application for a patent — other than a PCT national phase application or a divisional application — the applicant of the application on the filing date is, on that date, an entity that has fewer than 100 employees or is a university, other than
- (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 employees or more, or
- (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 has 100 employees or more;
- (a) be filed with the Commissioner in a document other than the abstract, the specification or the drawings of the application on the basis of which the patent was granted, that identifies the patent to which the declaration relates;
- (b) contain a statement that the patentee believes that the small entity status condition set out in subsection (2) is met in respect of the patent;
- (c) be signed by a patent agent appointed in respect of that patent or by
- (i) if there is a single patentee, the patentee,
- (ii) if there is a single patentee and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the patentee and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,
- (iii) if there are joint patentees, any one of the patentees, or
- (iv) if there are joint patentees and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the patentees and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and
- (a) the unpaid fee,
- (b) the late fee set out in item 26 of Schedule 2, and
- (c) the fee prescribed by paragraph (1)(a) or (b) of this section for that anniversary, as applicable.
- SOR/2021-131, s. 19
- SOR/2022-120, s. 25
- SOR/2023-113, s. 3
Marginal note: Prescribed Dates
113 For the purposes of subsection 46(1) of the Act, the prescribed dates are
- (a) for a fee referred to in subsection 112(1) of these Rules, the anniversary date for which it is paid; and
- (b) for a fee referred to in subsection 112(5) of these Rules, the date of the first of the anniversaries of the filing date of the application that fall on or after the day on which the patent was issued.
Marginal note: Clarification
114 For greater certainty, for the purposes of sections 112 and 113, a reissued patent is considered to be granted on the basis of the original application and is considered to be issued on the day on which it is reissued.
Marginal note: Late fee
115 For the purposes of subsection 46(2) of the Act, the prescribed late fee is the fee set out in item 26 of Schedule 2.
Marginal note: Time — paragraph 46(5)(a) of Act
- 116 (1) For the purposes of paragraph 46(5)(a) of the Act, the prescribed time is 12 months after the end of the six-month period referred to in subsection 46(4) of the Act.
- Marginal note: Non-application of subsection 3(1) (2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).
Marginal note: Additional prescribed fee
117 For the purpose of subparagraph 46(5)(a)(iii) of the Act, the additional prescribed fee is the fee set out in item 27 of Schedule 2.
Reissue
Marginal note: Form
118 An application for the reissue of a patent under section 47 of the Act must be filed in Form 1 of Schedule 1.
Marginal note: Prescribed fee
119 For the purpose of subsection 47(1) of the Act, the prescribed fee is the fee set out in item 28 of Schedule 2.
Disclaimer of Any Part of a Patent
Marginal note: Form
120 A disclaimer under section 48 of the Act must be filed in Form 2 of Schedule 1.
Marginal note: Prescribed fee
121 For the purpose of subsection 48(1) of the Act, the prescribed fee is the fee set out in item 29 of Schedule 2.
Re-examination
Marginal note: Prescribed fee
- 122 (1) 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
- (a) the small entity fee set out in item 30 of Schedule 2 if
- (i) the person requesting re-examination is the patentee, the small entity status condition set out in subsection 112(2) is met and a small entity declaration is filed in accordance with subsection 112(3) in respect of the patent or filed in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted, or
- (ii) the person requesting re-examination is not the patentee, the small entity status condition set out in subsection (3) is met and a small entity declaration is filed in respect of the request for re-examination in accordance with subsection (4); and
- (a) be filed with the Commissioner;
- (b) identify the request for re-examination to which it relates;
- (c) contain a statement that the person requesting re-examination believes that the small entity status condition set out in subsection (3) is met in respect of that request;
- (d) be signed by
- (i) the person requesting re-examination,
- (ii) if a document authorizing a foreign practitioner to sign a small entity declaration is signed by the person requesting re-examination and submitted to the Commissioner at the same time as the declaration, that foreign practitioner, or
- (iii) a patent agent who is appointed in respect of that request; and
- SOR/2021-131, s. 20
- SOR/2023-113, s. 4
Marginal note: Numbering of claims
123 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
Marginal note: Related documents
124 The Commissioner must, on the receipt of a request and the fee set out in item 33 of Schedule 2, register in the Patent Office a document relating to a patent or an application for a patent.
Marginal note: Name change
125 If an applicant for a patent or a patentee changes their name, the Commissioner must, on the receipt of a request from that applicant or patentee and the fee set out in item 34 of Schedule 2, record that name change.
Marginal note: Request to record transfer
126 A request to record a transfer under section 49 of the Act must contain the name and postal address of the transferee and be accompanied by the fee set out in item 35 of Schedule 2.
Marginal note: Condition for recording transfer of application
127 The Commissioner must not record the transfer of an application for a patent under subsection 49(2) of the Act if the request to record the transfer is submitted after the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, after the day on which the final fee is paid again.
Third party Rights
Marginal note: Period
128 For the purposes of subsections 55.11(2), (3), (7) and (9) of the Act, the prescribed periods are
- (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 day on which a 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
- (i) if the Commissioner, under paragraph 27.1(2)(b) of the Act, sent a notice to the applicant because of that omission, and if the application is deemed to be abandoned under paragraph 73(1)(c) of the Act because the prescribed fee and the late fee referred to in that notice were not paid within the time referred to in that paragraph, on the earlier of
- (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
- (B) the day on which the patent was granted, or
- (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 later of those days — without taking into account subsection 27.1(3) of the Act, and
- (B) the day on which the patent was granted;
- (i) if the application was deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of
- (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
- (B) the day on which the patent was granted, or
- (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 on a different day than the day on which those fees were paid, or those fees were paid on different days, the latest of those days — without taking into account subsection 35(4) of the Act, and
- (B) the day on which the patent was granted;
- (i) if the Commissioner, under paragraph 46(2)(b) of the Act, sent a notice to the patentee because of that omission and if, without taking into account subsection 46(5) of the Act, the patent was deemed to have expired under subsection 46(4) of the Act because the prescribed fee and the late fee referred to in subsection 46(2) of the Act were not paid within the time referred to in subsection 46(4) of the Act, on the day on which subsection 46(4) of the Act is deemed never to have produced its effects under subsection 46(5) of the Act, or
- (ii) if, without taking into account subsection 46(5) of the Act, the term limited for the duration of the patent is not deemed to have expired under subsection 46(4) of the Act for the reason referred to in subparagraph (i), on the day on which that 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 later of those days — without taking into account subsection 46(3) of the Act.
Abuse of Rights Under Patents
Marginal note: Application fee
- 129 (1) A person who makes an application under section 65 or 127 of the Act must pay the fee set out in item 31 of Schedule 2.
- Marginal note: 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 32 of Schedule 2.
Marginal note: Time to deliver counter statement
- 130 (1) For the purposes of subsection 69(1) of the Act, including that subsection as modified by section 128 of the Act, the prescribed time is four months after the latest of the following dates:
- (a) in respect of a person that is served with copies of the application and the statutory declarations referred to in subsection 68(1) of the Act, the day on which that person is served or, if the copies of the application and the statutory declarations are served on that person on different days, the later of those days,
- (b) the day on which the application is advertised in the Canada Gazette , and
- (c) the day on which the application is advertised on the website of the Canadian Intellectual Property Office.
Abandonment and Reinstatement
Marginal note: Time to reply
- 131 (1) For the purposes of paragraph 73(1)(a) of the Act, the prescribed time is four months after the date of the notice of the requisition made by the examiner.
- Marginal note: Exception to subsection 3(1) (2) Subsection 3(1) does not authorize the Commissioner to extend the time prescribed by subsection (1) beyond six months after the date of the notice.
- Marginal note: Delayed receipt of notice (3) However, in the case of a notice under subsection 86(2) or (5) that was received by the applicant more than one month after the day on which it was sent, the Commissioner may extend the time prescribed by subsection (1) to up to six months after the day on which the notice was received if the applicant
- (a) applies for the extension within 14 days after the day on which the notice was received; and
- (b) in that application, provides evidence satisfactory to the Commissioner of the date of receipt of the notice.
Marginal note: Application deemed abandoned
- 132 (1) Subject to subsection (2) and for the purposes of subsection 73(2) of the Act, an application for a patent is deemed to be abandoned if
- (a) the applicant does not comply with a notice of the Commissioner referred to in subsection 15(4) within the time referred to in that subsection;
- (b) a notice is sent under section 31 and the requirements are not complied with within the applicable time referred to in that section;
- (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 not later than three months after the date of the request;
- (d) the applicant does not reply in good faith to a notice of the Commissioner referred to in section 65 within the time referred to in that section;
- (e) the applicant does not make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3);
- (f) a notice of allowance is sent under subsection 86(1), (6), (10) or (12) and the applicant does not pay the final fee set out in item 14 of Schedule 2 within the time referred to in the applicable subsection;
- (g) the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner sent under subsection 86(1.1) and pay the final fee set out in item 14 of Schedule 2 within the time referred to in that subsection; or
- (h) the applicant does not comply with a notice of the Commissioner referred to in subsection 155.5(6) within the time referred to in that subsection.
Marginal note: Prescribed time — request for reinstatement
- 133 (1) For the purposes of paragraph 73(3)(a) of the Act, in respect of a failure to take an action, the prescribed time is 12 months after the day on which the application for a patent is deemed, as a result of that failure, to be abandoned.
- Marginal note: Request for reinstatement — multiple failures (2) A request for reinstatement may be made in respect of more than one failure to take an action, if the request is made before the end of the applicable prescribed time that is the first to end.
- Marginal note: 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 68(1) or (2), 80(1), 85.1(5) or 87(1), the action that should have been taken in order to avoid that abandonment and that the applicant must take before the end of the time prescribed by subsection (1) in order to reinstate the application is
- (a) the payment of the applicable standard fee; or
- (b) if the small entity status condition set out in subsection 44(2) is met, the filing of a small entity declaration in respect of the application in accordance with subsection 44(3) and the payment of the applicable small entity fee.
Marginal note: Prescribed fee
- 134 (1) Subject to subsection (2) and for the purposes of subparagraph 73(3)(a)(iv) of the Act, the prescribed fee is, for each failure to take an action referred to in the request for reinstatement, the fee set out in item 15 of Schedule 2.
- Marginal note: Interpretation — failure to take action (2) If both of the following failures to take action are referred to in the request for reinstatement, they are considered to be a single failure to take action:
- (a) a failure to reply in good faith, within the time referred to in the applicable subsection, to any requisition made by an examiner under subsection 86(2) or (5); and
- (b) a failure to make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3).
Marginal note: Non-application of certain portions of subsection 73(3) of Act
- 135 (1) Subparagraph 73(3)(a)(ii) and paragraph 73(3)(b) of the Act do not apply
- (a) in respect of a failure under paragraph 73(1)(a), (b) or (e) or subsection 73(2) of the Act; or
- (b) in respect of a failure under paragraph 73(1)(d) of the Act if, within 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 134 of these Rules.
Fees for Services
Marginal note: Fee for certified copies
- 136 (1) A person who requests from the Commissioner a certified copy of a document that is in the Commissioner’s possession must pay the fee set out in item 36 or 37 of Schedule 2, as applicable.
- Marginal note: Exception (2) Subsection (1) does not apply in respect of a certified copy transmitted under rule 318 of the Federal Courts Rules , including that rule as modified by rule 350 of those Rules.
Marginal note: Fee for non-certified copies
137 A person who requests from the Commissioner a non-certified copy of a document that is in the Commissioner’s possession must pay the fee set out in item 38 or 39 of Schedule 2, as applicable.
Marginal note: Fee for requesting information
138 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 40 of Schedule 2.
Refund and Waiver of Fees
Marginal note: Refund of fees
- 139 (1) Only the following fees may be refunded by the Commissioner:
- (a) [Repealed, SOR/2021-131, s. 21]
- (b) any fee, other than the fee referred to in subsection 27(2) of the Act, paid in respect of an application, other than a PCT national phase application, that was filed through inadvertence, accident or mistake and that was withdrawn not later than the fourteenth day after the earliest date on which the Commissioner received any document or information in respect of that application under subsection 28(1) of the Act or, in the case of a divisional application, not later than the fourteenth day after the earliest date on which the Commissioner received any document or information referred to in subsection 103(1) in respect of that application;
- (c) any fee, other than the fee set out in any of items 16 to 21 of Schedule 2, paid in respect of an international application, if one or more of the requirements for entry into the national phase were met in respect of the application through inadvertence, accident or mistake and, if the international application has become a PCT national phase application, that PCT national phase application was withdrawn not later than the fourteenth day after its national phase entry date;
- (d) a fee paid in respect of a request for 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;
- (e) a fee paid for advertising on the website of the Canadian Intellectual Property Office an application presented to the Commissioner under section 65 of the Act, if the application was not advertised on that website;
- (f) a fee paid in respect of a request for a copy of a document if the request is withdrawn before the copy is made;
- (g) a fee paid in respect of a request for a copy of a document, if the Patent Office does not have that document;
- (h) any overpayment of a fee;
- (i) any fee paid, if payment of the fee is waived by the Commissioner;
- (j) a fee paid under subsection 85.1(3) for the continued examination of an application for a patent, if the fee was paid in response to a notice referred to in subsection 85.1(6); and
- (k) any fee that is to be refunded under these Rules.
- SOR/2021-131, s. 21
- SOR/2022-120, s. 30
Marginal note: Waiver — paragraph 3(4)(d)
- 139.1 (1) In the case where the Commissioner considers that the circumstances do not justify requiring the statement and the application referred to in paragraph 3(4)(c), the Commissioner is authorized to waive, in favour of the applicant or patentee, payment of the difference referred to in paragraph 3(4)(d) if the Commissioner considers that the circumstances justify the waiver.
- Marginal note: Additional waiver (2) In the case where the Commissioner waives payment under subsection (1), the Commissioner is also authorized to waive, in favour of any applicant or patentee, payment of the difference between the amount specified in the erroneous information provided by the Commissioner and the amount that should have been specified if
- (a) the Commissioner provided the same erroneous information concerning the amount of the fee in question;
- (b) the period of time for the payment of the fee has not expired;
- (c) the payment of the insufficient amount is made not later than the earlier of the day that is four months after the day on which the Commissioner issues the waiver under subsection (1) and the day fixed by the Commissioner; and
- (d) the Commissioner considers that the circumstances justify the waiver.
Marginal note: Waiver of fee — request to correct errors
- 140 (1) The Commissioner is authorized to waive the payment of the fee set out in item 24 of Schedule 2 that is payable for a request for a correction if the request is in regard to an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.
- Marginal note: Waiver of fee — reissue of patent (2) The Commissioner is authorized to waive the payment of the fee set out in item 28 of Schedule 2 for filing an application to reissue a patent if the application for reissue is as a result of an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.
- Marginal note: Waiver of fee — extension of time (3) The Commissioner is authorized to waive the payment of the fee set out in item 1 of Schedule 2 that is payable for filing an application for an extension of the time for replying to a requisition made under subsection 86(2) or (5) if
- (a) the notice sent under subsection 86(2) or (5) was received by the applicant more than one month after the day on which the notice was sent;
- (b) the applicant applies for the extension within 14 days after the day on which the notice was received and, in that application, provides evidence satisfactory to the Commissioner of the date of receipt of the notice; and
- (c) the Commissioner is satisfied that the circumstances justify it.
PART 2 Patent Cooperation Treaty
Definitions
Marginal note: Definitions
141 The following definitions apply in this Part.
means the date accorded to an international application under Article 11 of the Patent Cooperation Treaty. ( date du dépôt international )
has the same meaning as in Article 2(xi) of the Patent Cooperation Treaty. ( date de priorité )
Application of Treaty
Marginal note: International applications
- 142 (1) Subject to subsection (2) and subsections 154(11) and (12), the provisions of the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT apply in respect of
- (a) an international application filed with the Commissioner; and
- (b) an international application in which Canada is designated under the Patent Cooperation Treaty.
International Phase
Marginal note: Receiving Office
143 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, the Commissioner must act as a receiving Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.
Marginal note: Application in English or French
144 An international application, other than any text matter contained in a sequence listing, that is filed with the Commissioner must be entirely in English or entirely in French.
Marginal note: International Searching Authority and International Preliminary Examining Authority
145 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 under the PCT.
Marginal note: Appointment of all the patent agents
145.1 If all of the agents at the same firm are appointed under Rule 90 of the Regulations under the PCT to represent an applicant before the Commissioner, section 28.1, subsection 29(2) and section 29.1 apply in respect of the appointment.
Marginal note: Fees payable in Canadian currency
- 146 (1) Fees payable under Rules 15 and 57 of the Regulations under the PCT must be paid in Canadian currency.
- Marginal note: 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.
Marginal note: Transmittal fee
147 An applicant of an international application filed with the Commissioner must pay the transmittal fee set out in item 16 of Schedule 2 for the performance of the tasks referred to in Rule 14 of the Regulations under the PCT.
Marginal note: Search fee
148 An applicant of an international application filed with the Commissioner must pay the search fee set out in item 17 of Schedule 2 for the performance of the tasks referred to in Rule 16 of the Regulations under the PCT.
Marginal note: Late payment fee
148.1 An applicant of an international application filed with the Commissioner must pay the late payment fee set out in Rule 16bis.2 of the Regulations under the PCT if an invitation is sent to that applicant by the Commissioner under Rule 16bis.1(a) of the Regulations under the PCT.
Marginal note: Additional fee
149 The amount of the additional fee for searching under Article 17(3)(a) of the Patent Cooperation Treaty is the fee set out in item 18 of Schedule 2.
Marginal note: Preliminary examination fee
150 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 19 of Schedule 2 for the performance of the tasks referred to in Rule 58 of the Regulations under the PCT.
Marginal note: Late payment fee
150.1 An applicant of an international application filed with the Commissioner must pay the late payment fee set out in Rule 58bis.2 of the Regulations under the PCT if an invitation is sent to that applicant by the Commissioner under Rule 58bis.1(a) of the Regulations under the PCT.
Marginal note: Additional fee
151 The amount of the additional fee for an international preliminary examination under Article 34(3)(a) of the Patent Cooperation Treaty is the fee set out in item 20 of Schedule 2.
National Phase
Marginal note: Designated Office
152 If an international application in which Canada is designated under the Patent Cooperation Treaty 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 under the PCT.
Marginal note: Elected Office
153 If an international application in which Canada is designated under the Patent Cooperation Treaty is filed and the applicant has elected Canada under Article 31 of the treaty, the Commissioner must act as an elected Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.
Marginal note: Requirements
- 154 (1) An applicant who designates Canada in an international application must, not later than 30 months after the priority date,
- (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;
- (b) if the description contained in the international application, other than any sequence listings, is entirely in a language other than English or French, submit to the Commissioner an English or French translation of the description other than any sequence listings;
- (b.1) if the claims contained in the international application are entirely in a language other than English or French, submit to the Commissioner an English or French translation of the claims; and
- (c) pay the basic national fee, which is
- (i) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and
- (ii) in any other case, the standard fee set out in that item.
- (a) the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3); and
- (b) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent.
- (a) not later than 12 months after that time, the applicant
- (i) submits to the Commissioner a request that the rights of the applicant be reinstated with respect to that international application and a statement that the failure was unintentional,
- (ii) complies with the requirements of paragraphs (1)(a) to (b.1),
- (iii) pays the basic national fee, which is
- (A) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and
- (B) in any other case, the standard fee set out in that item, and
- (i) on or before the third anniversary of the international filing date but not later than 12 months after the time referred to in subsection (1), pays
- (A) if the small entity status condition set out in subsection 44(2) is met and if, on or before that third anniversary, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, and
- (B) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent, or
- (A) if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second and third anniversary of the filing date of an application for a patent, and
- (B) in any other case, the standard fee set out in that item for the second and third anniversary of the filing date of an application for a patent.
- (a) the later of
- (i) the day on which a period of three months after the national phase entry date of that application expires, and
- (ii) if the Commissioner sends a notice under subsection (7) before the end of a period of three months after the national phase entry date of that application, the day on which a period of three months after the date of the notice expires, and
- SOR/2022-120, s. 32
- SOR/2023-113, s. 7
Marginal note: Application of Canadian legislation
- 155 (1) If an international application becomes a PCT national phase application, the application is considered, beginning on its national phase entry date, to be an application for a patent filed in Canada and, subject to sections 157 to 163, the Act and these Rules apply beginning on that date in respect of that application.
- Marginal note: National phase entry date (2) Subject to section 210, the national phase entry date of an application for a patent is
- (a) if the applicant has not complied with the applicable requirements of subsection 154(3), the day on which the applicant complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2) or, if the applicant complied with those requirements on different days, the latest of those days; and
- (b) if the applicant has complied with the applicable requirements of subsection 154(3), the day on which the applicant complied with those requirements or, if the applicant complied with those requirements on different days, the latest of those days.
Marginal note: Translation — part of description or claims
- 155.1 (1) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any part of the description — other than any sequence listings — and any part of the claims that are in a language other than English or French.
- Marginal note: Translation — abstract, request or statement (2) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any of the following elements, or any part of the following elements, that are in a language other than English or French:
- (a) any language-dependent free text contained in a sequence listing that does not also appear in English or French;
- (b) any text matter in a drawing;
- (c) the abstract;
- (d) the request referred to in article 4 of the Patent Cooperation Treaty, except if the International Bureau of the World Intellectual Property Organization has published the international application on or before the national phase entry date; and
- (e) any statement made under Article 19 of the Patent Cooperation Treaty.
Marginal note: Error in translation — notice
- 155.2 (1) If the Commissioner, before a request for examination is made, or an examiner, in the course of examining an application for a patent, has reasonable grounds to believe that a translation submitted under paragraph 154(1)(b) or (b.1) or section 155.1 contains an error, the Commissioner or the examiner, as the case may be, must by notice inform the applicant of the error.
- Marginal note: Error in translation — correction (2) An applicant may correct a translation submitted under paragraph 154(1)(b) or (b.1) or section 155.1 that contains an error by submitting the following to the Commissioner before the day on which a notice of allowance or a conditional notice of allowance is sent or, if that notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), before the day on which a notice of allowance or a conditional notice of allowance is sent again:
- (a) the corrected translation;
- (b) a request that the corrected translation replace the original translation; and
- (c) a statement to the effect that
- (i) at the time the original translation was submitted, it would have been obvious to a skilled translator fluent in both the original language and the language of translation that the original translation contained an error and that the corrected translation is an accurate translation,
- (ii) the error in the original translation occurred despite due care having been taken in its preparation, and
- (iii) the request is being made within a reasonable time after the applicant became aware of the error.
Marginal note: Restriction — translation of specification or drawings
155.3 A translation or corrected translation, submitted under section 155.1 or subsection 155.2(2), respectively, of all or part of the text matter in a specification or a drawing must not contain any matter not reasonably to be inferred from the specification or the drawings contained in the application on its filing date.
Marginal note: Complete copy
- 155.4 (1) An applicant who submits a translation under section 155.1 or a corrected translation under subsection 155.2(2) must, at the same time, submit the following to the Commissioner:
- (a) in the case of a translation referred to in subsection 155.1(1) or a correction to that translation, a complete copy of the description — other than any sequence listings — or the claims, as the case may be, that contains the translated text matter and the text matter that already appeared in English or French;
- (b) in the case of a translation referred to in paragraph 155.1(2)(a) or a correction to that translation, a complete copy of the sequence listing that contains the translated text matter and the text matter that already appeared in English or French;
- (c) in the case of a translation referred to in paragraph 155.1(2)(b) or a correction to that translation, a complete copy of the drawing that contains the translated text matter and the text matter that already appeared in English or French; and
- (d) in the case of a translation referred to in paragraph 155.1(2)(c), (d) or (e) or a correction to that translation, a complete copy of the abstract, request or statement, as the case may be, that contains the translated text matter and the text matter that already appeared in English or French.
Marginal note: Translation replaces original — description
- 155.5 (1) If a translation is submitted under paragraph 154(1)(b), the translation replaces the entirety of the description other than any sequences listings.
- Marginal note: Translation replaces original — claims (2) If a translation is submitted under paragraph 154(1)(b.1), the translation replaces the entirety of the claims.
- Marginal note: Translation replaces original — element of application (3) If a translation is submitted under section 155.1, the translation replaces the corresponding text matter in the PCT national phase application.
- Marginal note: Failure to provide translation — certain elements (4) If the applicant fails to provide a translation of a part of the description or claims or of any text matter in a drawing, in accordance with subsection 155.1(1) or paragraph 155.1(2)(b), respectively, the corresponding untranslated text matter in the PCT national phase application must not be taken into account for the purpose of interpreting the scope of protection sought or obtained.
- Marginal note: Failure to provide translation — statement (5) If the applicant fails to provide a translation of all or part of the statement referred to in paragraph 155.1(2)(e) in accordance with that paragraph, the statement may be disregarded by the Commissioner.
- Marginal note: Failure to provide translation or complete copy (6) If the applicant fails to provide a translation in accordance with paragraph 155.1(2)(c) or (d) or a complete copy in accordance with paragraph 155.4(1)(a), (b) or (c), the Commissioner may by notice require the applicant to provide the translation or complete copy no later than three months after the date of the notice.
Marginal note: Amendments to specification and drawings
- 155.6 (1) If all or part of the text matter of the specification or the drawings contained in an international application on its international filing date is in a language other than English or French, the specification and the drawings contained in the PCT national phase application must not be amended to add matter not reasonably to be inferred from both
- (a) the specification or the drawings contained in the international application on its international filing date; and
- (b) the specification or the drawings contained in the international application immediately after it became a PCT national phase application, excluding any text matter that is not in English or French other than text matter in a sequence listing that is not language-dependent free text.
Marginal note: Clarification — divisional application
155.7 For greater certainty, the specification and the drawings contained in a divisional application resulting from the division of a PCT national phase application must not contain matter that is not in the specification and the drawings contained in the original application on its filing date, or if the original application is itself a divisional application, on its presentation date, unless
- (a) the matter may be or could have been added — under section 155.6 of these Rules and subsection 38.2(1) and paragraph 38.2(3.1)(b) of the Act, without taking into account subsection 155.6(4) of these Rules or subsection 38.2(4) of the Act — to the specification and the drawings contained in the original application; or
- (b) it is admitted in the specification contained in the divisional application that the matter is prior art.
Marginal note: Clarification
- 156 (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,
- (a) documents or information included in the international application as filed are deemed to have been received by the Commissioner on the international filing date; and
- (b) documents or information, other than the documents or information referred to in paragraph (a), furnished in accordance with the requirements of the Patent Cooperation Treaty before the application became a PCT national phase application are deemed to have been received by the Commissioner on the day on which they were so furnished.
Marginal note: Application considered open to public inspection
157 If an international application is published in English or French by the International Bureau of the World Intellectual Property Organization under Article 21 of the Patent Cooperation Treaty on or before its national phase entry date, the application is considered to be open to public inspection under section 10 of the Act beginning on the date of that publication.
Marginal note: Non-application of subsection 27(2) of Act
158 The requirements of subsection 27(2) of the Act regarding the petition and the application fee do not apply in respect of a PCT national phase application.
Marginal note: Non-application of certain provisions of Act
- 159 (1) Subsection 27(7), sections 27.01, 28 and 28.01, subsections 38.2(3) and 78.1(2) and section 78.2 of the Act do not apply in respect of a PCT national phase application.
- Marginal note: Non-application of paragraph 38.2(3.1)(a) of Act (2) Paragraph 38.2(3.1)(a) of the Act does not apply in respect of a divisional application resulting from the division of a PCT national phase application.
Marginal note: Non-application of section 78 of Act
160 Section 78 of the Act does not apply in respect of a time period referred to in that section that ends before the national phase entry date of a PCT national phase application.
Marginal note: Filing date
161 The filing date of a PCT national phase application is the international filing date.
Marginal note: Filing date deemed to be within 12 months
162 For the purposes of paragraph 28.1(1)(b) of the Act and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii) of the Act, even if the conditions referred to in paragraph 28.4(6)(b) of the Act are not met, the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if
- (a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application, but within two months after the end of those 12 months;
- (b) the pending application or the co-pending application, as the case may be, is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application; and
- (c) the right of priority, in respect of the previously regularly filed application, was restored under Rule 26bis.3 of the Regulations under the PCT and that restoration is, under Rule 49ter.1 of those Regulations, effective in Canada.
Marginal note: Application considered not to be referred to in paragraph 28.2(1)(c) or (d) of Act
163 An international application is considered not to be an application for a patent referred to in paragraph 28.2(1)(c) of the Act or not 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.
Marginal note: Patent not invalid
164 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 154 was not paid.
PART 3 Transitional Provisions
DIVISION 1 Interpretation
Marginal note: Definitions
- 165 (1) The following definitions apply in this Part. [Repealed, SOR/2022-120, s. 36] means an application for a patent for which the filing date is before October 1, 1989. ( demande de catégorie 1 ) [Repealed, SOR/2022-120, s. 36] means an application for a patent for which the filing date is on or after October 1, 1996 but before October 30, 2019. ( demande de catégorie 3 ) [Repealed, SOR/2022-120, s. 36] means the Patent Rules as they read immediately before October 30, 2019. ( anciennes règles )
- Marginal note: Interpretation (2) If the filing date of an application for a patent, other than a PCT national phase application, as determined in accordance with section 78.2 of the Act, precedes October 30, 2019, the filing date of that application is, for the purposes of these Rules, the filing date determined in accordance with that section.
- SOR/2022-120, s. 36
- SOR/2022-120, s. 55
Marginal note: Reissued patents
166 For greater certainty, for the purposes of this Part, a reissued patent is considered to be issued on the basis of the original application.
Marginal note: Application of subsection 3(1)
167 For greater certainty, subsection 3(1) applies in respect of any time limit fixed by the former Rules that continues to apply under these Rules.
DIVISION 2 Rules in Respect of Category 1 Applications
Marginal note: Non-application of certain provisions of these Rules
- 168 (1) Sections 14, 47 to 51, 55, 56, 58 to 63, 65 and 74, subsection 86(1.1), subparagraphs 87(1)(a)(iii) and (b)(iii), sections 93 to 96, subsections 97(2) and (3) and sections 98 and 104 do not apply in respect of a category 1 application.
- Marginal note: Non-application of subsection 86(14) (2) Subsection 86(14) does not apply in respect of a category 1 application at any time at which it is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989.
- (3) [Repealed, SOR/2022-120, s. 37]
Marginal note: Application of certain provisions of former Rules
- 169 (1) Subject to subsection (3), sections 170, 171, 174, 175, 177, 181 and 183 to 186 of the former Rules continue to apply in respect of a category 1 application.
- Marginal note: Application of section 32 of former Rules (2) Section 32 of the former Rules continues to apply in respect of a category 1 application for which a notice of allowance was sent before October 30, 2019, other than such an application that is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, and is subsequently restored.
- Marginal note: Photographs (3) Paragraphs 177(1)(a), (b), (e) and (h) of the former Rules do not apply in respect of photographs provided in respect of a category 1 application.
- Marginal note: Application of section 179 of former Rules (4) Section 179 of the former Rules continues to apply in respect of a category 1 application, except that the reference to “the filing date and number of each application in a country other than Canada on which the applicant bases the claim” in that section is to be read as a reference to “the filing date and the name of the country of filing of each application that was filed in a country other than Canada on which the claim is based”.
Marginal note: Reference to “the Act”
170 A reference in section 42 and subsection 86(13) to “the Act”, in relation to a category 1 application, is to be read as a reference to “the Act as it read immediately before October 1, 1989”.
Marginal note: Final fee
171 With respect to a category 1 application,
- (a) the reference to “the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice” in subsections 86(1), (6), (10) and (12) is to be read as a reference to “the final fee set out in paragraph 6(b) of Schedule II to the former Rules within six months after the date of the notice”; and
- (b) the reference to “the small entity fee set out in paragraph 14(a) of Schedule 2”, “the standard fee set out in paragraph 14(a) of Schedule 2” and “the fee set out in paragraph 14(b) of Schedule 2” in subsection 87(1) is to be read as a reference to “the small entity fee set out in subparagraph 6(b)(i) of Schedule II to the former Rules”, “the standard fee set out in paragraph 6(b)(i) of Schedule II to the former Rules” and “the fee set out in subparagraph 6(b)(ii) of Schedule 2 to the former Rules”, respectively.
- SOR/2022-120, s. 38
- SOR/2022-120, s. 53
Marginal note: Rejection for defects
- 172 (1) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(2) of the former Rules, on or before the date set out in subsection (4) of this section, but the examiner, after receiving the reply, has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of any 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.
- Marginal note: Notice — application found allowable after final action (2) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(4) of the former Rules, on or before the date set out in subsection (4) of this section, if the examiner has reasonable grounds to believe that the application complies with the Act and these Rules and if the Commissioner has not sent a notice of allowance under subsection 30(5) of the former Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and must require the payment of the final fee set out in paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of that notice.
- Marginal note: Rejection not withdrawn after final action (3) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(4) of the former Rules, on or before the date set out in subsection (4) of this section, but the examiner, after that date, still has reasonable grounds to believe that the application does not comply with the Act or these Rules,
- (a) if a notice was not sent under paragraph 30(6)(a) of the former Rules, the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;
- (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 (4) of this section are considered never to have been made; and
- (c) the application must be reviewed by the Commissioner.
- (a) the day that is six months after the date of the requisition referred to in subsection 30(2) or (4) of the former Rules, as applicable, and
- (b) if the application is deemed to be abandoned under subsection 30(1) of the Act, as it read immediately before October 1, 1989, for the failure of the applicant to prosecute the application following the requisition made under subsection 30(2) or (4) of the former Rules, as applicable, the day on which the conditions for reinstatement set out in subsection 30(2) of the Act, as it read immediately before October 1, 1989, are met in respect of that abandonment.
Marginal note: No amendment after rejection
173 If a category 1 application is rejected by an examiner under subsection 172(1) of these Rules or subsection 30(3) of the former Rules, the specification and the drawings contained in the application must not be amended after the date prescribed by subsection 172(4) of these Rules, unless
- (a) a notice is sent to the applicant informing them that the rejection is withdrawn;
- (b) the amendments made are those required in a notice sent under subsection 86(11) of these Rules or subsection 30(6.3) of the former Rules; or
- (c) the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendments to be made.
Marginal note: Reference
174 The reference to “may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application” in paragraph 91(a) is to be read, in relation to a category 1 application, as a reference to “results from an amendment to the specification or drawings that is not prohibited by section 181 of the former Rules”.
Marginal note: Reference to subsection 28.4(2) of Act and paragraph 93(1)(b) of these Rules
175 The reference to “subsection 28.4(2) of the Act” in paragraph 92(c) and the reference to “paragraph 93(1)(b)” in paragraph 92(f), in relation to a category 1 application, are to be read as a reference to “section 179 of the former Rules” and “subsection 184(3) of the former Rules”, respectively.
Marginal note: Additional fee for restoration of application
176 The additional fee to be paid for the restoration of a category 1 application that was forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, is $200.
DIVISION 3 [Repealed, SOR/2022-120, s. 39]
177 [Repealed, SOR/2022-120, s. 39]
178 [Repealed, SOR/2022-120, s. 39]
179 [Repealed, SOR/2022-120, s. 39]
- (i) if the Commissioner, under paragraph 27.1(2)(b) of the Act, sent a notice to the applicant because of that omission, and if the application is deemed to be abandoned under paragraph 73(1)(c) of the Act because the prescribed fee and the late fee referred to in that notice were not paid within the time referred to in that paragraph, on the earlier of
- (a) the small entity fee set out in item 30 of Schedule 2 if
- (a) the applicable small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in accordance with subsection (3) in respect of the patent, or in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted,
- (a) if the small entity status condition set out in subsection 44(2) is met and if a small entity declaration is filed in respect of the application in accordance with subsection 44(3) before the end of the applicable time for the payment of the fee, the sum of the following:
- (a) to submit the following information or, if any of the information is not known to the applicant, to so indicate:
- (a) the small entity fee set out in subparagraph 10(a)(i) or (ii) of Schedule 2, as applicable, and, for each claim in excess of 20 that is included in the application on the day on which the request for examination is made, the small entity fee set out in paragraph 10(b) of that Schedule, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)
- (a) the later of
- (a) the small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)
- (a) the end of a period of two months after that date or, if a notice is sent under subsection 28(2) of the Act, the earlier of
Marginal note: Line spacing
Marginal note: New page
49 The petition, the abstract, the description, the drawings and the claims must each begin on a new page.
Marginal note: Page numbering
Marginal note: No drawings
Marginal note: Identification of trademarks
52 A trademark mentioned in an abstract, a specification or a drawing must be identified as such.
Petition
Marginal note: Title and content
53 A petition must bear the title “Petition” or “Request” and must contain
Inventors and Entitlement
Marginal note: Information on inventors
- (a) the small entity fee set out in item 6 of Schedule 2, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in respect of the application for a patent in accordance with subsection (3),