Patent Rules: SOR/2019-251

Canada Gazette, Part II, Volume 153, Number 14

Registration
SOR/2019-251 June 25, 2019

PATENT ACT

P.C. 2019-917 June 22, 2019

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 12 ^{footnote a} and subsection 20(18) of the Patent Act ^{footnote b} and section 12 ^{footnote c} of that Act as it read immediately before October 1, 1989, makes the annexed Patent Rules.

TABLE OF PROVISIONS

Patent Rules

Interpretation

1 Definitions

2 Clarification

PART 1

Rules of General Application

Extension of Time

3 Time fixed by Rules

4 Time fixed by subsection 18(2) of Act

5 Prescribed days

Communications

6 Written communications to Commissioner

7 Postal address

8 One patent or application for patent per communication

9 Minimum content of written communications — applications

10 Manner of submitting documents, information or fees

11 Communication sent before general refusal

12 Acknowledgment by Commissioner

Presentation of Documents to Commissioner or Patent Office

13 Manner of submission

14 Layout

15 Documents not in English or French

Confidentiality

16 Information respecting application for patent

17 Prescribed date — withdrawal of request for priority

18 Prescribed date — withdrawn application

Register of Patent Agents

19 Eligibility for qualifying examination

20 Establishment of Examining Board

21 Frequency of qualifying examination

22 Entry on register

23 Maintaining name on register

24 Reinstatement

25 Amendment of register

Appointment of Common Representative

26 Power of joint applicants to appoint common representative

Appointment of Patent Agents

27 Power to appoint patent agent

28 Power to appoint associate patent agent

29 Address

30 Patent agent by default — transfer

31 Notice requiring appointment of patent agent

32 Successor patent agent

Representation

33 Effect of act by common representative

34 Effect of act by patent agent

35 Effect of act by associate patent agent

36 Prosecuting or maintaining in effect application for patent

37 Procedure relating to patent

38 Clarification

39 Interview with officer or employee

40 Notice of disregarded communication

41 Notice of disregarded communication

Government-owned Patents

42 Notice to applicant

43 Inspection of defence-related application for patent

Presentation of Application for a Patent

General

44 Application fee

45 Late fee

46 Text in English or French

47 Page margins — description, claims and abstract

48 Line spacing

49 New page

50 Page numbering

51 No drawings

52 Identification of trademarks

Petition

53 Title and content

Inventors and Entitlement

54 Information on inventors

Abstract

55 Inclusion of abstract

Description

56 Contents, manner and order

57 No incorporation by reference

Sequence Listings

58 PCT sequence listing standard

Drawings

59 Requirements

Claims

60 Form

61 Numbering of claims

62 No references to description or drawings

63 Dependent claim

Non-compliant Application for a Patent

64 Prescribed date — requirements not met

65 Notice

66 Prescribed date — application fee not paid

Reference to Previously Filed Application for a Patent

67 Prescribed period

Maintenance Fees — Application for a Patent

68 Prescribed fee

69 Dates

70 Late fee

Filing Date

71 Prescribed documents and information

Addition to Specification or Addition of Drawing

72 Notice of missing parts of application

Request for Priority

73 Requirements

74 Requirements

75 Withdrawal of request for priority

76 Notice to submit translation

Restoration of Right of Priority

77 Prescribed time

78 Divisional application — within 12 months

Request for Examination

79 Contents of request

80 Examination fee

81 Prescribed time — subsection 35(2) of Act

82 Late fee

83 Prescribed time — subsection 35(5) and paragraph 73(1)(e) of Act

Examination

84 Advancing examination

85 Notice — invention in foreign application

86 Notice — application found allowable by examiner

87 Basic fee of final fee

Divisional Applications

88 Definition of one invention

89 Requirements

90 Time for filing if original application refused

91 Clarification

92 Actions considered taken — divisional application

Deposit of Biological Material

93 Conditions

94 Inclusion of date of deposit of biological material

95 Request to furnish sample to independent expert

96 Nomination of independent expert

97 Form for submitting request

98 Person authorized to submit request

Amendment to Specification and Drawings

99 No amendment before submission of translation

100 No amendment after notice of allowance

101 No amendment after rejection

102 Amendment to specification or drawings

103 Prescribed Documents and information — divisional application

Corrections

104 Error in name of applicant

105 Error in name of inventor

106 Error in name of applicant or inventor

107 Obvious error made by Commissioner

108 Obvious error made by re-examination board

109 Correction on request of patentee

110 Non-application of subsection 3(1)

111 Certificate

Maintaining Rights Accorded by a Patent

112 Prescribed fee

113 Prescribed Dates

114 Clarification

115 Late fee

116 Time — paragraph 46(5)(a) of Act

117 Additional prescribed fee

Reissue

118 Form

119 Prescribed fee

Disclaimer of Any Part of a Patent

120 Form

121 Prescribed fee

Re-examination

122 Prescribed fee

123 Numbering of claims

Registration of Documents and Recording of Transfers

124 Related documents

125 Name change

126 Request to record transfer

127 Condition for recording transfer of application

Third party Rights

128 Period

Abuse of Rights Under Patents

129 Application fee

130 Time to deliver counter statement

Abandonment and Reinstatement

131 Time to reply

132 Application deemed abandoned

133 Prescribed time — request for reinstatement

134 Prescribed fee

135 Non-application of certain portions of subsection 73(3) of Act

Fees for Services

136 Fee for certified copies

137 Fee for non-certified copies

138 Fee for requesting information

Refund and Waiver of Fees

139 Refund of fees

140 Waiver of fee — request to correct errors

PART 2

Patent Cooperation Treaty

Definitions

141 Definitions

Application of Treaty

142 International applications

International Phase

143 Receiving Office

144 Application in English or French

145 International Searching Authority and International Preliminary Examining Authority

146 Fees payable in Canadian currency

147 Transmittal fee

148 Search fee

149 Additional fee

150 Preliminary examination fee

151 Additional fee

National Phase

152 Designated Office

153 Elected Office

154 Requirements

155 Application of Canadian legislation

156 Clarification

157 Application considered open to public inspection

158 Non-application of subsection 27(2) of Act

159 Non-application of certain provisions of Act

160 Non-application of section 78 of Act

161 Filing date

162 Filing date deemed to be within 12 months

163 Application considered not to be referred to in paragraph 28.2(1)(c) or (d) of Act

164 Patent not invalid

PART 3

Transitional Provisions

DIVISION 1

Interpretation

165 Definitions

166 Reissued patents

167 Application of subsection 3(1)

DIVISION 2

Rules in Respect of Category 1 Applications

168 Non-application of certain provisions of these Rules

169 Application of certain provisions of former Rules

170 Reference to “the Act”

171 Final fee

172 Rejection for defects

173 No amendment after rejection

174 Reference

175 Reference to subsection 28.4(2) of Act and paragraph 93(1)(b) of these Rules

176 Additional fee for restoration of application

DIVISION 3

Rules in Respect of Category 2 Applications

177 Non-application of certain provisions of these Rules

178 Application of certain provisions of former Rules

179 Extension of time

180 Requirements for request for priority

181 Notice requiring application to be made accessible

182 Prescribed time — subsection 35(2) of Act

183 Exception to subsection 84(1)

184 Rejection for defects

185 No amendment after rejection

186 Documents and information — divisional application

187 Application deemed abandoned

DIVISION 4

Rules in Respect of Category 3 Applications

188 Non-application of certain provisions of these Rules

189 Application of section 26.1 of former Rules

190 Extension of time

191 Prescribed date — withdrawal of request for priority

192 Prescribed date — withdrawn application

193 Exception to subsection 50(1)

194 Exception to section 58

195 Requirements for request for priority

196 Notice requiring application to be made accessible

197 Prescribed time — subsection 35(2) of Act

198 Exception to subsection 84(1)

199 Rejection for defects

200 No amendment after rejection

201 Request to furnish sample to independent expert

202 Documents and information — divisional application

203 Application deemed abandoned

204 Refund of final fee

DIVISION 5

Rules Applicable to Certain Patents

205 Non-application of subsections 97(2) and (3)

206 Application of certain provisions of former Rules to patents granted on basis of category 1 application

207 Application of certain provisions of former Rules to patents granted on basis of category 3 application

208 Maintenance fee — patent

209 Patent not invalid

DIVISION 6

Other Rules

210 Exception — national phase entry date

211 Extension of period — section 208

212 Extension of period established by Commissioner

213 Extension of time fixed by former Rules

214 Communication sent before refusal

215 Documents not in English or French

216 Patent agent deemed to be appointed

217 Associate patent agent deemed to be appointed

218 Representation — application preceding coming-into-force date

219 Representation — patent granted before coming-into-force date

220 Representation — patent reissued before coming-into-force date

221 Representation — patent granted on or after coming-into-force date

222 Representation — patent reissued on or after coming-into-force date

223 Non-application of section 37

224 Small entity declaration for patent or application

225 Exception to section 54 — filing date before June 2, 2007

226 Exception to section 54 — filing date before October 1, 2010

227 Exception to section 54 — filing date before coming-into-force date

228 Clarification

229 Final fee paid before coming-into-force date

230 Notice of allowance considered not sent

231 Non-application of section 89

232 Periods referred to in section 128

233 Publication in Canadian Patent Office Record

234 Non-application of subparagraph 154(3)(a)(i)

235 Exception to section 162

PART 4

Repeal and Coming into Force

Repeal

236

Coming into Force

237 S.C. 2015, c. 36

SCHEDULE 1

FORM 1

Application for Reissue

FORM 2

Disclaimer

SCHEDULE 2
SCHEDULE 3

Patent Rules

Interpretation

Definitions

1 (1) The following definitions apply in these Rules.

• Act means the Patent Act. (Loi)
• Administrative Instructions means the Administrative Instructions under the Patent Cooperation Treaty, including any modifications made from time to time. (Instructions administratives)
• associate patent agent means a patent agent appointed by another patent agent under section 28. (coagent)
• Budapest Treaty means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, done at Budapest on April 28, 1977, including any amendments and revisions made from time to time to which Canada is a party. (Traité de Budapest)
• common representative means an applicant or patentee appointed under section 26, 218, 219 or 220. (représentant commun)
• description means, except in Form 1 of Schedule 1, the part of a specification other than the claims. (description)
• international application means an application for a patent filed under the Patent Cooperation Treaty. (demande internationale)
• international depositary authority has the same meaning as in Article 2(viii) of the Budapest Treaty. (autorité de dépôt internationale)
• national phase entry date means the date determined under subsection 155(2) or section 210, as applicable. (date d’entrée en phase nationale)
• patent agent means, except in subparagraph 19(a)(iii) and paragraphs 22(b) and 23(1)(b), any person or firm whose name is entered on the register of patent agents. (agent de brevets)
• Patent Cooperation Treaty means the Patent Cooperation Treaty, done at Washington on June 19, 1970, including any amendments, modifications and revisions made from time to time to which Canada is a party. (Traité de coopération en matière de brevets)
• PCT national phase application means an international application in respect of which the applicant
  • (a) has complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2); or
  • (b) has, before the coming into force of these Rules, complied with the requirements of subsection 58(1) of the Patent Rules, as they read immediately before the coming into force of these Rules, and, if applicable, subsection 58(2) of those Rules. (demande PCT à la phase nationale)
• PCT sequence listing standard means the Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications under the PCT set out in the Administrative Instructions. (norme PCT de listages des séquences)
• presentation date means the date determined under subsection 103(2), 186(2) or 202(2), as applicable. (date de soumission)
• Regulations under the Budapest Treaty 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)
• Regulations under the PCT means the Regulations under the Patent Cooperation Treaty, including any amendments made from time to time. (Règlement d’exécution du PCT)
• sequence listing has the same meaning as in the PCT sequence listing standard. (listage des séquences)

Definition of drawing

(2) For the purposes of the Act and these Rules, drawing includes a photograph.

Reference to period

(3) A reference to a period of time in these Rules is, if the period is extended under section 3 or subsection 160(2) of these Rules or subsection 78(1) of the Act, to be read as a reference to the period as extended.

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

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.

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.

Other authorized extensions

(3) The Commissioner is also 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), 86(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) — whether that period has expired or not — 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.

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.

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;
• (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
• (n) any day on which the Patent Office is closed to the public for all or part of the day during ordinary business hours.

Communications

Written communications to Commissioner

6 Written communications intended for the Commissioner or the Patent Office must be addressed to the “Commissioner of Patents”.

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.

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.

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.

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.

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.

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.

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.

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.

Date of receipt — physical delivery to designated establishment

(3) Documents, information or fees that are submitted to the Commissioner or the Patent Office by physical delivery to a designated establishment are deemed to have been received by the Commissioner

• (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
• (b) if they are delivered when the establishment is closed to the public, on the first day on which the Patent Office is next open to the public that falls on or after the day on which the establishment is next open to the public.

Date of receipt — submission by electronic means

(4) Documents, information or fees that are submitted by electronic means under subsection 8.1(1) of the Act are deemed to have been received by the Commissioner on the day on which, according to the local time of the place where the Patent Office is located, the Patent Office receives them.

Communication sent before general refusal

11 (1) If the Commissioner refuses to recognize a person as a patent agent or an attorney under section 16 of the Act generally, any communication in respect of a patent or an application for a patent that is sent by the Commissioner or by the Patent Office to that person 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 refusal and no reply was made before that date; or
• (b) it is sent on the date of the refusal.

Communication sent before specific refusal

(2) If the Commissioner refuses, under section 16 of the Act, to recognize a person as a patent agent or an attorney in respect of a patent or an application for a patent, any communication in respect of that patent or that application for a patent that is sent by the Commissioner or by the Patent Office to that person 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 refusal and no reply was made before that date; or
• (b) it is sent on the date of the refusal.

Communication sent before removal

(3) If the Commissioner removes the name of a person from the register of patent agents under subsection 23(2), any communication respecting a patent or an application for a patent that is sent by the Commissioner or by the Patent Office to that person 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 removal and no reply was made before that date; or
• (b) it is sent on the date of the removal.

Acknowledgment by Commissioner

12 A written communications 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

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.

Exception

(2) Certified copies of documents and documents concerning transfers referred to in section 49 of the Act may be submitted on sheets of paper that are not larger than 21.6 cm x 35.6 cm (8.5" x 14").

Layout

14 (1) Subject to subsection (2), the contents of each page of a document must be in an upright position.

Exception

(2) If it aids in presentation, figures, tables and chemical or mathematical formulas may appear sideways with the top of the figures, tables or formulas at the left side of the page.

Documents not in English or French

15 (1) The Commissioner must not have regard to any part of a document submitted to the Commissioner or to the Patent Office in a language other than 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 if, on or before the filing date, the document referred to in paragraph 71(d) is partly or entirely in a language other than English or French;
• (c) a document submitted under paragraph 85(1)(b);
• (d) a copy of an international application submitted under paragraph 154(1)(a); or
• (e) text matter contained in a sequence listing.

Translation — previously filed application for a patent

(2) If, under paragraph 67(2)(b), a copy of a previously filed application for a patent is submitted to the Commissioner or made available in a digital library in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of that application.

Translation — document

(3) If the applicant, for the purpose of obtaining a filing date, submits to the Commissioner a document that is partly or entirely in a language other than English or French and that on its face appears to be a description, the applicant must submit to the Commissioner an English or French translation to replace any part of the specification and the drawings that, on its filing date, is included in the application and is not in English or French.

Notice requiring translation

(4) If an applicant does not submit a translation required by subsection (2) or (3), the Commissioner must by notice require the applicant to submit the translation to the Commissioner not later than two months after the date of the notice.

Translation replaces specification and drawings

(5) The specification and the drawings contained in a translation of a previously filed application for a patent submitted under subsection (2), or submitted after the notice referred to in subsection (4) is sent, replace the specification and the drawings included in the previously filed application that are deemed by subsection 27.01(2) of the Act to have been contained in the application.

Restriction

(6) The specification and the drawings contained in an application for a patent as a result of a replacement under subsection (3), (4) or (5) must not contain any matter not reasonably to be inferred from the specification or the drawings contained in the application on its filing date.

Non-application of subsection 3(1)

(7) Subsection 3(1) does not apply in respect of the time referred to in subsection (4).

Confidentiality

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 who resides in Canada; 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 who resides in Canada.

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.

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.

Register of Patent Agents

Eligibility for qualifying examination

19 A person is eligible to sit for a paper of the qualifying examination for patent agents if the person meets the following requirements:

• (a) on the day of that paper, the person resides in Canada and
  • (i) has been employed for at least 24 months on the examining staff of the Patent Office,
  • (ii) has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, or
  • (iii) has worked in the area of patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, at least 12 of which were worked in Canada and the rest of which were worked in another country where the person was authorized to act as a patent agent under the law of that country; and
• (b) not later than two months after the day on which the notice referred to in subsection 21(2) is published, the person
  • (i) notifies the Commissioner in writing of their intention to sit for that paper,
  • (ii) pays the fee set out in item 2 of Schedule 2 for that paper, and
  • (iii) furnishes the Commissioner with a statement indicating that they will meet the requirements set out in paragraph (a), along with supporting justifications.

Establishment of Examining Board

20 (1) An Examining Board is established for the purposes of preparing, administering and marking a qualifying examination for patent agents.

Membership

(2) The Commissioner must appoint the members of the Board. The chairperson and at least three other members must be employees of the Patent Office and at least five other members must be patent agents nominated by the Intellectual Property Institute of Canada.

Frequency of qualifying examination

21 (1) The Examining Board must administer a qualifying examination for patent agents at least once a year.

Notice of dates of qualifying examination

(2) The Commissioner must publish on the website of the Canadian Intellectual Property Office a notice that specifies the dates of the next qualifying examination and indicates that a person must meet the requirements set out in section 19 in order to be eligible to sit for one or more papers of the examination.

Designation of place of qualifying examination

(3) The Commissioner must designate the place or places where the qualifying examination is to be held and must, at least 14 days before the first day of the examination, notify every person who meets the requirements set out in paragraph 19(b) of the designated place or places.

Entry on register

22 The Commissioner must, on written request and payment of the fee set out in item 3 of Schedule 2, enter on the register of patent agents kept under section 15 of the Act the name of

• (a) every resident of Canada who has passed the qualifying examination for patent agents;
• (b) every resident of a country other than Canada who is authorized to act as a patent agent under the law of that country; and
• (c) every firm with at least one member who has their name entered on the register.

Maintaining name on register

23 (1) During the period beginning on January 1 and ending on March 31 of each year

• (a) a resident of Canada whose name is entered on the register of patent agents must, in order to maintain their name on the register, pay the fee set out in item 4 of Schedule 2;
• (b) a resident of a country other than Canada whose name is entered on the register of patent agents must, in order to maintain their name on the register, file a statement signed by them setting out their country of residence and declaring that they are authorized to act as a patent agent under the law of that country; and
• (c) a firm whose name is entered on the register of patent agents must, in order to maintain its name on the register, file a statement, signed by one of its members whose name is on the register, that indicates all of the members of the firm whose names are on the register.

Removal from register

(2) The Commissioner must remove from the register of patent agents the name of any patent agent who

• (a) fails to comply with subsection (1); or
• (b) is not a person referred to in paragraph 22(a) or (b) or a firm referred to in paragraph 22(c).

Notice of removal

(3) If the Commissioner removes the name of a patent agent from the register of patent agents under subsection (2), the Commissioner must notify them of the decision and publish the decision on the website of the Canadian Intellectual Property Office.

Reinstatement

24 If the name of a patent agent has been removed from the register of patent agents under subsection 23(2), it may be reinstated on the register if the patent agent

• (a) applies in writing to the Commissioner for reinstatement not later than one year after the day on which their name was removed from the register; and
• (b) is, as the case may be,
  • (i) a person referred to in paragraph 22(a) and pays the fees set out in items 4 and 5 of Schedule 2,
  • (ii) a person referred to in paragraph 22(b) and files the statement referred to in paragraph 23(1)(b), or
  • (iii) a firm referred to in paragraph 22(c) and files the statement referred to in paragraph 23(1)(c).

Amendment of register

25 If the Commissioner refuses to recognize a person as a patent agent under section 16 of the Act, the Commissioner must amend the register accordingly and notify that person of the decision and must publish the decision on the website of the Canadian Intellectual Property Office.

Appointment of Common Representative

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.

• 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.

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.

Common representative by default — application for patent

(4) Subject to subsections (6), (9) and (11), in respect of an application for a patent — other than a divisional application — in relation to which there are joint applicants and no common representative is appointed under subsection (3), the following person is deemed to be appointed as the common representative:

• (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
• (b) in respect of a PCT national phase application,
  • (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.

Common representative by default — divisional application

(5) Subject to subsections (6), (9) and (11), in respect of a divisional application, in relation to which there are joint applicants and no common representative is appointed under paragraph (3)(a), the following person is deemed to be appointed as the common representative:

• (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.

Common representative by default — correction or decision

(6) Subject to subsections (9) and (11), in respect of an application for a patent in relation to which there are joint applicants and no common representative is appointed under subsection (3), if a correction has been made to the name of a joint applicant under section 104 or subsection 154(6) and the correction has changed the identity of that joint applicant, or if a decision is made by the Commissioner under subsection 31(2), (3) or (4) of the Act, other than a decision refusing an application under one of those subsections, the joint applicant whose name appears first when listed in alphabetical order after that correction or decision — or if there is more than one correction or decision, or both a correction and a decision, after the most recent of those corrections or decisions — is deemed to be appointed as the common representative.

Common representative by default — patent

(7) Subject to subsections (9) and (11), in respect of a patent — other than a reissued patent — in relation to which there are joint patentees and no common representative is appointed under paragraph (3)(a), the person who, immediately before the patent was granted, was the common representative in respect of the application on the basis of which the patent was granted, is deemed to be appointed as the common representative in respect of the patent.

Common representative by default — reissued patent

(8) Subject to subsections (9) and (11), in respect of a reissued patent, in relation to which there are joint patentees and no common representative is appointed under paragraph (3)(a), the person who was the common representative in respect of the original patent immediately before the patent was reissued is deemed to be appointed as the common representative in respect of the reissued patent.

Common representative by default — transfer of rights of single applicant or patentee

(9) Subject to subsection (11), in the case where, under section 49 of the Act, the Commissioner, on or after the applicable date referred to in subsection (10), recorded the transfer of all or part of the rights of an applicant in an application for a patent or all or part of the rights of a patentee in a patent, as set out in the records of the Patent Office immediately before the transfer is recorded, that applicant was the only applicant of the application immediately before the transfer was recorded, or that patentee was the only patentee of the patent immediately before the transfer was recorded, no other person has been a single applicant of that application or a single patentee of that patent since that transfer was recorded and no common representative has been appointed under subsection (3) in respect of that application or that patent, the following person is deemed to be appointed as the common representative in respect of that patent or application:

• (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.

Applicable date

(10) For the purposes of subsection (9), the applicable date is

• (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.

Common representative by default — transfer of rights of common representative

(11) If, under section 49 of the Act, the Commissioner records the transfer of all of the rights of a common representative in a patent or an application for a patent, as set out in the records of the Patent Office immediately before the transfer is recorded, and, immediately after the transfer is recorded, there is still more than one applicant for the patent or more than one patentee for the patent but no other common representative is appointed under paragraph (3)(a), the following person is deemed to be appointed as the common representative in respect of that patent or application:

• (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.

Revocation of appointment

(12) An appointment of a common representative, including a deemed appointment, is revoked by the subsequent appointment of another common representative under paragraph (3)(a) or subsection (11).

Appointment of Patent Agents

Power to appoint patent agent

27 (1) An applicant for a patent, a patentee or other person may appoint a patent agent to represent them in any business before the Patent Office.

Mandatory appointment of patent agent

(2) An applicant for a patent must appoint a patent agent 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.

Manner of appointment by applicant or patentee

(3) The appointment of a patent agent by an applicant for a patent or a patentee 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 submitted to the Commissioner and signed by
  • (i) the applicant or patentee, if there is a single applicant or patentee, or
  • (ii) the common representative, if there are joint applicants or patentees;
• (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;
• (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner 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.

Manner of appointment by another person

(4) The appointment of a patent agent, other than an associate patent agent, by a person other than an applicant for a patent or a patentee must be made in a notice to that effect that is signed by that person and submitted to the Commissioner.

Consent to appointment

(5) If a person, other than a patent agent, submits to the Commissioner a document appointing a patent agent, other than an associate patent agent, the appointment is not effective until evidence of the consent to that appointment by the patent agent who is being appointed is submitted to the Commissioner.

Patent agent by default — patent

(6) If a person appoints a patent agent to represent them before the Patent Office in respect of an application for a patent, the person is deemed, unless the appointment document indicates otherwise, to have also appointed the patent agent to represent them before the Patent Office in respect of any patent granted on the basis of that application.

Revocation — appointment by applicant or patentee

(7) The appointment, including a deemed appointment, of a patent agent in respect of any business before the Patent Office by an applicant for a patent or a patentee is revoked if

• (a) a notice to that effect is submitted to the Commissioner and signed by the patent agent or by
  • (i) the applicant or patentee, if there is a single applicant or patentee, or
  • (ii) the common representative, if there are joint applicants or patentees;
• (b) the Commissioner refuses, under section 16 of the Act, to recognize the patent agent as a patent agent either generally or in respect of that business; or
• (c) the Commissioner, under subsection 23(2), removes the name of the patent agent from the register of patent agents.

Revocation — appointment by another person

(8) The appointment, including a deemed appointment, of a patent agent, other than an associate patent agent, in respect of any business before the Patent Office by a person other than an applicant for a patent or a patentee is revoked if

• (a) a notice to that effect, signed by the patent agent or that person, is submitted to the Commissioner;
• (b) the Commissioner refuses under section 16 of the Act to recognize the patent agent as a patent agent either generally or in respect of that business; or
• (c) the Commissioner, under subsection 23(2), removes the name of the patent agent from the register of patent agents.

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 in any business before the Patent Office may appoint a patent agent who resides in Canada as an associate patent agent in respect of that business.

Mandatory appointment of associate patent agent

(2) A patent agent who does not reside in Canada and is appointed as the patent agent by an applicant for a patent, a patentee or other person to represent them in any business before the Patent Office, must appoint a patent agent who resides in Canada as an associate patent agent in respect of that business.

Manner of appointment

(3) The appointment of 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.

Associate patent agent by default — patents

(4) If a patent agent appoints an associate patent agent in respect of an application for a patent, the patent agent is deemed, unless the appointment document indicates otherwise, to have also appointed the associate agent in respect of any patent granted on the basis of the application.

Revocation of appointment of associate patent agent

(5) The appointment, including a deemed appointment, of an associate patent agent in respect of any business before the Patent Office is revoked if

• (a) a notice to that effect, signed by the associate patent agent or the patent agent who appointed the associate patent agent, is submitted to the Commissioner;
• (b) the appointment of the patent agent who appointed the associate patent agent is revoked in respect of that business;
• (c) the Commissioner refuses, under section 16 of the Act, to recognize the associate patent agent as a patent agent, either generally or in respect of that business; or
• (d) the Commissioner, under subsection 23(2), removes the name of the associate patent agent from the register of patent agents.

Address

29 The patent agent’s postal address must be included in the document appointing the patent agent.

Patent agent by default — transfer

30 If the Commissioner records the transfer of a patent or an application for a patent under section 49 of the Act for which a patent agent, other than an associate patent agent, is appointed to represent the applicant or patentee before the Patent Office in respect of that patent or application, the transferee is deemed, unless otherwise indicated in the request to record the transfer, to have appointed the patent agent to represent them in respect of the patent or the application, as applicable.

Notice requiring appointment of patent agent

31 (1) 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 either a patent agent who resides in Canada or a non-resident patent agent who, in turn, not later than the same three months, must appoint an associate patent agent.

Notice requiring appointment of Canadian resident

(2) If an applicant for a patent is required under subsection 27(2) to appoint a patent agent and the applicant appoints a patent agent who does not reside in Canada but, contrary to subsection 28(2), no associate patent agent is appointed, the Commissioner must by notice to the non-resident patent agent require that, not later than three months after the date of the notice, either

• (a) the non-resident patent agent appoint an associate patent agent, or
• (b) the applicant appoint either a patent agent who resides in Canada or a different non-resident patent agent who, in turn, must appoint an associate patent agent not later than the same three months.

Exception

(3) Subsection (2) does not apply during the three-month period referred to in subsection (1).

Successor patent agent

32 If a patent agent withdraws from practice, a patent agent who is the successor to that patent agent and has demonstrated that fact to the Commissioner, is deemed to be the patent agent appointed under section 27 or 28, as applicable, in respect of any patent or application for a patent in respect of which the patent agent who has withdrawn from practice was appointed.

Representation

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.

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 resides in Canada and 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.

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.

Prosecuting or maintaining in effect application for patent

36 (1) Subject to subsections (2) to (5), 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 residing in Canada is appointed or if there is a requirement under subsection 27(2) to appoint a patent agent, the applicant must be represented by a patent agent who resides in Canada and is appointed in respect of that application; and
• (b) in any other case,
  • (i) if there is a single applicant, they must represent themselves, and
  • (ii) if there are joint applicants, they must be represented by the common representative.

Exceptions

(2) For the purposes of filing an application for a patent, paying a fee under subsection 27(2) or section 27.1 of the Act or paying the additional fee for late payment referred to in subsection 154(4) of these Rules, or complying with the requirements of subsection 154(1), (2) or (3) of these Rules,

• (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.

Exceptions

(3) For the purpose of submitting a request to record a transfer under subsection 49(2) of the Act,

• (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.

Exceptions

(4) For the purposes of submitting a request to record a name change under section 125,

• (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.

Exceptions

(5) For the purposes of section 27.01 or 28.01 of the Act, for the purpose of paying a fee in respect of an application for a patent — other than a fee under subsection 27(2) or section 27.1 of the Act or a fee referred to in subsection 154(1), (2), (3) or (4) of these Rules — or for the purpose of taking any of the actions required by subparagraphs 73(3)(a)(i) to (iv) of the Act to reinstate an application for a patent deemed to be abandoned under paragraph 73(1)(c) of the Act,

• (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.

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
  • (iii) for any other purpose, the patentees must be represented by the common representative or by a person authorized by the common representative.

Reissue, disclaimer or participation in re-examination

(2) In any business before the Patent Office for the purpose of reissuing a patent under section 47 of the Act, making a disclaimer under section 48 of the Act, filing a reply under subsection 48.2(5) of the Act or participating in a re-examination proceeding under section 48.3 of the Act,

• (a) if there is a single patentee, they must represent themselves or be represented by a patent agent who resides in Canada and 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 resides in Canada and has been appointed in respect of that business.

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; or
• (c) a notice of revocation of an appointment of a patent agent.

Interview with officer or employee

39 Only the following persons may have an interview with an officer or employee of the Patent Office regarding an application for a patent:

• (a) if, in respect of that application, a patent agent residing in Canada is appointed or there is a requirement under subsection 27(2) to appoint a patent agent,
  • (i) a patent agent appointed in respect of that application who resides in Canada,
  • (ii) with the permission of the associate patent agent appointed in respect of that application, a patent agent appointed in respect of that application who does not reside in Canada, and
  • (iii) with the permission of the patent agent appointed in respect of that application who resides in Canada,
    • (A) the applicant, if there is a single applicant, or
    • (B) the common representative, if there are joint applicants; and
• (b) in any other case,
  • (i) the applicant, if there is a single applicant, and
  • (ii) the common representative, if there are joint applicants.

Notice of disregarded communication

40 (1) If, in respect of a patent or an application for a patent, a joint applicant or joint patentee who is not the common representative 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 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.

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).

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.

Notice of disregarded communication

41 (1) If a patent agent who resides in Canada but 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 in respect of that application or patent, 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.

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).

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.

Government-owned Patents

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.

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

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
• (b) in any other case, the standard fee set out in that item.

Small entity status condition

(2) The small entity status condition is that

• (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 50 employees or less or is a university, other than
  • (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees, 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 more than 50 employees;
• (b) in respect of an international application, the applicant of the application on the national phase entry date is, on that date, an entity that has 50 employees or less or is a university, other than an entity referred to in subparagraph (a)(i) or (ii); and
• (c) in respect of a divisional application, the applicable requirements of this subsection are met in respect of the original application.

Small entity declaration

(3) A small entity declaration must

• (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) the applicant, if there is a single applicant, or
  • (ii) any one of the applicants, if there are joint applicants; and
• (d) indicate the name of the applicant and, if applicable, the name of the patent agent signing the declaration.

Non-application of subsection 3(1)

(4) Subsection 3(1) does not apply in respect of the times referred to in subsection (1).

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.

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.

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:

• top margin, 2 cm
• left margin, 2.5 cm
• right margin, 2 cm
• bottom margin, 2 cm

Page margins — drawings

(2) The minimum margins of pages containing the drawings must be as follows:

• top margin, 2.5 cm
• left margin, 2.5 cm
• right margin, 1.5 cm
• bottom margin, 1 cm

Blank margins

(3) Subject to subsections (4) and (5), the margins of the pages referred to in subsections (1) and (2) must be completely blank.

File reference

(4) The top margin of the pages referred to in subsections (1) and (2) may contain in either corner an indication of the applicant’s file reference.

Line numbering

(5) The lines of each page of the description and of the claims may be numbered in the left margin.

Line spacing

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.

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.

New page

49 The petition, the abstract, the description, the drawings and the claims must each begin on a new page.

Page numbering

50 (1) The pages of the specification must be numbered consecutively.

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.

No drawings

51 (1) The petition, the abstract, the description and the claims must not contain drawings.

Formulas

(2) The abstract, the description and the claims may contain chemical or mathematical formulas.

Identification of trademarks

52 A trademark mentioned in an abstract, a specification or a drawing must be identified as such.

Petition

Title and content

53 A petition must bear the title “Petition” or “Request” and must contain

• (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.

Inventors and Entitlement

Information on inventors

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.

Statement

(2) The application must contain a statement to the effect that either

• (a) the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent, or
• (b) 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.

Manner of presentation

(3) The statement and information required by this section must be included in the petition or submitted in a document other than the abstract, the specification or the drawings.

Abstract

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.

Technical field

(2) The abstract must specify the technical field to which the invention relates.

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.

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.

Word limit

(5) The abstract must not contain more than 150 words.

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.

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.

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

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.

Exception

(2) The description may be presented in a different manner or order if, because of the nature of the invention, a different manner or order would result in a better understanding or more economical presentation of the invention.

No incorporation by reference

57 (1) The description must not incorporate any document by reference.

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.

Identification of documents

(3) Every document referred to in the description must be fully identified.

Sequence Listings

PCT sequence listing standard

58 (1) If a specification discloses a nucleotide sequence or amino acid sequence other than a sequence identified as forming a part of the prior art, the description must contain, in respect of that sequence, a 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.

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.

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.

Statement — application not in compliance

(4) If a sequence listing filed in paper form that does not comply with the PCT sequence listing standard or in an electronic form that does not comply with the PCT sequence listing standard is replaced by a sequence listing in an electronic form that does comply with that standard, the applicant must file a statement that the replacement listing does not go beyond the disclosure in the application for a patent as originally filed.

Definitions

(5) The following definitions apply in this section.

• amino acid sequence has the same meaning as in the PCT sequence listing standard. (séquence d’acides aminés)
• nucleotide sequence has the same meaning as in the PCT sequence listing standard. (séquence de nucléotides)

Drawings

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.

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.

No colourings

(3) Except in the case of photographs, the drawings must be without colourings.

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.

Numbers, letters and lead lines

(5) All numbers, letters and lead lines in the drawings must be simple and clear.

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.

Font size

(7) Numbers and letters in the drawings must be at least 0.32 cm in height.

Multiple figures

(8) A single page of the drawings may contain several figures.

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.

Numbering of figures

(10) If there is more than one figure, the figures must be numbered consecutively.

Reference characters

(11) A reference character not mentioned in the description must not appear in a drawing and vice versa.

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.

No unnecessary text

(13) The drawings must not contain text matter except to the extent necessary to understand the drawings.

Claims

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.

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”.

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”.

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.

Sequence identifier

(3) If the description contains a sequence listing, the claims may refer to sequences represented in the sequence listing by the sequence identifier, as defined in the PCT sequence listing standard, and preceded by “SEQ ID NO:”.

Deposit of biological material

(4) If the description refers to a deposit of biological material, the claims may refer to that deposit.

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.

Reference to preceding claim

(2) A dependent claim may only refer to a preceding claim or claims.

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.

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

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.

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.

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.

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

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
• (b) the filing date.

Prescribed requirements

(2) The prescribed requirements for the purposes of section 27.01 of the Act are the following:

• (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
• (b) if the previously filed application for a patent was not filed in Canada, the applicant must, not later than two months after the date of the submission of that statement, either
  • (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.

Non-application of subsection 3(1)

(3) Subsection 3(1) does not apply in respect of the times referred to in subsection (1) or (2).

Maintenance Fees — Application for a Patent

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
• (b) in any other case, the standard fee set out in that item for that anniversary date.

Exception

(2) For the purposes of subsection 27.1(1) of the Act, the prescribed fee to maintain a divisional application in effect is, for the period beginning on its filing date and ending on its presentation date, the total of

• (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
• (b) in any other case, the standard fees set out in that item for the anniversary dates falling in that period.

Non-application of subsection 3(1)

(3) Subsection 3(1) does not apply in respect of the times referred to in subsection (1) or (2).

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.

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

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

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.

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.

Prescribed Requirements

(3) For the purposes of paragraph 28.01(2)(d) of the Act, the prescribed requirements are that the applicant, within the period prescribed by subsection (2),

• (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;
• (b) if that previously regularly filed application for a patent is partly or entirely in a language other than English or French, must submit to the Commissioner a translation in English or French of any part of the application that is in a language other than English or French; and
• (c) must submit to the Commissioner an indication as to where, in that previously regularly filed application for a patent or in the translation referred to in paragraph (b), the addition is included.

Prescribed period for withdrawal

(4) For the purposes of subsection 28.01(2) of the Act, the addition may be withdrawn 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), not later than two months after the date of the notice.

Non-application of subsection 3(1)

(5) Subsection 3(1) does not apply in respect of the times referred to in this section.

Exceptions

(6) Subsection 28.01(1) of the Act does not apply to a divisional application filed under subsection 36(2) or (2.1) of the Act or to an application for a patent in respect of which a statement is submitted under section 27.01 of the Act.

Prohibited addition

(7) An applicant must not, under subsection 28.01(1) of the Act, add to the claims included in their application for a patent.

Request for Priority

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
• (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, unless that approval is withdrawn in time to permit the Commissioner to stop technical preparations to open the application to public inspection.

Time to submit information

(2) The information required under subsection 28.4(2) of the Act must be submitted to the Commissioner within the time prescribed by subsection (1).

Requirement

(3) A request for priority in respect of a pending application for a patent may be based on a previously regularly filed application only if the filing date of the pending application is, or under subsection 28.4(6) of the Act is deemed to be, within 12 months after the filing date of the previously regularly filed application.

Correction — error in filing date

(4) An error in a filing date submitted under subsection 28.4(2) of the Act may be corrected on request submitted before the earlier of

• (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.

Correction — name or number

(5) An error in the name of a country or office of filing or in the number of an application for a patent submitted under subsection 28.4(2) of the Act may be corrected on request submitted on or before the day on which the final fee set out in item 13 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.

Withdrawal of request for priority

(6) If a request for priority in respect of a previously regularly filed application for a patent is withdrawn before the end of a period of 16 months after the filing date of that application, the time prescribed by subsection (1) must be determined as if the request for priority had never been made on the basis of that application.

Non-application of subsection 3(1)

(7) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

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.

Date

(2) For the purposes of subsection (1), the day is the latest of

• (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.

Withdrawal of request for priority

(3) If a request for priority is withdrawn with respect to a previously regularly filed application for a patent before the end of a period of 16 months after the filing date of that application, the time prescribed by subsection (1) must be determined as if the request for priority had never been made on the basis of that application.

Notice

(4) If the applicant does not comply with the requirements of paragraph (1)(a) or (b) within the time prescribed by subsection (1), the Commissioner must by notice require the applicant to comply with the requirements of paragraph (1)(a) or (b) not later than two months after the date of the notice.

Applicant considered to comply

(5) If the applicant complies with the requirements of paragraph (1)(a) or (b) after the time prescribed by subsection (1) but before a notice is sent under subsection (4) or, if a notice is sent, not later than two months after the date of the notice, the applicant is considered to have complied with subsection (1).

Request for priority considered withdrawn

(6) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than two months after the date of the notice referred to in subsection (4), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless

• (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.

Applicant considered to comply

(7) If the conditions set out in paragraphs (6)(a) and (b) are met in respect of a previously regularly filed application for a patent, the applicant is considered to have complied with subsection (1) in respect of that application.

Submission of copy and certificate

(8) If the conditions set out in paragraphs (6)(a) and (b) are met in respect of a previously regularly filed application for a patent and if the patent office where that application was filed provides the copy and certificate referred to in paragraph (1)(a), the applicant or the patentee, as applicable, must submit the copy and certificate to the Commissioner not later than three months after the day on which they were provided.

Request for priority considered withdrawn

(9) If the applicant or patentee fails to comply with subsection (8) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in that subsection in respect of that application.

Divisional application

(10) The applicant of a divisional application is considered to have complied with subsection (1) in respect of a previously regularly filed application for a patent if, on or before the presentation date of the divisional application, the applicant of the original application is considered to have complied with subsection (1) in respect of that previously regularly filed application.

Request for priority

(11) A request for priority in respect of a divisional application is considered to have been withdrawn in respect of a previously regularly filed application for a patent if, in respect of the original application, a request for priority is, on or before the presentation date of the divisional application, considered to have been withdrawn under subsection (6) or (9) in respect of that previously regularly filed application.

Exception

(12) Subsections (1) to (11) do not apply in respect of a previously regularly filed application on the basis of which an applicant requests priority, if the pending application for a patent is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application and if the requirements of Rule 17.1(a), (b) or (b-bis) of the Regulations under the PCT are complied with in respect of that previously regularly filed application.

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.

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.

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.

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.

Request for priority considered withdrawn

(3) If the applicant of the pending application for a patent does not comply with a notice under subsection (1) or (2) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in subsection (1) or (2), as applicable, in respect of that previously regularly filed application.

Restoration of Right of Priority

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.

Prescribed Requirements

(2) For the purposes of subparagraph 28.4(6)(b)(iii) of the Act, the prescribed requirements are that the applicant

• (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.

Non-application of subsection 3(1)

(3) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

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

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.

Examination fee

80 (1) For the purposes of subsection 35(1) of the Act, the prescribed fee for an application for a patent to be examined is

• (a) the applicable small entity fee set out in item 10 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)
  • (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
• (b) in any other case, the applicable standard fee set out in that item.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the times prescribed by subsection (1).

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.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the times prescribed by subsection (1).

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.

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.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

Examination

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 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.

Exception

(2) In respect of a request made under subsection (1) by an applicant, the Commissioner must not advance the examination of the application for a patent out of its routine order or, if the examination is advanced, must return it to its routine order if

• (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.

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;
• (b) to submit a copy of any document related to the information referred to in paragraph (a) or, if the document is not available to the applicant, to so indicate; and
• (c) to submit an English or French translation of any document, or part of a document, related to the information referred to in paragraph (a), that is not in either English or French or, if such a translation is not available to the applicant, to so indicate.

Notice — invention previously published or patented

(2) If, in the course of examining an application for a patent, an examiner has reasonable grounds to believe that an invention disclosed in an application for a patent was, before the filing date of the application, published or the subject of a patent, the examiner may by notice requisition the applicant to identify the first publication of or patent for that invention or, if that information is not known to the applicant, to so indicate.

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 13 of Schedule 2 not later than four months after the date of the notice.

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.

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.

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.

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.

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 13 of Schedule 2 not later than four months after the date of the notice.

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.

Date

(8) For the purposes of subsections (6) and (7), the date is four months after the date of the notice referred to in subsection (5) 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 (5), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

Additional defects

(9) If, during the review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the final action notice, the Commissioner must by notice inform the applicant of those defects and invite the applicant to submit arguments, not later than one month after the date of the notice, as to why the application does comply.

Notice — rejection withdrawn

(10) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice.

Notice requiring certain amendments

(11) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules and certain amendments are necessary in order to make the application allowable, the Commissioner must by notice inform the applicant that those amendments must be made not later than three months after the date of the notice.

Notice — application found allowable after amendments

(12) If the applicant complies with the notice sent under subsection (11), the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice.

Right to hearing

(13) Before refusing an application for a patent under section 40 of the Act, the Commissioner must give the applicant an opportunity to be heard.

Withdrawal of notice of allowance

(14) If, after a notice of allowance is sent but before a patent is issued, the Commissioner has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules, the Commissioner must

• (a) by notice, inform the applicant of that fact and that the notice of allowance is withdrawn; and
• (b) if the final fee has been paid, refund it.

Exception

(15) Subsection (14) does not apply in respect of an application for a patent at any time at which it is deemed to be abandoned.

Consequence of notice sent under subsection (14)

(16) If a notice is sent to the applicant under subsection (14),

• (a) the notice of allowance that was sent is considered never to have been sent; and
• (b) the application for a patent is subject to further examination.

Notice of allowance considered not sent

(17) A notice of allowance that is sent under subsection (1), (6) or (10) is considered never to have been sent and the application for a patent is subject to further examination if, not later than four months after the day on which the Commissioner sends the notice to the applicant but before the day on which the final fee is paid, the applicant pays the fee set out in item 14 of Schedule 2 and requests that the notice of allowance be withdrawn and that the application be subject to further examination.

Non-application of subsection 3(1)

(18) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1), (6), (10), (12) or (17).

Basic fee of final fee

87 (1) For the purposes of calculating, in respect of an application for a patent, the final fee set out in item 13 of Schedule 2, the prescribed basic fee is

• (a) the small entity fee set out in that item, 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 that fee; and
• (b) in any other case, the standard fee set out in that item.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the time referred to in subsection (1).

Divisional Applications

Definition of one invention

88 For the purposes of section 36 of the Act, one invention includes a group of inventions linked in such a manner that they form a single general inventive concept.

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.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply to the time referred to in paragraph (1)(b).

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;
• (c) if an appeal is taken under section 41 of the Act and the final judgment of the Federal Court in that appeal is appealed to the Federal Court of Appeal and no appeal is taken to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal in that appeal, the later of
  • (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
• (d) if an appeal is taken under section 41 of the Act and the final judgment of the Federal Court in that appeal is appealed to the Federal Court of Appeal and an appeal is taken to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal in that appeal, the end of a period of two months after the day on which the final judgment of the Supreme Court is rendered in the appeal or, if the appeal to the Supreme Court is discontinued, the end of a period of two months after the day on which the appeal is discontinued.

Clarification

91 For greater certainty, the specification and the drawings contained in a divisional application on its presentation date 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 that the matter is prior art with respect to the application.

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

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 three months after the day on which the authority issues a receipt;
• (e) in the case where the depositor is notified under Article 4 of the Budapest Treaty of the inability of the international depositary authority to furnish samples, a new deposit must be made in accordance with that Article; and
• (f) in the case where a new deposit of the biological material is made with another international depositary authority under Article 4(1)(b)(i) or (ii) of 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 after the day on which the authority issues a receipt.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply to the time referred to in paragraph (1)(b).

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.

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.

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).

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.

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.

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.

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.

Copy of request and certification to be sent

(3) Except in the case where subsection 98(2) applies, if the Commissioner makes a certification under subsection (2), the Commissioner must send a copy of the request together with the certification to the person who submitted the request.

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.

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

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.

No amendment after 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 is sent.

Exception — obvious error

(2) The specification and the drawings may be amended by the applicant on or before the day on which the final fee set out in item 13 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 if, from the specification and the drawings contained in the application for a patent on the day on which the notice of allowance was sent, it is obvious that something other than what appears in the specification and the drawings was intended and that nothing other than the proposed amendment could have been intended.

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.

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.

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.

Presentation date

(2) The presentation date of an application for a patent is the date on which the Commissioner receives the documents and information referred to in subsection (1) or, if they are received on different dates, the latest of those dates.

Corrections

Error in name of applicant

104 An error in the name of an applicant in an application for a patent, other than a PCT national phase application, that arises from inadvertence, accident or mistake, without any fraudulent or deceptive intention, must be corrected by the Commissioner on the request of the person who submitted the application on their own behalf or on behalf of the applicant, 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 the request is made 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.

Error in name of inventor

105 An error in the name of an inventor in an application for a patent must be corrected by the Commissioner on the request of the applicant if the correction changes the identity of the inventor and the request is made before the day on which a notice of allowance is sent.

Error in name of applicant or inventor

106 An error in the name of an applicant or an inventor in an application for a patent must be corrected by the Commissioner on the request of the applicant if the request is made on or before the day on which the final fee set out in item 13 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 the correction does not result in a change in their identity.

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.

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.

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.

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.

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 in the name of the patentee or an inventor included in the patent, if the correction does not change their identity; 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.

Contents of request

(2) A request under subsection (1) must contain

• (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.

Notice

(3) If a request is made under subsection (1) during the 12-month period referred to in that subsection but the request does not comply with subsection (2) or the fee referred to in subsection (1) is not paid, the Commissioner must by notice require the patentee to submit the elements referred to in subsection (2) or pay the fee referred to in subsection (1), as applicable, not later than three months after the date of the notice.

Correction after notice

(4) The Commissioner must make the correction if the applicant complies with the notice not later than three months after the date of the notice and if the error is one referred to in subsection (1).

Date of correction

(5) A correction made under subsection (1) or (4) is considered to have been made on the day on which the patent was issued.

Non-application of subsection 3(1)

110 Subsection 3(1) does not apply in respect of the times referred to in subsection 107(1), 108(1) or 109(1), (3) or (4).

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.

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

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
• (b) in any other case, the standard fee set out in that item for that anniversary date.

Small entity status condition

(2) The small entity status condition is that

• (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 50 employees or less or is a university, other than
  • (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees, 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 more than 50 employees;
• (b) in respect of a patent granted on the basis of a PCT national phase application, the applicant of the application on the national phase entry date is, on that date, an entity that has 50 employees or less or is a university, other than an entity referred to in subparagraph (a)(i) or (ii); and
• (c) in respect of a patent granted on the basis of a divisional application, the applicable requirements set out in subsection 44(2) are met in respect of the original application.

Small entity declaration

(3) A small entity declaration must

• (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) the patentee, if there is a single patentee, or
  • (ii) any one of the patentees, if there are joint patentees; and
• (d) indicate the name of the patentee and, if applicable, the name of the patent agent signing the declaration.

Non-application of subsection 3(1)

(4) Subsection 3(1) does not apply in respect of the times referred to in subsection (1).

Exception

(5) If a patent is granted on the basis of an application for a patent, in respect of which a fee was payable under subsection 27.1(1) of the Act within the 12-month period preceding the day on which the patent was issued but tha was not yet paid before that day, the prescribed fee, for the purposes of subsection 46(1) of the Act, to maintain in effect the rights accorded by the patent is, for the day 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, the total of

• (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.

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.

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.

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.

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.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

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

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.

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

Form

120 A disclaimer under section 48 of the Act must be filed in Form 2 of Schedule 1.

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

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
• (b) in any other case, the standard fee set out in that item.

Clarification

(2) For greater certainty, for the purposes of subparagraph (1)(a)(i), a reissued patent is considered to be granted on the basis of the original application.

Exception — small entity status condition

(3) In respect of a request for re-examination under subsection 48.1(1) of the Act by a person other than the patentee, the small entity status condition is that the person requesting the re-examination is, on the date of the request, an entity that has 50 employees or less or is a university, other than an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees.

Exception — small entity declaration

(4) In respect of a request for re-examination under subsection 48.1(1) of the Act by a person other than the patentee, a small entity declaration must

• (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 the person requesting re-examination or by a patent agent appointed in respect of that request; and
• (e) indicate the name of the person requesting re-examination and, if applicable, the name of the patent agent signing the declaration.

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

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.

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.

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.

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 13 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

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
  • (ii) if the application was not deemed to be abandoned under paragraph 73(1)(c) of the Act for the reason referred to in subparagraph (i), on the earlier of
    • (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;
• (b) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11(1)(a)(ii) of the Act, the period beginning six months after the end of the prescribed time referred to in subsection 35(2) of the Act and ending
  • (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
  • (ii) if the application was not deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of
    • (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;
• (c) in the case of a patent that was granted on the basis of a divisional application referred to in paragraph 55.11(1)(b) of the Act, any period that applies under this section in respect of a patent granted on the basis of the original application, or that would apply to that patent if it were granted, but excluding any part of that period that is after the presentation date of the divisional application; and
• (d) in the case of a patent referred to in paragraph 55.11(1)(c) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 46(1) of the Act was due under that subsection but was not paid, without taking into account subsection 46(3) of the Act, and ending
  • (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

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.

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.

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.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

Abandonment and Reinstatement

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.

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.

Application deemed abandoned

132 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; or
• (e) the applicant does not pay the final fee set out in item 13 of Schedule 2 within the applicable time referred to in subsection 86(1), (6), (10) or (12).

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.

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.

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) 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.

Non-application of subsection 3(1)

(4) Subsection 3(1) does not apply to the time prescribed by subsection (1).

Prescribed fee

134 For the purposes of subparagraph 73(3)(a)(iv) of the Act, the prescribed fee is the fee set out in item 15 of Schedule 2.

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.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply to the time prescribed by paragraph (1)(b).

Fees for Services

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.

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.

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.

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

Refund of fees

139 (1) Subject to subsection (2), the Commissioner must refund

• (a) a fee paid by a person in respect of a paper of a qualifying examination, if the Commissioner notifies the person that they passed an equivalent paper of a previous qualifying examination and the person notifies the Commissioner in writing not later than the thirtieth day after receipt of the notification from the Commissioner that they no longer intend to sit for the paper;
• (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; and
• (i) any fee paid, if payment of the fee is waived by the Commissioner.

Request

(2) The Commissioner must not give a refund under any of paragraphs (1)(a) to (h) unless a request for the refund is received not later than three years after the day on which the fee was paid.

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.

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.

PART 2

Patent Cooperation Treaty

Definitions

Definitions

141 The following definitions apply in this Part.

international filing date means the date accorded to an international application under Article 11 of the Patent Cooperation Treaty. (date du dépôt international)

priority date has the same meaning as in Article 2(xi) of the Patent Cooperation Treaty. (date de priorité)

Application of Treaty

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 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.

Exceptions

(2) Article 24(2) of the Patent Cooperation Treaty and Rule 49.6 of the Regulations under the PCT do not apply in respect of an international application in which Canada is designated under the Patent Cooperation Treaty.

International Phase

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.

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.

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.

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.

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.

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.

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.

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.

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.

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

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.

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.

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 international application, other than any text matter contained in a sequence listing, is partly or entirely in a language other than English or French, submit to the Commissioner a translation in English or French of any part of the international application, other than any text matter contained in a sequence listing, that is in a language other than English or French; 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.

Fee

(2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date must, not later than 30 months after the priority date, pay

• (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.

Reinstatement of rights

(3) An applicant who fails to comply with the requirements of subsection (1) and, if applicable, subsection (2) not later than 30 months after the priority date, is considered to have complied with those requirements within that time if

• (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) and (b),
  • (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
  • (iv) pays the fee for reinstatement of rights set out in item 22 of Schedule 2; and
• (b) if the applicant complies with the requirements of paragraph (a) after the second anniversary of the international filing date, the applicant,
  • (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
  • (ii) after 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, 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.

Extension in case of attempted payment

(4) If the applicant of an international application fails to comply with the requirements of subsection (1) and, if applicable, subsection (2), not later than 30 months after the priority date and if, before the end of a period of 12 months after that time, the Commissioner receives a communication clearly indicating the applicant’s intention to pay some or all of the fees required by subsection (3), but all of the fees required by subsection (3) are not paid before the end of that 12-month period, those fees are considered to have been paid on the day on which that communication is received if the unpaid fees, together with the additional fee for late payment set out in item 23 of Schedule 2, are paid after the end of that 12-month period but not later than two months after the day on which the communication is received.

Fee considered paid

(5) If the Commissioner has, under subsection 3(3), extended the time period for the payment of a fee prescribed by paragraph (1)(c), subsection (2) or subparagraph (3)(a)(iii) or (b)(i) or (ii) and the fee is paid before the end of the extended period, for the purposes of subsection (1), (2) or (3), as applicable, that fee is considered to have been paid on the day on which the small entity fee was paid.

Correction of error in name of applicant

(6) An error in the records of the patent office in the name of the applicant, who complied with the requirements of subsection (1) and, if applicable, subsection (2), that arises from inadvertence, accident or mistake, without any fraudulent or deceptive intention, must be corrected by the Commissioner on the request of the person who paid the basic national fee prescribed by paragraph (1)(c) or subparagraph (3)(a)(iii), if the request contains a statement that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention and the request is made not later than the earlier of

• (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
• (b) if the Commissioner records a transfer of the application for a patent under section 49 of the Act, on or before the day on which the Commissioner received the request to record that transfer.

Notice

(7) If the Commissioner has reasonable grounds to believe that the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), is neither the applicant of the international application nor their legal representative, the Commissioner must by notice require that person to establish that they are either the applicant of the international application or their legal representative.

Person considered never to have complied

(8) If the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), fails to comply with the notice not later than three months after the date of the notice, that person is considered never to have complied with those requirements.

Non-application of subsection 3(1)

(9) Subsection 3(1) does not apply in respect of the times referred to in subsection (1), (2), (3), (4) or (6).

Exception to subsection 3(1)

(10) Subsection 3(1) does not authorize the Commissioner to extend the time referred to in subsection (8) for complying with the notice beyond the later of the end of a period of six months after the date of the notice and the end of a period of 30 months after the priority date.

Non-application of Article 48(2) of Patent Cooperation Treaty

(11) Article 48(2) of the Patent Cooperation Treaty does not apply in respect of the times referred to in subsection (1), (2), (3) or (4) of this section or in respect of any time limit applicable to a PCT national phase application.

Non-application of certain Rules under the PCT

(12) Rules 49ter.1(f) and 49ter.2 of the Regulations under the PCT do not apply to a PCT national phase application.

New PCT national phase application

(13) Once an international application becomes a PCT national phase application, it may not become a new PCT national phase application unless the earlier PCT national phase application is withdrawn.

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.

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.

Small entity declaration

(3) For the purpose of subsection (2), an applicant is not considered to have paid the fee referred to in subparagraph 154(1)(c)(i), paragraph 154(2)(a) or clause 154(3)(a)(iii)(A) or 154(3)(b)(i)(A) or (ii)(A) until the small entity declaration has been filed.

Translation replaces original

(4) If a translation of the international application has been submitted under paragraph 154(1)(b), the translation replaces the text of the PCT national phase application.

Restriction

(5) The specification and the drawings contained in a PCT national phase application as a result of the replacement referred to in subsection (4) must not contain any matter not reasonably to be inferred from both

• (a) the specification or the drawings contained in the application on its filing date; and
• (b) the specification or the drawings contained in the application immediately before the replacement.

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.

Exception — sequence listings

(2) Paragraph (1)(b) does not apply in respect of sequence listings that do not form part of the international application.

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.

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.

Non-application of certain provisions of Act

159 Subsection 27(7), sections 27.01, 28 and 28.01, subsection 78.1(2) and section 78.2 of the Act do not apply in respect of a PCT national phase application.

Non-application of section 78 of Act

160 (1) Section 78 of the Act does not apply in respect of a period of time fixed under the Act for furnishing to the Commissioner, in relation to an international application that has become a PCT national phase application, a document or information in accordance with the Patent Cooperation Treaty before that international application became a PCT national phase application.

Extension in accordance with Regulations under the PCT

(2) If the period referred to in subsection (1) ended in respect of the application referred to in that subsection on a day referred to in an item of Rule 80.5 of the Regulations under the PCT, that period is extended to the next day that is not such a day.

Filing date

161 The filing date of a PCT national phase application is the international filing date.

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.

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.

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

Definitions

165 (1) The following definitions apply in this Part.

application preceding the coming-into-force date means an application for a patent for which the filing date is before the coming-into-force date. (demande antérieure à la date d’entrée en vigueur)

category 1 application means an application for a patent for which the filing date is before October 1, 1989. (demande de catégorie 1)

category 2 application means an application for a patent for which the filing date is on or after October 1, 1989 but before October 1, 1996. (demande de catégorie 2)

category 3 application means an application for a patent for which the filing date is on or after October 1, 1996 but before the coming-into-force date. (demande de catégorie 3)

coming-into-force date means the day on which section 121 of the Economic Action Plan 2014 Act, No. 2 comes into force. (date d’entrée en vigueur)

former Rules means the Patent Rules as they read immediately before the coming-into-force date. (anciennes règles)

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 the coming-into-force date, the filing date of that application is, for the purposes of these Rules, the filing date determined in accordance with that section.

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.

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

Non-application of certain provisions of these Rules

168 (1) Sections 14, 47 to 51, 55, 56, 58 to 63, 65, 74 and 93 to 96, subsections 97(2) and (3) and sections 98 and 104 do not apply in respect of a category 1 application.

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.

Application of section 100

(3) Section 100 applies in respect of a category 1 application only if a notice of allowance is sent on or after the coming-into-force date.

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.

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 the coming-into-force date, 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.

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.

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”.

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”.

Final fee

171 With respect to a category 1 application,

• (a) the reference to “the final fee set out in item 13 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 final fee set out in item 13 of Schedule 2”, “the small entity fee set out in that item ” and “the standard fee set out in that item” in subsection 87(1) is to be read as a reference to “the final fee set out in paragraph 6(b) of Schedule II to the former Rules”, “the small entity fee set out in paragraph 6(b) of Schedule II to the former Rules” and “the standard fee set out in paragraph 6(b) of Schedule II to the former Rules”, respectively.

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.

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.

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.

Date

(4) For the purposes of subsections (1) to (3), the date is the later of

• (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.

Notice — application found allowable after amendments

(5) If the applicant of a category 1 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of amendments that have to be made and if a notice of allowance was not sent under that subsection, 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 paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of the notice sent under this subsection.

Non-application of paragraph (3)(b)

(6) Paragraph (3)(b) does not apply in respect of an application for a patent that, before December 29, 2013, was rejected by an examiner under subsection 30(3) of the former Rules unless the rejection has been withdrawn.

Non-application of subsection 3(1)

(7) Subsection 3(1) does not apply in respect of the time referred to in subsection (2) or (5).

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.

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”.

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.

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

Rules in Respect of Category 2 Applications

Non-application of certain provisions of these Rules

177 (1) Sections 17, 18, 47 to 51, 55, 56, 58 to 63, 73 and 74, subsections 81(1) and 84(2), sections 93 to 96, subsections 97(2) and (3), section 98, subsection 103(2) and sections 104 and 132 do not apply in respect of a category 2 application.

Application of section 100

(2) Section 100 applies in respect of a category 2 application only if a notice of allowance is sent on or after the coming-into-force date.

Non-application of subsection 103(1)

(3) Subsection 103(1) does not apply in respect of a category 2 application that has a presentation date before the coming-into-force date.

Application of certain provisions of former Rules

178 (1) Subject to subsection (4), sections 66 and 134, subsections 135(1) and (3) to (5) and sections 138, 139, 141, 145, 146, 159 to 162 and 164 to 166 of the former Rules continue to apply in respect of a category 2 application.

Application of section 26.1 of former Rules

(2) Section 26.1 of the former Rules continues to apply in respect of the time prescribed by section 152 of the former Rules in respect of a category 2 application.

Application of section 32 of former Rules

(3) Section 32 of the former Rules continues to apply in respect of a category 2 application for which a notice of allowance was sent before the coming-into-force date, other than such an application that is deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before the coming-into-force date, and is subsequently reinstated.

Photographs

(4) Paragraphs 141(1)(a), (b), (e) and (h) of the former Rules do not apply in respect of photographs provided in respect of a category 2 application.

Application of section 152 of former Rules

(5) If, under section 78.51 or 78.52 of the Act, section 73 of the Act, as it read immediately before the coming-into-force date, applies in respect of an abandonment of a category 2 application, section 152 of the former Rules continues to apply in respect of that abandonment.

Application of subsections 163(2) and (3) of former Rules

(6) Subsections 163(2) and (3) of the former Rules continue to apply in respect of a category 2 application, except that the reference to subsection (1) in subsection 163(2) is to be read as a reference to subsection 97(1) of these Rules.

Extension of time

179 The Commissioner is authorized to extend, in respect of a category 2 application, the time referred to in the former Rules for payment of the fee referred to in subsection 3(3), (5) or (7) of the former Rules or the time referred to in subsection 184(2) or (5) of these Rules for the payment of the final fee — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) of these Rules are met.

Requirements for request for priority

180 (1) Subject to subsection (4), for the purposes of subsection 28.4(2) of the Act, a request for priority in respect of a category 2 application must be made in the petition of that application, or in a separate document, before the end of a period of six months after the filing date of the application.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the time referred to in subsection (1).

Time to submit information

(3) Subject to subsection (4), the information required under subsection 28.4(2) of the Act in respect of an application for a patent, on the basis of which a request for priority has been made in relation to a category 2 application, must be submitted to the Commissioner within the time referred to in subsection (1).

Exception

(4) In the case of a request for priority made in respect of a category 2 application that is a PCT national phase application, the applicant, instead of complying with the requirements of subsections (1) and (3), may comply with the requirements of Rule 4.10 of the Regulations under the PCT, as they read immediately before July 1, 1998.

Notice requiring application to be made accessible

181 (1) If, for the purpose of examining a pending category 2 application in respect of which a request for priority was made before the coming-into-force date, the examiner takes into account a previously regularly filed application for a patent — other than such an application that was filed in Canada — on which the request for priority is based, the examiner may by notice require the applicant of the pending application to do one of the following, not later than four months after the date of the notice:

• (a) to submit to the Commissioner a copy of that previously regularly filed application, certified by the patent office where it was filed, as well as a certificate from that office indicating the filing date; or
• (b) to make a copy of that 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.

Request for priority considered withdrawn

(2) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than four months after the date of the notice referred to in subsection (1), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless

• (a) 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) 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.

Applicant considered to comply

(3) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a previously regularly filed application for a patent, the applicant is considered to have complied with subsection (1) in respect of that application.

Submission of copy and certificate

(4) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a previously regularly filed application for a patent and if the patent office where that application was filed provides the copy and certificate referred to in paragraph (1)(a), the applicant or the patentee, as applicable, must submit the copy and certificate to the Commissioner not later than three months after the day on which they were provided.

Request for priority considered withdrawn

(5) If the applicant or patentee fails to comply with subsection (4) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in that subsection in respect of that application.

Prescribed time — subsection 35(2) of Act

182 (1) For the purposes of subsection 35(2) of the Act, in respect of a category 2 application that is a divisional application, the prescribed time for making a request for examination and for paying the fee is not later than three months after the presentation date of the divisional application or, if the presentation date precedes the coming-into-force date, not later than six months after the presentation date of the divisional application.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply in respect of the times prescribed by subsection (1).

Exception to subsection 84(1)

183 If a request is made by an applicant under subsection 84(1) in relation to a category 2 application, the Commissioner must not, despite that subsection, advance the examination of that application out of its routine order or, if the examination has been advanced, must return it to its routine order if

• (a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application;
• (b) after April 30, 2011, the Commissioner has, under subsection 26(1) of the former Rules, extended the time fixed for doing anything in respect of the application;
• (c) after April 30, 2011, the application is or was deemed to be abandoned under
  • (i) subsection 73(1) of the Act, or
  • (ii) subsection 73(1) of the Act as it read immediately before the coming-into-force date; or
• (d) on or after the coming-into-force date, the application is or was deemed to be abandoned under subsection 73(2) of the Act.

Rejection for defects

184 (1) If an applicant of a category 2 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.

Notice — application found allowable after final action

(2) If an applicant of a category 2 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 require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice sent under this subsection.

Rejection not withdrawn after final action

(3) If an applicant of a category 2 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, 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 to that application 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.

Date

(4) For the purposes of subsections (1) to (3), the date is the later of

• (a) the earlier of
  • (i) 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
  • (ii) the last day of the period determined by the Commissioner, if any, under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, and
• (b) if the category 2 application is deemed to be abandoned under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, for failure to reply in good faith to 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 73(3) of the Act, as it read immediately before the coming-into-force date, are met in respect of that abandonment.

Notice — application found allowable after amendments

(5) If the applicant of a category 2 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of amendments that have to be made and if a notice of allowance was not sent under that subsection, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice sent under this subsection.

Non-application of paragraph (3)(b)

(6) Paragraph (3)(b) does not apply in respect of an application for a patent that, before December 29, 2013, was rejected by an examiner under subsection 30(3) of the former Rules unless the rejection has been withdrawn.

Non-application of subsection 3(1)

(7) Subsection 3(1) does not apply in respect of the time referred to in subsection (2) or (5).

No amendment after rejection

185 If a category 2 application is rejected by an examiner under subsection 184(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 184(4) of these Rules, unless

• (a) a notice is sent to the applicant informing them that the rejection is withdrawn;
• (b) the amendments are those that are specified 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.

Documents and information — divisional application

186 (1) For the purpose of paragraph 38.2(3.1)(b) of the Act, the prescribed documents and information in respect of a category 2 application that has a presentation date before the coming-into-force date are

• (a) in the case of such an application that has a presentation date before October 1, 1996, the documents and information referred to in clauses 78.2(a)(ii)(A) to (D) of the Act;
• (b) in the case of such an application that has a presentation date on or after October 1, 1996 but before June 2, 2007, the documents and information referred to in clauses 78.2(a)(iii)(A) to (D) of the Act; and
• (c) in the case of such an application that has a presentation date on or after June 2, 2007 but before the coming-into-force date, the documents and information referred to in clauses 78.2(a)(iv)(A) to (D) of the Act.

Presentation date

(2) The presentation date of a category 2 application is

• (a) if all of the elements referred to in clauses 78.2(a)(ii)(A) to (E) of the Act were received by the Commissioner before October 1, 1996, the day on which they were received or, if they were received on different days, the latest of those days;
• (b) if paragraph (a) does not apply and if at least one of the elements referred to in clauses 78.2(a)(iii)(A) to (E) of the Act was received by the Commissioner on or after October 1, 1996, and all of those elements were received by the Commissioner before June 2, 2007, the day on which they were received or, if they were received on different days, the latest of those days;
• (c) if paragraphs (a) and (b) do not apply and if least one of the elements referred to in clauses 78.2(a)(iv)(A) to (E) of the Act was received by the Commissioner on or after June 2, 2007 and all of those elements were received by the Commissioner before the coming-into-force date, the day on which they were received or, if they were received on different days, the latest of those days; and
• (d) if paragraphs (a), (b) and (c) do not apply and if all of the documents and information referred to in subsection 103(1) of these Rules were received by the Commissioner and least one of those elements was received by the Commissioner on or after the coming-into-force date, the day on which they were received or, if they were received on different days, the latest of those days.

Application deemed abandoned

187 For the purposes of subsection 73(2) of the Act, a category 2 application is deemed to be abandoned if

• (a) a notice is sent under section 31 and the requirements are not complied with within the applicable time referred to in that section;
• (b) the applicant fails to 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;
• (c) 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; or
• (d) the applicant does not pay the final fee set out in item 13 of Schedule 2 within the applicable time referred to in subsection 86(1), (6), (10) or (12) or 184(2) or (5).

DIVISION 4

Rules in Respect of Category 3 Applications

Non-application of certain provisions of these Rules

188 (1) Subsections 73(1) and (4), 81(1), 84(2) and 103(2) and section 132 do not apply in respect of a category 3 application.

Non-application of section 74

(2) Section 74 does not apply in respect of a request for priority made in relation to a category 3 application before the coming-into-force date.

Application of section 100

(3) Section 100 applies in respect of a category 3 application only if a notice of allowance is sent on or after the coming-into-force date.

Non-application of subsection 103(1)

(4) Subsection 103(1) does not apply in respect of a category 3 application that has a presentation date before the coming-into-force date.

Non-application of section 104

(5) Section 104 does not apply in relation to a category 3 application in respect of which an assignment was registered under subsection 49(2) of the Act, as it read immediately before the coming-into-force date.

Application of section 26.1 of former Rules

189 (1) Section 26.1 of the former Rules continues to apply in respect of the time prescribed by section 98 of the former Rules in respect of a category 3 application.

Application of section 32 of former Rules

(2) Section 32 of the former Rules continues to apply in respect of a category 3 application for which a notice of allowance was sent before the coming-into-force date other than such an application that is deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before the coming-into-force date, and is subsequently reinstated.

Application of section 66 of the former Rules

(3) Section 66 of the former Rules continues to apply in relation to a category 3 application in respect of which the applicant, before the coming-into-force date, complied with the requirements of subsection 58(1) of the former Rules and, if applicable, with the requirements of subsection 58(2) of those Rules.

Application of section 98 of former Rules

(4) If, under section 78.51 or 78.52 of the Act, section 73 of the Act, as it read immediately before the coming-into-force date, applies in respect of the abandonment of a category 3 application, section 98 of the former Rules continues to apply in respect of that abandonment.

Extension of time

190 The Commissioner is authorized to extend, in respect of a category 3 application, the time referred to in the former Rules for payment of the fee referred to in subsection 3(3), (5) or (7) of the former Rules or the time referred to in subsection 199(2) or (5) of these Rules for the payment of the final fee — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) of these Rules are met.

Prescribed date — withdrawal of request for priority

191 For the purposes of subsection 10(4) of the Act, if a request for priority that was made in respect of a category 3 application has been withdrawn with respect to a previously regularly filed application for a patent before the coming-into-force date, the prescribed date is, despite section 17, the later of

• (a) the earlier of
  • (i) the day on which a period of 16 months after the filing date of the previously regularly filed application expires, and
  • (ii) 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, and
• (b) if the Commissioner is able to stop the technical preparations to open the category 3 application to public inspection before the expiry of the confidentiality period referred to in subsection 10(2) of the Act, the day on which the Commissioner stops those preparations.

Prescribed date — withdrawn application

192 If a category 3 application is withdrawn before the coming-into-force date, for the purposes of subsection 10(5) of the Act, the prescribed date is, despite section 18 of these Rules, the day that is two months before the expiry date of the confidentiality period referred to in subsection 10(2) of the Act or, if the Commissioner is able to stop the technical preparations to open the application to public inspection at a subsequent date preceding the expiry of that period, that subsequent date.

Exception to subsection 50(1)

193 In respect of a category 3 application, the applicant may comply with the requirements of subsection 73(1) of the former Rules instead of the requirements of subsection 50(1) of these Rules.

Exception to section 58

194 In respect of a category 3 application for which the filing date was before June 2, 2007, the applicant may comply with the requirements of sections 111 to 131 of the Patent Rules, as they read immediately before June 2, 2007, instead of the requirements of section 58 of these Rules.

Requirements for request for priority

195 (1) For the purposes of subsection 28.4(2) of the Act, a request for priority in respect of a category 3 application must be made in the petition of that application or in a separate document, before the later of the end of

• (a) a period 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
• (b) a period four months after the filing date of the category 3 application.

Time prescribed by subsection 73(1)

(2) With respect to a request for priority made in relation to a category 3 application, the reference to “the time prescribed by subsection (1)” in subsections 73(2) and (6) is to be read as a reference to “the time prescribed by subsection 195(1)”.

Correction — error in filing date

(3) An error in a filing date submitted under subsection 28.4(2) of the Act in relation to a request for priority in respect of a category 3 application may be corrected on request submitted before the earliest of

• (a) the end of the period referred to in subsection (1), as determined using the corrected filing date,
• (b) the end of the period referred to in subsection (1), as determined using the uncorrected filing date, and
• (c) if applicable, the day on which the applicant submits their approval, under subsection 10(2) of the Act, for the category 3 application to be open to public inspection before the expiry of the confidentiality period, unless that approval is withdrawn in time to permit the Commissioner to stop the technical preparations to open the application to public inspection.

Non-application of subsection 3(1)

(4) Subsection 3(1) does not apply to the time referred to in subsection (1).

Notice requiring application to be made accessible

196 (1) If, for the purpose of examining a pending category 3 application in respect of which a request for priority was made before the coming-into-force date, the examiner takes into account a previously regularly filed application for a patent — other than such an application that was filed in Canada — on which the request for priority is based, the examiner may by notice require the applicant of the pending application to do one of the following not later than four months after the date of the notice:

• (a) to submit to the Commissioner a copy of that previously regularly filed application, certified by the patent office where it was filed, as well as a certificate from that office indicating the filing date; or
• (b) to make a copy of that 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.

Request for priority considered withdrawn

(2) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than four months after the date of the notice referred to in subsection (1), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless, before the end of that time,

• (a) 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) 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.

Applicant considered to comply

(3) If the conditions set out in paragraphs (2)(a) and (b) are met by the applicant in respect of a previously regularly filed application for a patent, the applicant is considered to have complied with subsection (1) in respect of that application.

Submission of copy and certificate

(4) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a previously regularly filed application for a patent and if the patent office where that application was filed provides the copy and certificate referred to in paragraph (1)(a), the applicant or the patentee, as applicable, must submit the copy and certificate to the Commissioner not later than three months after the day on which they were provided.

Request for priority considered withdrawn

(5) If the applicant or patentee fails to comply with subsection (4) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in that subsection in respect of that application.

Exception

(6) Subsections (1) to (5) do not apply in respect of a previously regularly filed application on the basis of which an applicant requests priority if the pending category 3 application is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application and if the requirements of Rule 17.1(a), (b) or (b-bis) of the Regulations under the PCT are complied with in respect of that previously regularly filed application.

Prescribed time — subsection 35(2) of Act

197 (1) For the purposes of subsection 35(2) of the Act, in respect of a category 3 application, the prescribed time for making a request for examination and for paying the fee is any time before

• (a) in the case of such an application that is not a divisional application, the end of a period of five years after the filing date of the application; and
• (b) in the case of such an application that is 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 or, if the presentation date precedes the coming-into-force date, the end of a period of six months after the presentation date of the divisional application.

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply to the times prescribed by subsection (1).

Exception to subsection 84(1)

198 If a request is made by an applicant under subsection 84(1) in relation to a category 3 application, the Commissioner must not, despite that subsection, advance the examination of that application out of its routine order or, if the examination has been advanced, must return it to its routine order if

• (a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application;
• (b) after April 30, 2011, the Commissioner has, under subsection 26(1) of the former Rules, extended the time fixed for doing anything in respect of the application;
• (c) after April 30, 2011, the application is or was deemed to be abandoned under
  • (i) subsection 73(1) of the Act, or
  • (ii) subsection 73(1) of the Act, as it read immediately before the coming-into-force date; or
• (d) on or after the coming-into-force date, the application is or was deemed to be abandoned under subsection 73(2) of the Act.

Rejection for defects

199 (1) If an applicant of a category 3 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.

Notice — application found allowable after final action

(2) If an applicant of a category 3 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, and 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 require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of notice sent under this subsection.

Rejection not withdrawn after final action

(3) If an applicant of a category 3 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 to that application 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.

Date

(4) For the purposes of subsections (1) to (3), the date is the later of

• (a) the earlier of
  • (i) 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
  • (ii) the last day of the period determined by the Commissioner, if any, under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, and
• (b) if the category 3 application is deemed to be abandoned under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, for failure to reply in good faith to a 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 73(3) of the Act, as it read immediately before the coming-into-force date, are met in respect of that abandonment.

Notice — application found allowable after amendments

(5) If the applicant of a category 3 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of specific amendments that have to be made and if a notice of allowance was not sent under that subsection, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of notice sent under this subsection.

Non-application of paragraph (3)(b)

(6) Paragraph (3)(b) does not apply in respect of an application for a patent that, before December 29, 2013, was rejected by an examiner under subsection 30(3) of the former Rules unless the rejection has been withdrawn.

Non-application of subsection 3(1)

(7) Subsection 3(1) does not apply in respect of the time referred to in subsection (2) or (5).

No amendment after rejection

200 If a category 3 application is rejected by an examiner under subsection 199(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 199(4) of these Rules, 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) 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.

Request to furnish sample to independent expert

201 (1) A notice referred to in subsection 104(4) of the former Rules that was filed in respect of a category 3 application is considered to be a request referred to in section 95 of these Rules.

Independent expert considered to be nominated

(2) An independent expert who was nominated under subsection 109(1) of the former Rules is considered to be nominated under section 96 of these Rules.

Documents and information — divisional application

202 (1) For the purposes of paragraph 38.2(3.1)(b) of the Act, the prescribed documents and information in respect of a category 3 application that has a presentation date before the coming-into-force date are

• (a) in the case of such an application that has a presentation date before June 2, 2007, the documents and information referred to in clauses 78.2(a)(iii)(A) to (D) of the Act; and
• (b) in the case of such an application that has a presentation date on or after June 2, 2007 but before the coming-into-force date, the documents and information referred to in clauses 78.2(a)(iv)(A) to (D) of the Act.

Presentation date

(2) The presentation date of a category 3 application is

• (a) if all of the elements referred to in clauses 78.2(a)(iii)(A) to (E) of the Act were received by the Commissioner before June 2, 2007, the day on which they were received or, if they were received on different days, the latest of those days;
• (b) if paragraph (a) does not apply and if at least one of the elements referred to in clauses 78.2(a)(iv)(A) to (E) of the Act was received by the Commissioner on or after June 2, 2007 and all of those elements were received by the Commissioner before the coming-into-force date, the day on which they were received, or if they were received on different days, the latest of those days; and
• (c) if paragraphs (a) and (b) do not apply and if all of the documents and information referred to in subsection 103(1) of these Rules were received by the Commissioner and at least one of those elements was received by the Commissioner on or after the coming-into-force date, the day on which they were received or, if they were received on different days, the latest of those days.

Application deemed abandoned

203 For the purposes of subsection 73(2) of the Act, a category 3 application is deemed to be abandoned if

• (a) a notice is sent under section 31 and the requirements are not complied with within the applicable time referred to in that section;
• (b) 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;
• (c) 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; or
• (d) the applicant does not pay the final fee set out in item 13 of Schedule 2 within the applicable time referred to in subsection 86(1), (6), (10) or (12) or 199(2) or (5).

Refund of final fee

204 If a category 3 application is deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before the coming-into-force date, and is subsequently reinstated,

• (a) the Commissioner must refund the final fee paid in respect of that application if a request for a refund of the fee is received not later than one month after the date of the reinstatement of the application; and
• (b) if the final fee paid in respect of that application has not been refunded, despite subsections 86(1), (6), (10) and (12), the Commissioner must not require payment of that fee in any notice of allowance sent after the reinstatement of the application.

DIVISION 5

Rules Applicable to Certain Patents

Non-application of subsections 97(2) and (3)

205 (1) Subsections 97(2) and (3) do not apply in respect of a patent granted on the basis of a category 1 or category 2 application.

Application of subsections 187(2) and (3) of former Rules

(2) Subsections 187(2) and (3) of the former Rules continue to apply in respect of a patent issued on the basis of a category 1 application, except that the reference to subsection (1) in subsection 187(2) is to be read as a reference to subsection 97(1) of these Rules.

Application of subsections 163(2) and (3) of former Rules

(3) Subsections 163(2) and (3) of the former Rules continue to apply in respect of a patent issued on the basis of a category 2 application, except that the reference to subsection (1) in subsection 163(2) shall be read as a reference to subsection 97(1) of these Rules.

Application of certain provisions of former Rules to patents granted on basis of category 1 application

206 Subsections 3(9) and 182(1) to (3) of the former Rules and item 32 of Schedule II to those Rules continue to apply in respect of the applicable fee payable to maintain the rights accorded by a patent granted on the basis of a category 1 application, if the time — not including the period of grace — referred to in that item for the payment of that fee ends before the coming-into-force date.

Application of certain provisions of former Rules to patents granted on basis of category 3 application

207 (1) Subsection 3(8) and sections 100 and 101 of the former Rules and item 31 of Schedule II to those Rules continue to apply in respect of the applicable fee payable to maintain the rights accorded by a patent granted on the basis of a category 3 application, if the time — not including the period of grace — referred to in that item for the payment of that fee ends before the coming-into-force date.

Extension of time

(2) The Commissioner is authorized to extend the time for payment of the fee referred to in subsection 3(8) of the former Rules in respect of a patent issued on the basis of a category 3 application — whether the time, including a period of grace, has expired or not — the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) of these Rules are met.

Maintenance fee — patent

208 In respect of a patent granted on the basis of a category 1 application, the reference to “set out in item 25 of Schedule 2” in subsection 112(1) is to be read as a reference to “set out in item 1 of Schedule 3”.

Patent not invalid

209 (1) 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 58 of the former Rules was not paid.

Exception

(2) Subsection (1) does not apply in respect of a patent that was granted before the coming-into-force date or a reissued patent if the original patent was granted before that date.

DIVISION 6

Other Rules

Exception — national phase entry date

210 (1) For the purposes of these Rules, if the applicant of an international application for which the international filing date, as defined in section 141, precedes the coming-into-force date has, before the coming-into-force date, complied with the requirements of subsection 58(1) and, if applicable, subsection 58(2) of the former Rules, the national phase entry date in respect of that application is the date on which the applicant complied with those requirements, or, if the applicant complied with those requirements on different dates, the latest of those dates.

Fee considered paid

(2) If the Commissioner has, under section 179 or 190 of these Rules or subsection 26(3) of the former Rules, extended the time for the payment of a fee referred to in subsection 3(5) or (7) of the former Rules, and the fee is paid before the end of the extended period, for the purposes of subsection (1), that fee is considered to have been paid on the day on which the amount of the small entity fee was paid.

Exception — national phase entry date

(3) In these Rules, if the applicant of an international application for which the international filing date, as defined in section 141, precedes the coming-into-force date has, on or after the coming-into-force date, complied with the requirements of subparagraphs 154(3)(a)(ii) to (iv) and paragraph 154(3)(b), the national phase entry date in respect of that application is the date on which the applicant complied with those requirements, or, if the applicant complied with those requirements on different dates, the latest of those dates.

Small entity declaration

(4) For the purpose of subsection (3), an applicant is not considered to have paid the fee referred to in clause 154(3)(a)(iii)(A) or 154(3)(b)(i)(A) or (ii)(A) until the small entity declaration has been filed.

Extension of period — section 208

211 The Commissioner is authorized to extend the time for the payment of a fee referred to in subsection 112(1), as modified by section 208 — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) are met.

Extension of period established by Commissioner

212 If, under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, the Commissioner established a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is authorized to extend that period for up to six months after the requisition was made — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee set out in item 1 of Schedule 2 is paid.

Extension of time fixed by former Rules

213 If, before the coming-into-force date, a requisition referred to in section 23, 25, 37 or 94 of the former Rules was sent by notice by the Commissioner, the Commissioner is authorized to extend the time period to reply in good faith under that section to the requisition — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee referred to in item 1 of Schedule 2 to these Rules is paid.

Communication sent before refusal

214 (1) In respect of a communication in relation to an application preceding the coming-into-force date, or in relation to a patent granted on the basis of such an application, the reference to “four months” in subsections 11(1) and (2) is to be read as a reference to “six months” if the refusal to recognize the person to whom that communication is sent as a patent agent or an attorney occurred on the coming-into-force date or within six months following that date.

Communication sent before removal

(2) In respect of a communication in relation to an application preceding the coming-into-force date, or in relation to a patent granted on the basis of such an application, the reference to “four months” in subsection 11(3) is to be read as a reference to “six months” if the name of the person to whom that communication is sent is removed from the register of patent agents on the coming-into-force date or within “six months” following that date.

Documents not in English or French

215 Despite section 15, the Commissioner must have regard to any document or part of a document that is submitted or made available in a language other than English or French under subsection 181(1) or 196(1) of these Rules, or provided under subsection 29(1) or paragraph 58(1)(a) of the former Rules or filed under section 89, 143 or 180 of the former Rules, in a language other than English or French.

Patent agent deemed to be appointed

216 If, before the coming-into-force date, a patent agent was appointed in the petition or in a notice to that effect signed by the applicant and submitted to the Commissioner, the appointment of the patent agent is deemed to have been made in accordance with section 27.

Associate patent agent deemed to be appointed

217 If, before the coming-into-force date, an associate patent agent was appointed in the petition or in a notice that was signed by the patent agent who appointed the associate patent agent and submitted to the Commissioner, the appointment of the associate patent agent is deemed to have been made in accordance with section 28.

Representation — application preceding coming-into-force date

218 In respect of an application preceding the coming-into-force date — other than a divisional application that has a presentation date on or after the coming-into-force date — for which there are joint applicants and in respect of which no common representative is appointed under paragraph 26(3)(a) or (c), in respect of which no correction or decision referred to in subsection 26(6) was made — other than a decision made before the coming-into-force date — and in respect of which subsection 26(9) does not apply,

• (a) if, immediately before these Rules come into force, no patent agent residing in Canada is appointed
  • (i) subsections  26(4) to (6) do not apply, and
  • (ii) subject to subsection 26(11), the joint applicant who, immediately before these Rules come into force was the authorized correspondent under the former Rules, is deemed to be appointed as the common representative; and
• (b) if, immediately before these Rules come into force, a patent agent residing in Canada is appointed,
  • (i) if the appointment of that patent agent has been revoked, the joint applicant whose name appears first when listed in alphabetical order at the time of the revocation is, subject to subsection 26(11), deemed to be appointed as the common representative, and
  • (ii) in any other case,
    • (A) subsections 26(4) to (6) and paragraph 27(7)(a) do not apply,
    • (B) any appointment of a patent agent by the applicants on or after the coming-into-force date may, despite subsection 27(3), be made only by a notice to that effect signed by all of the applicants and submitted to the Commissioner, and
    • (C) an appointment of a patent agent may be revoked by submitting to the Commissioner a notice to that effect signed by all of the applicants or by that patent agent.

Representation — patent granted before coming-into-force date

219 In respect of a patent — other than a reissued patent — granted before the coming-into-force date for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

• (a) if, immediately before the patent was granted, no patent agent residing in Canada was appointed in respect of the application on which the patent was based and if the joint applicant who, immediately before the patent was granted, was the authorized correspondent under the former Rules, is a patentee immediately before these Rules come into force,
  • (i) subsection 26(7) does not apply, and
  • (ii) subject to subsection 26(11), that applicant is deemed to be appointed as the common representative; and
• (b) in any other case,
  • (i) subsection 26(7) and paragraph 27(7)(a) do not apply,
  • (ii) any appointment of a patent agent by the patentees on or after the coming-into-force date may, despite subsection 27(3), be made only by a notice to that effect signed by all of the patentees and submitted to the Commissioner, and
  • (iii) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Representation — patent reissued before coming-into-force date

220 In respect of a patent that is reissued before the coming-into-force date for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

• (a) if, immediately before the original patent was granted, no patent agent residing in Canada was appointed in respect of the application on which the original patent was based and if the joint applicant who, immediately before the original patent was granted, was the authorized correspondent under the former Rules, is a patentee of the reissued patent immediately before these Rules come into force,
  • (i) subsection 26(8) does not apply, and
  • (ii) subject to subsection 26(11), that applicant is deemed to be appointed as the common representative; and
• (b) in any other case,
  • (i) subsection 26(8) and paragraph 27(7)(a) do not apply,
  • (ii) any appointment of a patent agent by the patentees on or after the coming-into-force date may, despite subsection 27(3), be made only by a notice to that effect signed by all of the patentees and submitted to the Commissioner, and
  • (iii) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Representation — patent granted on or after coming-into-force date

221 In respect of a patent — other than a reissued patent — granted on or after the coming-into-force date, on the basis of an application preceding the coming-into-force date, for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was granted, no common representative was appointed in respect of that application,

• (a) subsection 26(7) and paragraph 27(7)(a) do not apply;
• (b) any appointment of a patent agent on or after the coming-into-force date may, despite subsection 27(3), be made by the patentees only by a notice to that effect signed by all of the patentees and submitted to the Commissioner; and
• (c) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Representation — patent reissued on or after coming-into-force date

222 In respect of a patent that is reissued — on the basis of an application preceding the coming-into-force date — on or after the coming-into-force date, for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was reissued, no common representative was appointed in respect of the original patent,

• (a) subsection 26(8) and paragraph 27(7)(a) do not apply;
• (b) any appointment of a patent agent on or after the coming-into-force date may, despite subsection 27(3), be made by the patentees only by a notice to that effect signed by all of the patentees and submitted to the Commissioner; and
• (c) an appointment of a patent agent may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Non-application of section 37

223 Section 37 does not apply in respect of business before the Patent Office for the purpose of a procedure commenced before the coming-into-force date.

Small entity declaration for patent or application

224 (1) A small entity declaration filed before the coming-into-force date in respect of a patent or an application for a patent in accordance with section 3.01 of the former Rules is considered to be filed in accordance with subsection 44(3) or 112(3) of these Rules, as applicable.

Small entity declaration — patent

(2) A small entity declaration filed in respect of a patent in accordance with section 3.02 of the former Rules before the coming-into-force date is considered to be filed in accordance with subsection 122(4) of these Rules.

Exception to section 54 — filing date before June 2, 2007

225 (1) In respect of an application for a patent, other than a PCT national phase application, that has a filing date before June 2, 2007, the applicant, instead of complying with the requirements of section 54, may comply with

• (a) the requirements of section 37 of the former Rules;
• (b) the requirements of section 77 of the Patent Rules, as they read immediately before October 1, 2010; or
• (c) the requirements of sections 37 and 77 of the Patent Rules, as they read immediately before June 2, 2007.

Exception — compliance with other requirements

(2) In respect of a PCT national phase application for which the filing date is before June 2, 2007, the applicant may, instead of complying with the requirements of section 54, comply with the requirements of paragraph (1)(a), (b) or (c) or file a declaration as to the applicant’s entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17 of the Regulations under the PCT.

Exception to section 54 — filing date before October 1, 2010

226 (1) In respect of an application for a patent, other than a PCT national phase application, for which the filing date is June 2, 2007 or later but before October 1, 2010, the applicant, instead of complying with the requirements of section 54, may comply with

• (a) the requirements of section 37 of the former Rules; or
• (b) the requirements of section 77 of the Patent Rules, as they read immediately before October 1, 2010.

Exception — compliance wth other requirements

(2) In respect of a PCT national phase application for which the filing date is June 2, 2007 or later but before October 1, 2010, the applicant may, instead of complying with the requirements of section 54, comply with the requirements of paragraph (1)(a) or (b) or file a declaration as to the applicant’s entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17 of the Regulations under the PCT.

Exception to section 54 — filing date before coming-into-force date

227 In respect of an application for a patent for which the filing date is October 1, 2010 or later but before the coming-into-force date, the applicant, instead of complying with the requirements of section 54, may comply with the requirements of section 37 of the former Rules.

Clarification

228 For greater certainty, the dates prescribed by sections 69 and 113 do not include any dates that precede the coming-into-force date.

Final fee paid before coming-into-force date

229 If, before the coming-into-force date, the applicant of an application preceding the coming-into-force date paid, in respect of that application, the applicable final fee set out in item 6 of Schedule II to the former Rules and that fee was not refunded before that date,

• (a) the reference to “on or before the day on which the final fee set out in item 13 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” in subsections 73(5) and 100(2) and section 106 is to be read, in respect of that application, as a reference to “on or before the day on which the applicable final fee set out in item 6 of Schedule II to the former Rules is paid or, if the final fee is refunded, on or before the day on which the final fee set out in item 13 of Schedule 2 is paid”; and
• (b) the reference to “after the day on which the final fee set out in item 13 of Schedule 2 is paid or, if the final fee is refunded, after the day on which the final fee is paid again” in section 127 is to be read as “after the day on which the applicable final fee set out in item 6 of Schedule II to the former Rules is paid or, if the final fee is refunded, after the day on which the final fee set out in item 13 of Schedule 2 is paid”.

Notice of allowance considered not sent

230 For greater certainty, a notice of allowance is considered not to have been sent if it was deemed not to have been sent before the coming-into-force date.

Non-application of section 89

231 Section 89 does not apply in respect of an application for a patent for which the presentation date preceded the coming-into-force date.

Periods referred to in section 128

232 For greater certainty, the periods prescribed by paragraph 128(a), (b) or (d) do not include any period that begins less than six months after the coming-into-force date.

Publication in Canadian Patent Office Record

233 For the purposes of paragraph 130(1)(c), an application that was advertised in the Canadian Patent Office Record before the coming-into-force date is considered to have been advertised on the website of the Canadian Intellectual Property Office on the day on which it was advertised in the Canadian Patent Office Record.

Non-application of subparagraph 154(3)(a)(i)

234 Subparagraph 154(3)(a)(i) does not apply in respect of an international application for which the international filing date, as defined in section 141, precedes the coming-into-force date.

Exception to section 162

235 If the right of priority in respect of a previously regularly filed application, on which the request for priority in relation to a pending application is based, was restored under Rule 26bis.3 of the Regulations under the PCT before the coming-into-force date, section 162 does not apply in respect of that previously regularly filed application.

PART 4

Repeal and Coming into Force

Repeal

236 The Patent Rules ^{footnote 1} are repealed.

Coming into Force

S.C. 2015, c. 36

237 These Rules come into force on the day on which section 53 of the Economic Action Plan 2015 Act, No. 1 comes into force.

SCHEDULE 1

(Sections 1, 118 and 120)

Prescribed Forms

FORM 1

(Section 47 of the Patent Act)

Application for Reissue

1 The patentee of Patent No. , granted on  for an invention entitled , requests that a new patent be issued, in accordance with the accompanying amended description and specification, and agrees to surrender the original patent effective on the issue of a new patent.

2 The name and postal address of the patentee is .

3 The reasons why the patent is deemed defective or inoperative are as follows: .

4 The error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, in the following manner: .

5 The knowledge of the new facts giving rise to the application were obtained by the patentee on or about in the following manner: .

FORM 2

(Section 48 of the Patent Act)

Disclaimer

1 The patentee of Patent No., granted on for an invention entitled , , has, by mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public,

• (a) made the specification too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor; or
• (b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor and to which the patentee had no lawful right.

2 The name and postal address of the patentee is .

3 (1) The patentee disclaims the entirety of claim .

(2) The patentee disclaims the entirety of claim with the exception of the subject-matter of the invention defined by the following claim: .

SCHEDULE 2

(Sections 3, 4, 19, 22 to 24, 44, 45, 68, 70, 73, 80, 82, 84, 86, 87, 100, 106, 109, 112, 115, 117, 119, 121, 122, 124 to 127, 129, 132, 134, 136 to 140, 147 to 151, 154, 171, 184, 187, 199, 203, 208, 212, 213 and 229)

Tariff of Fees

PART 1

Fee in Respect of Extension of Time

Item	Column 1 Description	Column 2 Amount ($)
1	Fee for applying for an extension of time, in respect of each period of time referred to in the application for an extension	200.00

PART 2

Fees in Respect of Patent Agents

Item	Column 1 Description	Column 2 Amount ($)
2	Fee for notifying the Commissioner of the intention to sit for one or more papers of the qualifying examination, per paper	200.00
3	Fee for applying for entry on the register of patent agents	350.00
4	Fee for maintaining the name of a patent agent on the register of patent agents	350.00
5	Fee for applying for reinstatement on the register of patent agents	200.00

PART 3

Fees in Respect of Applications for a Patent

Item	Column 1 Description	Column 2 Amount ($)
6	Application fee
	(a) small entity fee	200.00
	(b) standard fee	400.00
7	Late fee under subsection 27(7) of the Act	150.00
8	Fee for maintaining an application for a patent in effect
	(a) for the dates of each of the second, third and fourth anniversaries of the filing date of the application,
	(i) small entity fee	50.00
	(ii) standard fee	100.00
	(b) for the dates of each of the fifth, sixth, seventh, eighth and ninth anniversaries of the filing date of the application,
	(i) small entity fee	100.00
	(ii) standard fee	200.00
	(c) for the dates of each of the 10th, 11th, 12th, 13th and 14th anniversaries of the filing date of the application,
	(i) small entity fee	125.00
	(ii) standard fee	250.00
	(d) for the dates of each of the 15th, 16th, 17th, 18th and 19th anniversaries of the filing date of the application,
	(i) small entity fee	225.00
	(ii) standard fee	450.00
9	Late fee under subsection 27.1(2) of the Act	150.00
10	Fee for examination of an application for a patent
	(a) if the application for a patent has been the subject of an international search by the Commissioner in the Commissioner’s capacity as an International Search Authority,
	(i) small entity fee	100.00
	(ii) standard fee	200.00
	(b) in any other case,
	(i) small entity fee	400.00
	(ii) standard fee	800.00
11	Late fee under subsection 35(3) of the Act	150.00
12	Fee to advance an application for a patent out of its routine order	500.00
13	Final fee
	(a) the basic fee
	(i) small entity fee	150.00
	(ii) standard fee	300.00
	(b) for each page of specification and drawings, other than pages of a sequence listing submitted in electronic form, in excess of 100 pages	6.00
14	Fee for a notice of allowance to be withdrawn and for an application for a patent to be subject to further examination	400.00
15	Fee for reinstatement of an application demed to be abandoned, in respect of each failure to take an action referred to in the request for reinstatement	200.00

PART 4

Fees in Respect of International Applications

Item	Column 1 Description	Column 2 Amount ($)
16	Transmittal fee for the performance of the tasks referred to in Rule 14 of the Regulations under the PCT	300.00
17	Search fee for the performance of the tasks referred to in Rule 16 of the Regulations under the PCT	1,600.00
18	Additional fee for conducting a search under Article 17(3)(a) of the Patent Cooperation Treaty, in respect of each invention other than the main invention	1,600.00
19	Preliminary examination fee for the performance of the tasks referred to in Rule 58 of the Regulations under the PCT	800.00
20	Additional fee for an international preliminary examination under Article 34(3)(a) of the Patent Cooperation Treaty, in respect of each invention other than the main invention	800.00
21	Basic national fee
	(a) small entity fee	200.00
	(b) standard fee	400.00
22	Fee for reinstatement of rights	200.00
23	Additional fee for late payment under subsection 154(4) of these Rules	150.00

PART 5

Fees in Respect of Patents

Item	Column 1 Description	Column 2 Amount ($)
24	Fee for requesting the correction of an error under subsection 109(1) of these Rules, for each patent referred to in the request for correction	200.00
25	Fee for maintaining the rights accorded by a patent in effect
	(a) for the dates of each of the second, third and fourth anniversaries of the filing date of the application on the basis of which the patent was granted,
	(i) small entity fee	50.00
	(ii) standard fee	100.00
	(b) for the dates of each of the fifth, sixth, seventh, eighth and ninth anniversaries of the filing date of that application,
	(i) small entity fee	100.00
	(ii) standard fee	200.00
	(c) for the dates of each of the 10th, 11th, 12th, 13th and 14th anniversaries of the filing date of that application,
	(i) small entity fee	125.00
	(ii) standard fee	250.00
	(d) for the dates of each of the 15th, 16th, 17th, 18th and 19th anniversaries of the filing date of that application,
	(i) small entity fee	225.00
	(ii) standard fee	450.00
26	Late fee under subsection 46(2) of the Act	150.00
27	Additional fee under subparagraph 46(5)(a)(iii) of the Act	200.00
28	Fee for filing an application to reissue a patent	1,600.00
29	Fee for a disclaimer	100.00
30	Fee for re-examination of one or more claims of a patent
	(a) small entity fee	1,000.00
	(b) standard fee	2,000.00
31	Fee for presenting an application under section 65 or 127 of the Act
	(a) for the first patent or certificate of supplementary protection to which the application relates	2,500.00
	(b) for each additional patent or certificate to which the application relates	250.00
32	Fee to advertise an application under section 65 or 127 of the Act on the website of the Canadian Intellectual Property Office	200.00

PART 6

Fees in Respect of Registration of Documents or Recording of Transfers

Item	Column 1 Description	Column 2 Amount ($)
33	Fee for requesting the registration of a document relating to a patent or an application for a patent, for each patent or application for a patent to which the document relates.	100.00
34	Fee for requesting the recording of a change of name, for each patent or application for a patent to which the change of name relates	100.00
35	Fee for requesting that a transfer be recorded under section 49 of the Act, for each patent or application for a patent to which the transfer relates	100.00

PART 7

Fees in Respect of Information or Copies

Item	Column 1 Description	Column 2 Amount ($)
36	Fee for requesting a certified copy in paper form
	(a) for each certification	35.00
	(b) for each page	1.00
37	Fee for requesting a certified copy in electronic form
	(a) for each certification	35.00
	(b) for each patent or application for a patent to which the request relates	10.00
38	Fee for requesting a non-certified copy in paper form, for each page
	(a) if the person requesting makes the copy using Patent Office equipment	0.50
	(b) if the Patent Office makes the copy	1.00
39	Fee for requesting a non-certified copy in electronic form
	(a) for each request	10.00
	(b) for each patent or application for a patent to which the request relates	10.00
	(c) if the copy is requested on more than one physical medium, for each additional physical medium requested	10.00
40	Fee for requesting that the Patent Office provide information concerning the status of a patent or an application for a patent, for each patent or application for a patent	15.00

SCHEDULE 3

(Section 208)

Transitional Provisions

Item	Column 1 Description	Column 2 Amount ($)
1	Fee for maintaining in effect the rights accorded by a patent granted on the basis of a category 1 application
	(a) for the dates of each of the second, third and fourth anniversaries of the day on which the patent was issued,
	(i) small entity fee	50.00
	(ii) standard fee	100.00
	(b) for the dates of each of the fifth, sixth, seventh, eighth and ninth anniversaries of the day on which the patent was issued,
	(i) small entity fee	100.00
	(ii) standard fee	200.00
	(c) for the dates of each of the 10th, 11th, 12th, 13th and 14th anniversaries of the day on which the patent was issued,
	(i) small entity fee	125.00
	(ii) standard fee	250.00
	(d) for the dates of each of the 15th and 16th anniversaries of the day on which the patent was issued,
	(i) small entity fee	225.00
	(ii) standard fee	450.00

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Rules.)

Issues

The Government of Canada is moving to modernize Canada’s intellectual property (IP) regime and join several international IP treaties, including, in regards to patents, the Patent Law Treaty (PLT). Furthermore, Canada’s existing patent regime under the Patent Act (the Act) and the Patent Rules (the Rules) is not aligned with those of its major trading partners that are already members of the PLT, including the United States, Australia, France and the United Kingdom.

In addition, aspects of the Rules need to be updated, clarified and codified in order to modernize Canada’s patent regime. In particular, changes are required to codify procedures that are currently contained in practice notices, better align certain rules with comparable provisions in the Trademarks Regulations and the Industrial Design Regulations and streamline aspects of the patent application prosecution process (i.e. the steps and interactions between the Canadian Intellectual Property Office [CIPO or the Office] and the applicant in respect of the application between the filing date and the grant or refusal of the patent that is the subject of the application).

If Canada does not make the regulatory changes, it would not be able to join the PLT and Canadians would forego the benefits of a modernized, internationally aligned patent regime.

Background

The PLT is an agreement administered by the World Intellectual Property Organization (WIPO) that aims to simplify administrative practices of national IP offices and harmonize them with respect to the patent application process. It sets standards and rules regarding what national patent offices may or may not require from applicants and requires that certain safeguard mechanisms be put in place to protect applicants. It does not address elements of substantive patent law (for example, what is patentable). There are currently 40 countries that are party to the PLT. Canada signed the PLT in 2001 but has yet to ratify it.

Joining the PLT will complement Canada’s membership in the Patent Cooperation Treaty (PCT), which is a separate international treaty administered by WIPO that governs an international filing system allowing applicants to apply for a patent in as many as 152 member countries through a single application. Canada has been a member of the PCT since 1990. While the PCT system makes it easier and more cost effective to seek patent protection in multiple jurisdictions, implementing the PLT will increase predictability and certainty for applicants and patentees dealing with the Canadian patent system.

Changes to the Patent Act to facilitate Canada’s accession to the PLT received royal assent on December 16, 2014. Additional amendments to the Patent Act, the Trademarks Act and the Industrial Design Act to further modernize the administration of IP rights received royal assent on June 23, 2015, as part of the Economic Action Plan 2015 Act, No. 1. Finally, the Government recently launched a Canadian IP strategy with the goal of ensuring innovators have easier access to an IP regime that can help them grow. A section of this strategy includes updating Canada’s IP legislation to reduce barriers for businesses, clarify acceptable practices and prevent the misuse of IP rights. Making the changes required in order to join the PLT, clarifying and codifying CIPO’s office practices, reducing the administrative and financial burden that patent applicants and rights holders will encounter, and introducing late fees as an incentive to take timely actions are all elements of this regulatory proposal and are consistent with the goals of the IP strategy announced on April 26, 2018.

Amendments to the Act will come into force when the new Rules are implemented to give effect to the new provisions in the legislation.

The Commissioner of Patents (the Commissioner) is the government official designated under the Act who is responsible for administering the patent regime. In practice, CIPO officials, reporting to the Commissioner, are responsible for the administration of the patent regime. In 2002, CIPO published on its website a paper analyzing the legal and technical implications of Canada’s ratification of the PLT. This paper was subsequently updated in 2012 and 2013. Implementing the provisions contained in the new Rules is the final step towards modernizing Canada’s patent framework.

CIPO funds its operations on a cost-recovery basis from the revenues it generates from fees paid by clients for IP services. Therefore, fees must be sufficient to recover the costs of the associated activities in order to adequately fund and support CIPO’s operations. One of the guiding principles that the organization follows in establishing new fees is financial neutrality. CIPO has used activity-based costing extensively for the past 10 years to evaluate the relationship between costs, activities, products and services in order to strategically manage its business. Using this costing method, the fee structure for the Patent Rules associated with this proposal was tabled in Parliament in early 2017 as part of the process mandated by the User Fees Act, and a recommendation in favour of the changes was provided to Parliament.

Objectives

The primary objective of the new Rules is to implement amendments that were made to the Act in order to allow Canada’s ratification of the PLT. This will reduce regulatory burden and red tape and increase certainty for applicants by harmonizing Canada’s patent regime with international norms. The new Rules will ensure that Canada’s patent regime is responsive to the needs of inventors, businesses and the public.

A second objective is to modernize Canada’s patent regime by updating, clarifying, codifying and improving aspects of the regulatory framework.

The new Rules contribute to the Government’s IP strategy, which seeks to ensure that Canada’s IP regime is modern and robust and that Canadian entrepreneurs better understand and protect their IP.

Description

The new Rules will repeal and replace the existing Patent Rules to enable Canada to ratify the PLT, as well as modernize the administration of patent rights to align with modern business practices and increase clarity and legal certainty for users of the patent system. The changes to the Rules can be summarized according to a number of key themes, as set out below. In addition, minor changes to language are reflected throughout the new Rules in order to modernize the regulatory text, and the provisions were restructured in order to make them more comprehensible and to better align their structure with that of the Act.

(1) Filing requirements

Filing a patent application consists of preparing a formal application and asking the Commissioner to grant a patent. In order to comply with the PLT, the requirements that must be met in order to receive an official filing date in Canada will be simplified, resulting in a reduced administrative burden on applicants. The filing date is the date where a patent application has met the minimum filing requirements. The filing date is important under Canada’s “first to file” system, where the first person to file a patent for an invention is the one entitled to the protection of the invention.

Under the new Rules, to obtain a filing date the applicant will only need to provide an indication that a Canadian patent is sought, a means of identifying and contacting the applicant and a document in any language that appears to describe the invention. The application fee will no longer be required to establish a filing date, but if it is not paid at the filing date it must instead be paid within three months after the date of a notice from the Commissioner. However, a new late fee of $150 will apply if the application fee is not paid on the filing date.

Although the document describing the invention could be in any language to establish a filing date, if it is not entirely in English or French, the applicant will be required to submit a translation within a short time after the filing date, which will replace the original document. If the applicant does not submit the translation within two months following the date of a notice from the Commissioner, the application will be deemed to be abandoned.

Changes to the Act, as required by the PLT, will allow an applicant to submit a reference to an earlier patent application (filed in Canada or another country) for the purpose of obtaining a filing date (known as “filing by reference”). The new Rules will set out the time limits and requirements that must be met for filing by reference, including a requirement for the applicant to submit a copy of the earlier application to the Commissioner or provide access to the document via an accepted digital library.

The PLT also requires additional safeguards for applicants in the case where part of the description or a drawing referred to in the application is missing. Changes to the Act will provide the applicant with an opportunity to add the missing part(s) to their application, either on their own initiative or on notification by the Office and within a prescribed period. The new Rules will specify the applicable time limits for providing the missing parts. This mechanism could not be used to add or amend claims, which are the part of the application that define the scope and limits of the invention that the patent would protect.

(2) Priority

A request for priority is essentially a request to claim, for certain purposes, the filing date of an earlier patent application in another country or in Canada as the filing date of a subsequently filed pending application in Canada. To benefit from a priority claim under the current rules, the subsequently filed pending application in Canada must be filed within the one-year priority period, i.e. the one-year period after the filing date of the earlier application. The new Rules include the following key changes concerning requests for priority:

• The time limit to submit a request for priority will be before the later of 16 months after the earliest filing date of the earlier patent applications on which the request is based or 4 months after the filing date of the pending application. However, if the applicant approves early public inspection of the pending application (i.e. before the end of the 18-month confidentiality period, when applications would normally be laid open to public inspection), they will not be permitted to make a request for priority after the date on which they approved early public inspection unless that approval is withdrawn in time to permit the Commissioner to stop technical preparations to open the application to public inspection.
• For non-PCT applications, it will be mandatory for the applicant to submit a copy of the earlier application (“priority document”) within a prescribed period or make it available to the Commissioner via an acceptable digital library, except if the request for priority is based on an earlier application filed in Canada. If the priority document is not provided within the prescribed period, the applicant will be notified and given two months from the date of the notice to comply. The new Rules also allow additional time for applicants who request the priority document from a foreign patent office but do not receive it within the prescribed time limit to provide it to the Commissioner. This will provide an additional safeguard for these applicants.
• For PCT applications, if the priority document was already submitted in the international phase, the applicant will not be required to resubmit it during the national phase. If it was not submitted in the international phase, the same Rules will apply as for non-PCT applications in order to give the applicant the opportunity to provide it during the national phase.
• A translation of a foreign language priority document will only be required upon request of the examiner when it is necessary for examination purposes. The examiner could also request additional information if they believe the translation is not accurate.
• When an applicant fails to comply with the requirements concerning requests for priority (e.g. by failing to make the request within the prescribed time, by failing to make the priority document available to the Office, or by failing to provide a translation of the priority document upon request), the claim for priority will be disregarded rather than the application being deemed to be abandoned. In contrast with the abandonment of an application, when a claim for priority is disregarded the effect is not reversible and the applicant cannot correct the failure to act that resulted in the priority claim being disregarded. This consequence is the only one permitted by the PLT in respect of not meeting requirements in respect of priority claims.
• In the case where an applicant did not file their Canadian application before the one-year priority period expired, the PLT requires that the applicant be provided with an opportunity to restore the priority right in certain limited circumstances. Changes to the Act provide for restoration of the right of priority when an application is filed more than 12 months after the filing date of the priority application but within 2 months after the end of those 12 months if the failure to meet the deadline was unintentional. For a PCT national phase application, the request for priority may be made during the international phase. The PCT requires that after national phase entry, applicants be provided an opportunity to restore the right of priority if the PCT application was not filed before the one-year priority period expired. The new Rules will provide for a short time period to submit the request for restoration of priority after filing the application or after the national phase entry date, i.e. the date where the international application becomes a PCT national phase application. There will not be a fee for requesting restoration of priority and no extensions of time to make the request for restoration will be permitted.

(3) Presentation of documents and applications

Existing requirements concerning the form and manner of presenting applications and other documents, such as page sizes, margins and font sizes, will remain largely the same.

The new Rules will make it explicit that the Commissioner will only have regard to documents that are in a language other than English or French in specific instances, such as copies of foreign applications used as the basis for priority claims or filing by reference and copies of PCT international applications that were filed in other languages. The new Rules will clarify that any translation submitted must not introduce new matter.

(4) Compliant patent applications

A patent application consists of many elements, only some of which are required in order to secure a filing date. In the new Rules, the remaining elements of the application must be submitted within three months after the date of the notice from the Commissioner requesting the missing information. Failure to respond in good faith within three months after the date of the notice will result in the application being deemed abandoned.

The list of elements required in order for an application to comply with the Act and Rules remain largely unchanged: a petition requesting the grant of a patent; an abstract summarizing the application; a specification consisting of a description of the invention (including a sequence listing in electronic form that complies with the PCT Sequence Listing Standard that gives a detailed disclosure of any nucleotide and/or amino acid sequences disclosed in the application, if applicable) and at least one claim. Under the new Rules it is required to provide a statement to the effect that either the applicant is the inventor or that the applicant is entitled to apply for the patent. When a statement is not on file, one will be required to be submitted within 3 months after a notice from the Commissioner, whereas currently, applicants have the later of 3 months after a notice from the Commissioner and 12 months after the filing date. There would no longer be an additional $200 fee for late completion of the application, as was the case with the current Rules.

The prescribed form and contents of the elements of an application remain largely the same as current requirements, with some exceptions:

• Petition: To comply with PLT requirements, the new Rules will set out minimum requirements for the content of the petition (a request for the granting of a patent). The existing form for the petition for the grant of a patent (Form 3 of Schedule I of the current Rules) will be eliminated.
• Abstract: The Commissioner is authorized to amend or replace the abstract if it does not comply with the Rules. This provision aims to improve searching of applications in the patent database for the general public.
• Sequence listing: The existing practice that an application can only contain one copy of a sequence listing (which discloses the nucleotide or amino acid sequence) is now explicit.
• Drawings: Drawings could include a photograph in the limited case where the invention doesn’t lend itself to illustrations. If the applicant does not reply in good faith to a request to provide additional drawings within the prescribed time limit, the application will be deemed to be abandoned.

(5) Representation, agent register and exams

The new Rules prescribe circumstances when an applicant, patentee, or other person (e.g. a person requesting re-examination of a patent) must be represented by a patent agent or common representative in business before the Office, while allowing more flexibility with respect to who can represent the applicant and patentee and communicate with the Office for certain actions. The current requirement that non-inventor applicants appoint an agent to represent them before the Patent Office will be maintained. Key changes include:

• The new Rules set out the procedures for appointing and revoking an appointment of a patent agent, via submission of a signed notice to the Commissioner, with the exception of appointment in the petition on the filing date or request to enter the PCT national phase where signatures are not required. Appointment of agent by default is outlined for certain scenarios to ensure continuity of representation, such as when an applicant or patentee transfers their rights to another person without that other person appointing a new patent agent. Similarly, revocation occurs automatically in certain cases, such as when an agent is removed from the register of agents. Where an appointment of an agent is submitted by a person other than a patent agent, a new requirement is that evidence of the consent to that appointment is required to be submitted before the appointment is given effect. Otherwise, similar rules concerning the manner of appointment or revocation apply with respect to appointment by the agent of an associate agent. As is currently the case, a non-resident agent is required to appoint an associate agent that resides in Canada. Where the requirement to appoint an agent or an associate agent that resides in Canada has not been met, the applicant will be notified that they need to comply three months from the date of the notice, failing which the application would be deemed to be abandoned.
• If the applicant appoints an agent who does not reside in Canada but no associate patent agent is appointed by that agent, the non-resident patent agent will be notified that they must, within three months from the date of the notice, appoint an associate agent, or within the same three months the applicant must appoint a patent agent who resides in Canada or a different non-resident patent agent who appoints an associate patent agent.
• The new Rules introduce the concept of a “common representative” when there is more than one applicant or patentee, where one of the joint applicants or patentees represents all applicants or patentees for various actions with the Office. This concept is intended to address various situations, including where joint applicants cannot all sign the same document in a time-sensitive procedure, such as the appointment of a patent agent. The new Rules will set out the manner of appointing or revoking an appointment of a common representative and define the determination of the common representative by default if none has been appointed, or if the previously appointed common representative transfers all of their rights in the application or patent to a new owner.
• In keeping with the requirements of the PLT, the new Rules provide greater flexibility to applicants during the application stage to undertake certain actions themselves and in some cases to authorize another person to act on their behalf. For example, even when an agent has been appointed, any of the applicants or anyone authorized by any of the applicants is permitted to pay an annual maintenance fee to keep the application in good standing. Under the new regime, whether a patent agent is appointed or not, certain other actions (e.g. paying other types of fees, or reinstating an application that was abandoned due to unpaid maintenance fees) can be taken by the applicant or common representative. With respect to patents that have been granted, for certain complex procedures before the Office (e.g. reissuing a patent to address omissions or mistakes, making a disclaimer to narrow the scope of some or all of the claims, or participating in a re-examination proceeding), action can only be taken by an appointed agent or the patentee themselves (the sole patentee or common representative, as applicable). Any of the patentees or anyone they authorize will still be able to pay a maintenance fee. For most other matters with respect to the patent, action can be taken by the sole patentee or common representative, or anyone they authorize.
• As an added safeguard, if an agent communicates with the Office regarding an application or a patent in respect of which they have not been appointed, they will be notified that the Commissioner will not have regard to that communication unless the appointment of the agent is submitted within three months of the date of the notice and there is a request to have regard to the communication. Otherwise the communication would be disregarded. Similar provisions would apply to communications from a joint applicant or joint patentee who is not the appointed common representative.

The current Rules regarding qualifying examinations for patent agents and management of the register of agents remain largely unchanged.

(6) Communicating with the Office

Correspondence related provisions aim to modernize and simplify communications with the Office. The new Rules include the following key changes:

• Electronic communications are considered to be received on the date that the Office receives the communication, including on days when the Office is closed, such as weekends and holidays. This will benefit applicants, as they will be able to secure a filing date even if the Office is closed.
• Notices sent by the Commissioner or the Office by email will be considered to have been sent on the date indicated in the notice. Written communications will only be sent to an individual by email with their authorization.
• New exceptions have been added to the rule that written communications to the Commissioner must relate to only one application or patent. These exceptions allow certain actions to be taken on multiple files with one piece of correspondence, including the appointment or revocation of a patent agent and correction of the same error in multiple applications or patents. This rule codifies existing office practice.
• Notices and updates from CIPO will be published on CIPO’s website.

(7) Confidentiality and laying open to public inspection

An application shall not be open to public inspection if it is withdrawn on or before a prescribed date. The prescribed date in the new Rules has changed and includes a new limitation that once an applicant approves early public inspection they could no longer prevent it by withdrawing the application. In the current Rules the prescribed date is 2 months before the date of expiry of the 18-month confidentiality period, or, if the Commissioner is able to stop technical preparations to open the application to public inspection, at a subsequent date. In the new Rules the prescribed date is 2 months before the end of the 18-month confidentiality period or the day on which the applicant submits their approval for early public inspection, whichever is earlier.

Withdrawing a request for priority could affect the date an application is laid open to public inspection if withdrawn on or before a prescribed date. The prescribed date in the new Rules has changed. In the current Rules, the prescribed date is 16 months after the filing date of that priority application, or, if the Commissioner is able to stop technical preparations to open the application to public inspection. In the new Rules the prescribed date is 16 months after the filing date of the priority application, except if the request for priority is based on more than one priority application in which case the prescribed date is 16 months after the earliest filing date of those priority applications.

(8) Examination process and amendments to applications

Changes to the examination process and to the process for amending applications will bring greater certainty to the marketplace by streamlining patent prosecution and reducing pendency. Various time limits within the examination process have been reduced in order to shorten the average duration before a decision is made on the patentability of an invention, thus reducing the period of uncertainty for third parties. Key changes include

• In Canada, as in most other jurisdictions, examination of a patent application begins only upon the request of the applicant. The time limit for the applicant to request examination has been reduced from five years to four years after the filing date of the application. The time limit to request examination of divisional applications has also been reduced. For divisional applications (see paragraph 14 of this section) the time limit to request examination will be the later of the time limit to request examination of the original application (i.e. four years from filing date) and three months after the presentation date of the divisional application, whereas in the current Rules applicants always have at least a six months. This will ensure that applicants always have at least a three months deferred examination period on divisional applications.
• Changes to the Act, as required by the PLT, introduced a safeguard whereby the Office must notify applicants of a missed deadline to request examination and provide two months to comply before the application is deemed to be abandoned. The new Rules establish a new late fee of $150 that will apply during the two-month late fee period, in addition to the existing fee for requesting examination.
• In the extremely rare event that the Commissioner sends the applicant a notice that they are required to request examination immediately, for example in cases that involve the national interest, the new Rules specify that they have three months to comply with the notice; failing to do so will result in the application being deemed to be abandoned.
• The time limit to respond to an examiner’s report outlining any defects in the application has been reduced from the current six months to four months for all applications, including those undergoing accelerated examination. A uniform time limit to respond to examiners’ reports reduces the burden on applicants to keep track of due dates.
• Similarly, the time limits for an applicant to respond to a notice of allowance (a notice indicating the application has been found allowable and requisitioning payment of applicable fees) or a final action (a rejection of the application by a patent examiner) have been reduced from six months to four months.
• If an application is filed in a language other than English or French, the application must not be amended by the applicant before they provide a translation of the application.
• The new Rules streamline the process for amending an application after allowance. Applicants have an opportunity before payment of the final fee to request that a notice of allowance be withdrawn, after which the application would be returned to examination and amendments can be introduced. Currently, only amendments that do not require a further search by the examiner are accepted after allowance, whereas more complex amendments can only be introduced by withholding the final fee so that the application becomes abandoned, and subsequently it is reinstated and brought back into examination. Having a streamlined process for amending an application after allowance provides greater flexibility for applicants to make a broader range of amendments in a timely fashion and preserve rights that would be lost through abandonment. A fee, equivalent to the existing $400 fee for amendments after allowance, applies to all such requests, whereas currently more complex amendments submitted via the abandonment and reinstatement process are only subject to the $200 reinstatement fee, with no additional fee for the amendment.

(9) Corrections

From time to time, a patent application or a patent contains errors due to an oversight by the applicant or patentee or by the Office. Provisions in the Act allowing for the correction of “clerical errors” were repealed. During the application stage, the new Rules allow for the correction of errors in the identity (i.e. the wrong person was named) or name (i.e. a typo) of the inventor or applicant within prescribed time limits. Errors in the identity of the applicant must be corrected if a request for the correction is submitted before the day the application is open to public inspection or the day the Commissioner receives a request to record the transfer of ownership of an application, if the Commissioner records the transfer. Errors in the identity of the inventor must be corrected if a request for the correction is submitted before the day on which a notice of allowance is sent. Errors in the name of an applicant or an inventor, if the correction does not result in a change in their identity, must be corrected if a request for the correction is submitted before the day on which the final fee is paid.

An obvious error in the specification or drawings of an application can be corrected after the notice of allowance is sent, up until the final fee for issuance of the patent is paid. This provision is not intended to allow for substantive changes to be made.

For 12 months after a patent is issued, it will be possible to correct certain types of errors in the patent:

• An obvious error that was made by the Commissioner in the patent, or in the specification and drawings referred to in the patent, will be corrected either on initiative by the Commissioner or upon request if received within 12 months after the patent is issued. No fee will apply in this case. A similar provision will allow for the correction of obvious errors made by the re-examination board in a re-examination certificate.
• The patentee can also request the correction of errors in the name of the patentee or inventor (i.e. typos that do not change their identity) or obvious errors in the specification or drawings, within 12 months of the patent being issued. This time limit serves to encourage patentees to communicate errors quickly to the Office in order to provide certainty in the records of the Office for the public. The new Rules specify the contents of the request, the fee for making the request for the correction of errors, and set out a notification regime to provide the patentee with additional time to comply if anything is missing from the request, after which time the request will be disregarded.

New provisions allow for the correction of errors in a priority request, including errors in the filing date of the previous application, the name of the country or IP office where it was filed and the application number. Prescribed time limits for correction requests vary depending on the particular correction being requested in order to balance flexibility for the applicant with timely publication of the pending application. There is no fee to request a correction to a claim for priority.

(10) Abandonment and reinstatement

Abandonment of an application can occur when an applicant fails to take certain actions that are required for the continued prosecution of the application, either inadvertently or because they have chosen to no longer pursue patent protection for the invention. Once an application is abandoned, it can be reinstated within a certain period of time, after which it is irrevocably abandoned and the application may not be reinstated. Changes to the Act provide additional safety nets for applicants to avoid inadvertent loss of rights, as required by the PLT, in the form of notifications to applicants of certain missed deadlines (e.g. to pay a maintenance fee or request examination) and additional periods of time to comply before the application becomes abandoned.

The new Rules introduce changes to the abandonment and reinstatement regime and codify existing office practice related to certain prescribed time periods, certain circumstances and other procedural matters:

• Abandonment occurs if the applicant does not respond to an examiner’s report within four months after the report, rather than the current six months. Extensions of time to respond would be limited to an additional two months.
• New provisions prescribe the time limits after which applications are deemed to be abandoned in relation to new circumstances in the Act, such as a failure to provide certain required translations upon request (e.g. when an application is filed in a language other than English or French) and failure to reply in good faith to a request of the Commissioner for further drawings.
• The time limit to request reinstatement of an abandoned application is 12 months from the date of abandonment, as is currently the case. For certain causes of abandonment, notably failure to pay the maintenance fee on time and failure to request examination on time, the new notice regime provides a safety net where a notice and additional time to comply must be provided before abandonment can occur. For example, in the current regime, in the case of abandonment for failure to pay a maintenance fee on time, abandonment occurs if the maintenance fee is not paid on or before the maintenance fee anniversary due date. In the new regime, abandonment will normally occur 6 months following the missed maintenance fee anniversary due date, as the Commissioner will promptly provide notice of a missed payment after the due date has passed and no payment has been received. However, since the Act guarantees applicants a minimum of 2 months to respond to the notice before abandonment can occur, the abandonment could happen at a later date (past 6 months following the missed due date) if the notice to the applicant of the missed payment was not issued in a timely fashion.

(11) Third-party rights and due care

New safety nets for applicants that are required for compliance with the PLT will increase time limits to remedy certain deficiencies, such as a missed maintenance fee payment, causing applications to become abandoned later than they would be in the current system. This will lengthen periods of market uncertainty during which the status of the application or patent and the intentions of its owner are unclear. To mitigate the impact of longer periods of uncertainty on third parties who may be interested in using the invention, new balancing provisions have been introduced to encourage timely action by applicants and patentees.

One such balancing provision is to afford rights to third parties in specific circumstances to protect them from an infringement action when they take actions in good faith to use or prepare to use an invention during prescribed periods when the patent rights are uncertain, such as during periods when an application is deemed to be abandoned but could still be reinstated. While the framework for third-party rights is established in the Act, the new Rules set out how they will be applied in the cases of failure to pay a maintenance fee for a patent application or a patent that has been granted, or to request examination:

• With respect to applications, third-party rights begin to accrue six months after the missed due date to request examination or to pay a maintenance fee (even if the Commissioner is late in notifying the applicant of the deficiency and the applicant still has time to correct it before the application is deemed to be abandoned). In most cases, third-party rights accrue until the application is reinstated.
• For a patent that has been granted, third-party rights begin to apply six months after the missed due date to pay a maintenance fee, and generally accrue until the deemed expiration of the patent is reversed.

The second balancing provision requires, in the following circumstances, that in order to reinstate an abandoned application or reverse the expiry of a patent that was deemed to have expired, the applicant or patentee must demonstrate that the failure occurred in spite of due care having been taken (for example an exceptional circumstance prevented the applicant or patentee from taking a required action):

• To reinstate an application that was abandoned for failure to pay a maintenance fee;
• To reinstate, within six months after the missed due date, an application that was abandoned for failure to request examination; and
• To reverse the deemed expiry of a patent that was deemed to be expired for failure to pay a maintenance fee.

(12) Transfers, change of name

Changes in the Act simplify the processes for updating the Office’s records to reflect changes of name or ownership of an application or a patent, for example by streamlining evidence requirements and shifting from registering the actual documents concerning the change of name or ownership to simply recording the fact of the change. The new Rules set out the specific requirements for recording transfers and name changes.

To align with terminology changes in the Act, changes in ownership are referred to as “transfers” rather than “assignments” as at present. When a request to record a transfer is made by the applicant or patentee, the request only requires the name and postal address of the transferee and payment of the existing $100 fee. When the request is submitted by the transferee, the Act requires evidence of the transfer as well.

The requirements for an applicant or patentee to request the recording of a name change are also simplified. Evidence of the name change or supporting documentation is no longer required.

(13) Fees

Most fee amounts remain unchanged from the current regime that allows applicants who qualify as a “small entity” to pay many fees at a lower rate.

The new Rules set the new late fees introduced in the Act that are applied in three cases: payment of the application fee after the filing date; late payment of an annual maintenance fee for an application or a patent that has been granted; and requests for examination that are made after the deadline. The amount of the late fee is $150 in each of the three cases.

The existing late payment regime in the event of a clear but unsuccessful attempt to pay (ATP) a fee has been eliminated. This regime, which is seldom used, has been replaced by the new system of notifications and fixed late fees rather than a variable penalty. In the case of a PCT international application that seeks, but fails, to enter national phase within 42 months after the priority date, due to the applicant’s unsuccessful payment of the relevant fees, a period of up to 2 months is given to successfully enter the national phase by paying those fees in addition to a late fee. This will give the applicant of a PCT application a safety net that somewhat relieves any risk introduced by the removal of the ATP regime.

New provisions enable the Commissioner to waive fees in certain instances if the circumstances justify it. Fees for requests to correct an error or reissue a patent can be waived if the request is as a result of an error made by the Commissioner.

The Rules concerning annual maintenance fees for applications remain largely unchanged, except for the new notification and late fee regime set out in the Act. With respect to PCT applications, for national entry after the second or third anniversary of the international filing date, any maintenance fees that would apply up to the national phase entry date will be required for entry into the national phase.

To streamline the patent granting process, in the new regime the grant of a patent will not be delayed solely because of an unpaid maintenance fee at the application stage before the patent is granted. The unpaid maintenance fees due for the application will be collected for the patent after it is granted at the time when the first maintenance fee is due with respect to the patent.

With respect to maintenance fees for patents that have been granted, amendments to the Act introduce a change to when the patent is deemed to have expired following a missed maintenance fee payment. Under the new notice and late fee regime in the Act, the patentee will be notified of the missed due date and given additional time to comply. If the maintenance fee and late fee are not paid within this grace period, the patent will be retroactively deemed to have expired as of the missed due date, but it could still be revived for up to 18 months after that due date. The new Rules specify the cost of the fees and the due date for payment.

The existing fee per page for sequence listings has been eliminated; and, with this change a printout of the sequence listing will no longer be provided with the patent.

Fee refund provisions have been updated to allow fees that were paid for applications filed through inadvertence, accident, or mistake and, in most cases, withdrawn within 14 days of filing, to be fully refunded with the exception of the application fee. Fees that are paid in respect of an international application (other than the fee set out in any of items 16 to 21 of Schedule 2), for which at least one requirement for national phase entry has been fulfilled through inadvertence, accident, or mistake and is withdrawn before the end of 14 days after the national phase entry date, will also be refunded.

(14) Divisional applications

A premise of Canada’s patent regime is that a patent shall be granted for one invention only. When a patent application describes more than one invention, the applicant can file a “divisional application” to split off the additional inventions in the original application into their own applications. The Rules related to divisional applications are mostly unchanged; however, the following amendments were made to improve clarity and codify existing office practices:

• The Rules prescribe requirements and conditions for filing a divisional application, including that the petition must state that it is a divisional application, and provide that a divisional application cannot be filed until the applicant has submitted any translations required for the original application. The Rules also prescribe time limits for filing a divisional application if the original application is refused by the Commissioner, depending on whether or not an appeal is made.
• For most purposes a divisional application is considered to have the same filing date as the original application. However, for the application of certain provisions of the Rules, the presentation date (i.e. the date the divisional application was actually filed) will be used in place of the filing date.
• In general, actions that were taken on the original application on or before the presentation date will also be considered to have been taken in respect of the divisional application, such as making a priority claim, providing copies of priority documents or translations, or submitting a small entity declaration. Any such actions that are taken after the presentation date will need to be taken separately on the original and the divisional application because, for all intents and purposes, they are separate applications.
• At the presentation date of the divisional application, the sum of all maintenance fees that would have been payable up to that point on the original application will be due in respect of the divisional application.
• A divisional application cannot include material that was not included or could not be inferred from the original application.

The time limit for requesting the examination of a divisional application is the four-year time limit for requesting an examination of the original application or three months after the presentation date, whichever is later.

The period during which third-party rights apply to the original application before a divisional application is filed will also apply to the divisional application, in order to ensure that applicants cannot circumvent third-party rights by dividing an application.

(15) Patent Cooperation Treaty provisions

The provisions of the new Rules concerning the application of the PCT in Canada would remain largely the same as the current Rules, with some important amendments related to time limits. Key changes include the following:

• The new Rules make explicit that if a translation of an international application that is in a foreign language is submitted at national entry, it replaces the text of the PCT national phase application and amendments are not permitted to add matter not reasonably to be inferred from the translation.
• Currently, applicants may enter the national phase in Canada within 30 months after the international filing date (or priority date, if applicable), followed by an additional 12-month period in which late entry is allowed with payment of a late fee. To align Canada’s regime with international standards, the new Rules concerning late entry require the applicant to provide a statement that the late entry was unintentional.
• In most cases, errors in the identity of an applicant of a PCT national phase application can be corrected upon request up to three months after national entry.
• The notice and late fee regime for payment of the filing fees, as well as the provisions concerning reference filings and the addition of missing parts, do not apply to PCT national phase applications.
• Once a patent has been granted on the basis of a PCT application, it cannot be invalidated for failure to have paid a fee required, in respect of that PCT application, for entry into the national phase. This change is required for compliance with the PLT, and parallels similar language added to the Act with respect to maintenance fees for non-PCT applications.

(16) Transitional provisions

These provisions specify how applications filed and patents granted before the new Rules come into force are to be treated. In general, the goal is to apply the new Rules to existing applications and patents to the maximum extent possible, while minimizing confusion, undue hardship, and administrative burden for both applicants and the Office.

The transitional provisions address three categories of applications (and patents granted on the basis of those applications), covering previous versions of the Rules with respect to which there remain active applications or patents that have been granted: applications with a filing date before October 1, 1989 (referred to in the new Rules as “category 1 applications”); applications with a filing date between October 1, 1989, and October 1, 1996 (referred to in those Rules as “category 2 applications”); and applications with a filing date between October 1, 1996, and the coming-into-force date of the new Rules (referred to in those Rules as “category 3 applications”).

For instance, the transitional provisions allow a PCT national phase application that was filed before the coming into force of the new Rules to benefit from the old regime’s time limit of five years from the filing date to request examination, rather than the new reduced time limit, in most cases, of four years from the filing date.

“One-for-One” Rule

These Rules are considered an “OUT” under the “One-for-One” Rule.

The Rules are expected to result in an annualized average administrative cost decrease of $369,180, measured in 2012 constant year (CY) dollars. Data indicates that 98% of patent applicants and rights holders use the services of a patent agent, which is estimated to cost $150 per hour (all figures are discounted to 2012 dollars). The time required for each action is forecast using information provided by IP practitioners. Data on the number of transactions and clients who take each action is tracked by CIPO and was used for these calculations. The data assumes a normal rate of distribution among affected parties. For example, 10% of applicants will be affected per year such that at the end of the 10-year assessment period, all current applications will have been subject to the changes once.

The following elements of the Rules reduce the burden on users of the patent system:

• Removing the requirement to use a prescribed application form titled “Petition for grant of a patent.” This is estimated to save applicants 0.5 hours of a patent agent’s time over the lifetime of an application.
• The Rules allow for patent applicants and registered owners to take certain actions themselves (or by anyone), such as the payment of fees, even if they have appointed a patent agent. As a result, the 98% of applicants and patentees with an agent on their file would have the ability to use the services of lower cost maintenance fee payment companies or their own internal clerical staff to arrange certain payments. It is anticipated that by taking this option, they will save 0.5 hours of an agent’s time (the rate at which many agents bill for verifying information and sending out correspondence), which is estimated to be replaced by the cost of 0.5 hours of the time of clerical staff.

CIPO forecasts that these changes will reduce the burden on applicants by a total of $7,480,971 over the 10-year period mandated in the analysis.

The following elements of the Rules are expected to increase costs to businesses:

• Applicants that claim priority based on the filing date of a previous application that was not filed in Canada will now need to provide a copy of that earlier application, unless, in respect of PCT applications entering the national phase in Canada, one has already been provided in the international phase. Claiming priority can be a relatively complex process; therefore, it is assumed that all priority claimants use the services of a patent agent. For applicants who make a priority request on an application other than a PCT national phase application, the increase in burden is estimated to be 0.3 hours of a patent agent’s time, which is a commonly used rate to provide duplicates that are verified and free of errors.
• New provisions require users of the Canadian patent system to show that they took due care in complying with Office requirements if they request to reinstate an application that became abandoned for failure to pay a maintenance fee or failure to request examination in time as well as reverse the deemed expiry of a patent for failure to pay a maintenance fee. In discussions with patent agents, they plan to avoid this scenario at all costs in order to reduce uncertainty in how due care will be applied and to avoid the potential for partial or full loss of rights for failure to take a required action in time. As a result, it is assumed that the only stakeholders regularly affected by this change would be a portion of the 2% of stakeholders who do not use a patent agent. Of this group, the only ones affected are those who miss the associated deadlines and fail to take the required action within an additional safety net period of time. It is estimated that this, at most, will constitute one tenth of this population (2% of the total number of active applications and patents, and 2% of the total number of applications pending a request for examination), and will introduce four hours of work required at a cost of the Canadian average wage.

CIPO forecasts that these changes would increase the burden on a subset of applicants by a total of $989,233 over the 10-year period mandated in the analysis.

It is anticipated that patent agents in Canada would need an average of 16 hours to become familiar with the new Rules. This estimate is based on the two consultation sessions that CIPO held to solicit agent feedback on amendments to the Act and on the regulatory changes. It is further broken down by assuming that a quarter of registered patent agents will need to become familiar with all elements of the new Rules, which would require 40 hours of training (one full week). The remaining three quarters would only need eight hours (one day) to learn about the changes that are relevant to them. It is anticipated that this learning phase will cost patent agents approximately $2.3 million (2012 CY) in equivalent time as a one-time upfront cost.

The new Rules are expected to reduce administrative costs, as these costs will be distributed across all stakeholders. Over the life cycle of an average patent application, other than a PCT national application (using a patent agent, from the filing date of the application to the grant of a patent or refusal of the application), clients would save $95, while those that are claiming priority would instead only save $63. The increase for those that must show due care, when averaged out over the number of applicants, is negligible at $4 total over the two major categories due care would be applied to. Patent agents would see an upfront cost of $2,000. The total savings of the amendments are estimated to be $4.1.M. The annualized savings for the purposes of the “One-for-One” Rule are $369,180 (using a present value base year of 2012 and a 7% discount rate, as specified in the Red Tape Reduction Regulations.

Small business lens

The small business lens does not apply, as the new Rules do not impose any significant costs on small businesses.

Consultation

Consultations with stakeholders were undertaken by CIPO prior to signing the PLT in 2001 and again following its signature in 2002. Key stakeholders expressed satisfaction with the content of the PLT and with Canada’s signature. In 2008, CIPO conducted an online consultation on proposed regulatory amendments inspired by the PLT. In 2013, CIPO shared a series of technical papers with representatives of the IP community to seek their views on implementation issues concerning the PLT prior to drafting amendments. In 2017, CIPO published a public consultation version of the draft proposed Rules on its website, along with a plain language guide to the changes. The feedback received was generally positive with respect to Canada joining the PLT and modernizing its patent framework. The responses that were received were reviewed and analyzed and resulted in some changes to the new Rules.

Patent agents and professional associations (e.g. the Intellectual Property Institute of Canada) generally expressed support for the new Rules, but also expressed concern regarding the impact of certain provisions, such as the proposal to remove the requirement to use a patent agent when taking certain actions (e.g. to pay a fee). The new Patent Rules could decrease revenues for patent agents but would equally decrease prosecution costs for applicants. CIPO conducted separate consultations with stakeholders concerning the fee changes, in accordance with the former User Fees Act. Stakeholders were supportive of the fee changes, with some minor comments about a proposed time period to correct errors that CIPO took into consideration in developing the new Rules.

On December 1, 2018, the new Patent Rules were published in the Canada Gazette, Part I, for a public comment period of 30 days. CIPO received a total of five submissions from two IP associations, a law firm and two private citizens. After carefully considering all comments received, CIPO made additional changes to the new Rules. In respect of final fee payments paid before the coming-into-force date, a new provision in the new Rules will ensure that for a limited time after the coming into force date, refunds will be possible. A modification was made to a provision addressing the time limits to file divisional applications, such that the provision now provides a time limit in the event an applicant seeks leave to appeal to the Supreme Court. Responsive to stakeholder concerns, the amount of time after the granting of a patent within which particular errors may be corrected was doubled to a 12-month time limit. With respect to joint applications, if there has been a correction to the name of one of the applicants and no common representative is appointed, responsive to stakeholder feedback a default common representative will only be appointed in the case where the correction results in a change in the identity of the applicant. Finally, stakeholders expressed concerns with third party rights being available in certain time periods. Responsive to those concerns, certain prescribed periods were removed from the Rules with the effect that third party rights will not be available in those periods.

In addition, other technical changes were made since Canada Gazette, Part I, to further clarify the regulations and ensure alignment with original policy intent previously communicated to stakeholders, such as alignment with international norms.

No changes are being proposed in response to other comments received during the Canada Gazette, Part I, public comment period. Making changes responsive to those comments was in most cases simply not in line with policy objectives or international norms. These comments are listed below.

Representation

Stakeholders expressed concerns around the increased flexibility during the application stage with respect to who can represent the applicant for fee payments. However, removing this flexibility would not have complied with the Patent Law Treaty. Another submission advocated for the removal of the mandatory requirement to appoint a patent agent in certain circumstances, however, the expressed approach would be a significant departure from the current Canadian system and would not be in line with current policy objectives to ensure applicants are properly represented.

Final fees and time limits

Stakeholders requested that the new Rules not remove the current option to request a refund of the final fee because they expressed it was useful, especially when a final fee is paid in error. The sole intention of allowing a refund of the final fee in the current Rules was to preserve a process loop that prevented an application from proceeding to grant without the applicant desiring for it to proceed to that stage. A new provision in the new Rules will accomplish this effect in a more efficient manner without requiring the payment of the final fee, and thus removing the need to refund it. The intention is that applicants should exercise diligence when providing payment of a final fee and once paid a patent should issue. A concern was also raised regarding the requirement that a request to record a transfer of an application be made before the final fee is paid. For logistical administrative reasons the Commissioner is unable to grant a patent in the name of an applicant if a request to record the transfer to that applicant is only received after the final fee is paid.

A comment was received that the timeframe in the current Rules for applicants to respond to the notices from the Commissioner during a review by the Patent Appeal Board should be maintained, instead of being reduced to one month. The change merely codifies the existing practice where the Commissioner sets the deadline to respond at one month. Extensions of time with no fee are available on request for this deadline, and therefore a longer deadline was not seen as justified. A concern was raised in respect of the time limit to reinstate an application when the deadline to reinstate the application falls before the date the application will be open to public inspection. In this limited scenario a lengthening of the reinstatement period was sought in order to ensure that a patent agent, if engaged by the applicant, could view the contents of the application after it is laid open to public inspection in order to advise the applicant without the needing to either be formally retained or to obtain written authority. It was put forward that a lengthening of the reinstatement period in this case could prevent inventions unintentionally entering the public domain when the application is laid open. Lengthening the timeframe would introduce unnecessary complexity and would vary the established concept of a fixed 12-month reinstatement period for all types of abandonment. Furthermore, the mechanisms available to applicants to provide patent agents with access to their application prior to being laid open to public inspection are sufficient in order to ensure the described situation does not occur.

A suggestion was received that the Rules should provide longer timeframes to allow for corrections in the identity of the applicant. The Rules require these corrections be made before the earlier of the day an application is laid open to public inspection and the day on which the Commissioner receives a request to record a transfer. No changes were made in this respect since allowing for corrections past the specified dates would compromise the reliability of the information available to the public when the application was laid open to public inspection and could prejudice them.

Other

Stakeholders recommended retaining the right to advanced examination after extensions of time are sought in some circumstances; however, CIPO has not made changes from the current Rules in this respect and found it was important to preserve this incentive to not use the extension of time provision when advanced examination is desired in order to better ensure efficient prosecution from all parties. Finally, in respect of a category 3 application (applications with a filing date between October 1, 1996, and the coming-into-force date of the new Rules), commenters requested the removal of a requirement to provide a copy of a priority document (the earlier application), when making a request for priority after the coming into force date. No change is made in this respect and the new Rules will require that certified priority documents be provided when a request for priority is made on or after the coming into force date. The likelihood of this scenario occurring in respect of category 3 applications is minimal since the vast majority of priority requests are typically made when an application is filed. The simplification proposed by stakeholders would result in increased complexity and administrative burden on the office to maintain two procedures for up to 16 months past coming into force for only a limited number of applicants.

Rationale

The new Rules will allow Canada to ratify the PLT. The PLT seeks to harmonize and streamline administrative practices in the patent offices of member countries and make them more user-friendly. As Canada has not yet implemented the PLT, Canadians wishing to apply for patents outside Canada and foreign businesses seeking patent protection in Canada face variations between countries in filing requirements and administrative procedures. These variations increase costs for applicants and heighten the potential for costly errors and inadvertent loss of rights. Canada will simplify this process for applicants by complying with the requirements of the PLT, which will align Canada’s patent regime with international norms and allow applicants to benefit from streamlined filing requirements, reduced administrative burden, and additional “safety nets” when key deadlines are missed.

The new Rules will reduce administrative costs to businesses, both large and small. The reduction of red tape, standardization of time limits, and simplification of the administrative requirements for patent applications will lead to a simpler method of filing, reduced risk of errors and loss of rights, as well as lower costs for applicants. For example, allowing applicants to perform certain simple administrative tasks themselves, as opposed to being required to have an agent to handle these tasks (e.g. paying a maintenance fee), will create savings for applicants with respect to agent fees. By making the patent application process less complex, the new Rules will help to address barriers that small and medium-sized enterprises are facing in securing their IP rights.

Making it easier and more cost effective to apply for patent protection will hopefully encourage businesses to consider patenting their innovations. Businesses that hold patents unlock a powerful source of revenue in their ability to license inventions, protect their market share, and leverage their IP in financing activities.

Fee changes

Finally, the new Rules also introduce various late fees when patent applicants and rights holders do not take action within the appropriate time. They will instead need to take the required action, and pay the associated fee, within a mandated timeframe or else risk losing a patent granted to them or having their application deemed to be abandoned. For simplicity and consistency, CIPO opted to establish the same fee amount of $150 for all late fees.

The overall changes to the Canadian patent regime will be such that the impact of the fee structure on the costs incurred by applicants and patent holders will vary based on their behaviour. For applicants who omit to pay a maintenance fee or request examination before the prescribed time limit but address that omission within the new late fee periods, the cost incurred will be reduced from $200 to $150, since the application will no longer be abandoned during this period and they will pay the new late fee rather than the reinstatement fee. For those who address the omission after the new late fee period, once the application has become abandoned, the new fee structure will increase the costs incurred from $200 (the current reinstatement fee) to $350 (current reinstatement fee plus late fee), thereby creating an incentive for early correction.

These late fees, which are considered necessary in order to preserve the safety net benefits afforded by the PLT, will be set in a way to ensure that the amount CIPO will receive from the combination of reinstatement fees and new late fees is as close as possible to the amount it currently receives from reinstatement fees in order to maintain revenue neutrality. The expected outcome, after factoring in anticipated changes in client behaviour in order to avoid having to pay the new late fees, would lead to an outcome in the range of a $9,420 annual cost to clients at one end (if 10% of applicants and rights holders modify their behaviour) to a $142,800 saving to clients at the other end (if 25% of applicants and rights holders modify their behaviour).

Gender-based analysis plus

Innovation, Science and Economic Development (ISED) Canada conducted a gender-based analysis plus preliminary scan of the potential diverse gender issues relating to the new Rules and concluded that it will improve the situation for all and will not impact diverse groups of women or men differently. In fact, the proposal may benefit female-led businesses who want to seek patent protection, as the costs and administrative burden associated with protecting their patents will be lowered.

The goals of the new Rules are to reduce red tape and increase certainty for users of the patent system by aligning Canada’s patent regime with international norms. Available data shows that the number of female inventors on patent applications lags behind their male counterparts; however, the number of women in the fields of science, technology, engineering, and mathematics has increased over the past 20 years. Implementing this proposal, and simplifying the process for an inventor to seek patent protection, will hopefully reduce some of the barriers encountered and encourage women innovators to file for patents.

CIPO has been developing IP awareness and education programs and products, such as videos, case studies, and a pilot Canada-wide IP seminar series, in order to better equip innovators and businesses with the IP knowledge they need to grow and succeed. As CIPO continues to enhance its outreach efforts through new programs and partnerships with other players in the innovation ecosystem, strategies are being considered to better understand the needs of groups such as women and Indigenous entrepreneurs in order to offer tailored products to support their participation in the IP system.

Contact

Public enquiries may be addressed to

Virginie Éthier
Director General
Patent Branch
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
50 Victoria Street, Room C-114
Place du Portage, Phase I
Gatineau, Quebec
K1A 0C9
Email: ic.cipoconsultations-opicconsultations.ic@canada.ca