Canada Gazette, Part I, Volume 152, Number 48: Patent Rules

December 1, 2018

Statutory authority

Patent Act

Sponsoring department

Department of Industry

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, align certain rules with comparable provisions in the Trade-marks Regulations and the Industrial Design Regulations (e.g. provisions concerning the correction of obvious errors and the waiver of fees in certain circumstances), 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 proposed 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), which are determined by domestic legislation and jurisprudence. 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, ratifying the PLT will increase predictability and certainty for applicants and patentees dealing with the Canadian patent system.

The Government first confirmed its intention to amend the Patent Act in order to ratify the PLT in the Economic Action Plan 2014 Act, No. 2 (chapter 39). 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 Trade-marks 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 would 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 would come into force when the proposed 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. The provisions contained in the proposed Rules would complete the next 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 was adjusted through the User Fees Act process and approved by Parliament in early 2017.

Objectives

The primary objective of the proposed Rules is to implement amendments that were made to the Act in order to allow Canada's ratification of the PLT. This would reduce regulatory burden and red tape and increase certainty for applicants by harmonizing Canada's patent regime with international norms. The proposed Rules would 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 proposed 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 proposed Rules would 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 proposed 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 proposed 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 would be simplified, resulting in a reduced administrative burden on applicants. The filing date is the date that CIPO acknowledges as when the patent was applied for, which 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 proposed Rules, to obtain a filing date the applicant would 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 would 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 a prescribed period, expected to be three months, after the date of a notice from the Commissioner. However, a new late fee of $150 would 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 would be required to submit a translation within a short time after the filing date, which would replace the original document. If the applicant does not submit the translation within a prescribed period, expected to be two months, after the date of a notice from the Commissioner, the application would be deemed to be abandoned.

Changes to the Act, as required by the PLT, would allow an applicant to substitute a reference to an earlier patent application (filed in Canada or another country) that contains the same information in place of the specification for the purpose of obtaining a filing date (known as "filing by reference"). The proposed Rules would 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 (e.g. WIPO's Digital Access Service).

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 would 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 proposed Rules would 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 be entitled to claim priority, the application would have to be filed within one year after the filing date of the earlier application. In most cases, the Rules would provide additional time after filing to submit a request for priority. The proposed Rules include the following key changes concerning claims for priority:

(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, would remain largely the same.

The proposed Rules would make it explicit that the Commissioner would 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 proposed Rules would clarify that any translation submitted must not introduce new matter. This provision aims to ensure that Canadians can rely on the English or French version that is provided, as it would be prejudicial to third parties to rely on a translation that is different from the original application submitted in another language.

(4) Compliant patent applications

A patent application consists of many parts, only some of which are required in order to secure a filing date. However, the remaining parts of the application must be submitted within a specified time after the filing date (proposed to be three months after the Commissioner reviews the application and sends a notice requesting the missing information).

The list of parts required in order for an application to comply with the Act and Rules would 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 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 proposed Rules, a declaration of entitlement, stating either that the applicant is the inventor or that the applicant is entitled to apply for the patent, would be required as well. When a declaration is not on file, one would be required to be submitted within 3 months after a notice by the Commissioner, whereas currently applicants have the later of 3 months after a notice by the Commissioner and 12 months after the filing date.

The proposed Rules would set a time limit of three months, after a notice from the Commissioner, to ensure all required parts of the application have been submitted. There would no longer be an additional $200 fee for late completion of the application, as is currently the case. Under the Act, if the required parts of the application have not been submitted within this time limit, the application will be deemed to be abandoned, with a possibility of reinstatement.

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

(5) Representation, agent register and exams

The proposed Rules would prescribe circumstances when an applicant, patentee, or other person (e.g., a person requesting re-examination of a patent) may or 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 communicate with the Office for certain actions. In most cases the current requirement that non-inventor applicants appoint an agent to prosecute an application would be maintained. Key proposed changes include

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

(6) Communicating with the Office

The proposed provisions relating to communications and correspondence aim to simplify communications with the Office and reflect modern practices. The proposed Rules include the following key changes:

(7) Confidentiality and publication

Proposed provisions concerning the publication of applications and their confidentiality prior to the date of publication would change the deadline to withdraw a request for priority in order to affect the date an application is published and the deadline to withdraw an application in order to prevent the application from being published. Proposed provisions also introduce a new limitation providing that once an applicant approves early publication of an application, they could no longer prevent such publication by withdrawing the application.

(8) Examination process and amendments to applications

Changes are proposed to the examination process and to the process for amending applications in order to streamline patent prosecution and reduce pendency in order to bring greater certainty to the marketplace. Various time limits within the examination process would be 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 proposed changes include

(9) Corrections

From time to time, a patent application or a patent can contain 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 in order to be replaced with new provisions in the Rules concerning the correction of "obvious errors." An obvious error means that what was written in the document is obviously not what was intended and that the requested correction is what was obviously intended. This change is intended to provide more flexibility to applicants and patentees, as "clerical error" has been interpreted fairly narrowly by the courts, and to align with corresponding provisions for trademarks and industrial designs.

During the application stage, the proposed Rules would 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 would have to be corrected if a request for the correction is submitted before the day the application is published 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 would have to 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, would have to 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 could 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 a limited time after a patent is issued, it would be possible to correct certain types of errors in the patent:

New provisions would 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 would vary depending on the particular correction being requested in order to balance flexibility for the applicant with timely publication of the pending application. There would not be a 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 grace periods to comply before the application becomes abandoned.

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

(11) Third-party rights and due care

New safety nets for applicants that are required for compliance with the PLT would 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 would be expected to 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 would be introduced that would 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 proposed Rules set out how they would be applied in the cases of failure to pay a maintenance fee for a patent application or a patent that has been granted, to request examination, or to take any other action that results in abandonment of an application:

The second balancing provision would, in certain circumstances, require 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). The due care requirement would only apply as follows:

(12) Transfers, change of name

Changes in the Act will 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 on the file to simply recording the fact of the change. The proposed Rules would set out the specific requirements for recording transfers and name changes.

To align with terminology changes in the Act, changes in ownership would be 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 would only require 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 would also be simplified. Evidence of the name change or supporting documentation would no longer be required.

(13) Fees

Most fee amounts would remain unchanged, as would the current regime allowing applicants who qualify as a "small entity" to pay many fees at a lower rate.

The proposed Rules would set the levels of new late fees introduced in the Act that would be 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 would be $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 would be eliminated. This regime, which is seldom used, would be 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 would be given to successfully enter the national phase by paying those fees in addition to a late fee. This could 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 would 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 could be waived if the request is as a result of an error made by the Office.

The Rules concerning annual maintenance fees for applications would largely remain unchanged, except for the new notification and late fee regime set out in the Act. With respect to PCT applications, it would be clarified that 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 would be required for entry into the national phase.

To streamline the patent granting process, in the new regime the grant of a patent would 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 would 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 would 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 would be retroactively deemed to have expired as of the missed due date, but it is proposed that it could still be revived for up to 18 months after that due date. The proposed Rules would specify the cost of the fees and the due date for payment.

The existing fee per page for sequence listings would be eliminated. However, a printout of the sequence listing would 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, would also be refunded.

(14) Divisional applications

A premise of Canada's patent regime is that a patent can claim only one invention. When a patent application is found to describe more than one invention, the applicant can file a "divisional application" to split off the additional inventions in the original parent application into their own applications. For clarity and increased certainty, proposed new provisions in the Rules concerning the handling of divisional applications would codify administrative details that are currently contained in practice notices. Key elements of the proposed Rules concerning divisional applications include the following:

(15) Patent Cooperation Treaty provisions

The provisions of the proposed Rules concerning the application of the PCT in Canada would remain largely the same as the current Rules, with some amendments for clarity. Key proposed changes include the following:

(16) Transitional provisions

These proposed provisions specify how applications filed and patents granted before the new Rules come into force would 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 proposed transitional provisions would 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 proposed 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 would allow a PCT national phase application that was filed before the coming into force of the proposed 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 proposed Rules are considered an "OUT" under the "One-for-One" Rule.

The proposed Rules are expected to result in an annualized average administrative cost decrease of $210,187, 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. 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 following elements of the proposed Rules would reduce the burden on users of the patent system:

CIPO forecasts that these changes would reduce the burden on applicants by a total of $5,414,539 over the 10-year period mandated in the analysis.

The following elements of the proposed Rules would be expected to increase costs to businesses:

CIPO forecasts that these changes would increase the burden on a subset of applicants by a total of $715,982 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 proposed Rules. This estimate is based on the two consultation sessions that CIPO held to solicit agent feedback on proposed amendments to the Act and on the proposed 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 proposal, 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 would cost patent agents approximately $2.3 million (2012 CY) in equivalent time as a one-time upfront cost.

The proposed 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 $68, while those that are claiming priority would instead only save $45. The increase for those that must show due care, when averaged out over the number of applicants, is negligible at $2 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 proposed amendments are $2.4 million, with annualized savings of $210,187 (using a present value base year of 2012 and a 7% discount rate, as specified in the formulas laid out in the Red Tape Reduction Regulations).

Small business lens

The small business lens does not apply to this proposal, as the proposed 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 received were analyzed and, where practical, adopted into the proposed Rules.

Canadian patent applicants and owners are expected to be supportive of the proposed Rules due to the anticipated reduction of red tape, costs, and complexity of patent application procedures. Patent agents and professional associations (e.g. the Intellectual Property Institute of Canada) have generally expressed support for the proposed 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). This proposal could decrease revenues for patent agents but would equally decrease prosecution costs for applicants. CIPO conducted separate consultations with stakeholders concerning the proposed fee changes, in accordance with the former User Fees Act. Stakeholders were supportive of the proposed fee changes, with some minor comments about a proposed time period to correct errors that CIPO took into consideration in developing the proposed Rules.

Rationale

The proposed Rules would 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 is not currently a member of 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 could simplify this process for applicants by joining the PLT, which would 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 proposed Rules would 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 would 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 handle these tasks (e.g. paying a maintenance fee), would create savings for applicants with respect to agent fees. By making the patent application process less complex, the proposed Rules would 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 would 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 proposed Rules would also introduce various late fees when patent applicants and rights holders do not take action within the appropriate time. They would instead need to take the required action, and pay the associated fee, within a mandated time frame 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 would be such that the impact of the proposed fee structure on the costs incurred by applicants and patent holders would 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 periods of grace, the cost incurred would be reduced from $200 to $150, since the application will no longer be abandoned during this period and they would pay the new late fee rather than the reinstatement fee. For those who address the omission after the new period of grace, once the application has become abandoned, the proposed 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, would be set in a way to ensure that the amount CIPO would 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 of this proposal and concluded that it would improve the situation for all and would 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 would be lowered.

The goals of the proposed 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 (which are very high in the field of patents) has increased over the past 20 years. Implementing this proposal, and simplifying the process for an inventor to seek patent protection, would 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

PROPOSED REGULATORY TEXT

Notice is given that the Governor in Council, pursuant to section 12 footnote a of the Patent Act as it read immediately before October 1, 1989, and section 12 footnote b and subsection 20(18) of the Patent Act footnote c, proposes to make the annexed Patent Rules.

Interested persons may make representations concerning the proposed Rules within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part I, and the date of publication of this notice, and be addressed to Virginie Éthier, Director General, Patent Branch, Canadian Intellectual Property Office, Department of Industry, Place du Portage, Phase 1, 50 Victoria Street, Room C-114, Gatineau, Quebec K1A 0C9 (tel.: 819-997-2949; email: ic.cipoconsultations-opicconsultations.ic@canada.ca)

Ottawa, November 22, 2018

Jurica Čapkun
Assistant Clerk of the Privy Council

TABLE OF PROVISIONS

Patent Rules

Interpretation

PART 1
Rules of General Application

Extension of Time
Communications
Presentation of Documents to Commissioner or Patent Office
Confidentiality
Register of Patent Agents
Appointment of Common Representative
Appointment of Patent Agents
Representation
Government-owned Patents

Presentation of Application for a Patent

General
Petition
Inventors and Entitlement
Abstract
Description
Sequence Listings
Drawings
Claims
Non-compliant Application for a Patent
Reference to Previously Filed Application for a Patent
Maintenance Fees — Application for a Patent
Filing Date
Addition to Specification or Addition of Drawing
Request for Priority
Restoration of Priority
Request for Examination
Examination
Divisional Applications
Deposit of Biological Material
Amendment to Specification and Drawings
Corrections
Maintaining Rights Accorded by a Patent
Reissue
Disclaimer of Any Part of a Patent
Re-examination
Registration of Documents and Recording of Transfers
Third-party Rights
Abuse of Rights Under Patents
Abandonment and Reinstatement
Fees for Services
Refund and Waiver of Fees

PART 2
Patent Cooperation Treaty

Definitions
Application of Treaty
International Phase
National Phase

PART 3
Transitional Provisions

DIVISION 1
Interpretation
DIVISION 2
Rules in Respect of Category 1 Applications
DIVISION 3
Rules in Respect of Category 2 Applications
DIVISION 4
Rules in Respect of Category 3 Applications
DIVISION 5
Rules Applicable to Certain Patents
DIVISION 6
Other Rules

PART 4
Repeal and Coming into Force

Repeal

Coming into Force

236 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.

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 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,

PART 1

Rules of General Application

Extension of Time

Time period 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 dependant 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 113(1), paragraph 113(5)(a) or (c) or 155(1)(c), subsection 155(2) or subparagraph 155(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

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:

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, deemed 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, deemed 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

Minimum content of written communications — applications

9 (1) Written communications intended for the Commissioner or the Patent Office in respect of an application for a patent must include the name of the applicant and the application number, or if the application number is not known, information allowing the application to be identified.

Minimum content of written communications — patents

(2) Written communications intended for the Commissioner or the Patent Office in respect of a patent 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

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

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 sent by the Commissioner or by the Patent Office to that person within the four-month period before the date of the refusal, and to which no reply has been made by that date, is deemed not to have been sent to the applicant or patentee.

Communication sent before specific refusal

(2) If the Commissioner refuses to recognize a person as a patent agent or an attorney under section 16 of the Act in respect of a patent or an application for a patent, any communication respecting that patent or that application sent by the Commissioner or by the Patent Office to that person within the four-month period before the date of the refusal and to which no reply has been made by that date is deemed not to have been sent to the applicant or patentee.

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 sent by the Commissioner or by the Patent Office to that person within the four-month period before the date of the removal and to which no reply has been made by that date is deemed not to have been sent to the patentee or applicant.

Acknowledgment by Commissioner

12 Written communications submitted to the Commissioner in respect of a filing under section 34.1 of the Act and written communications 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 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

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

Translation — previously filed application

(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 not entirely in English or not entirely in French, and that on its face appears to be a description, the applicant must submit an English or French translation of that document to the Commissioner.

Notice requiring translation

(4) If an applicant does not submit a translation required by subsection (2) on or before the day on which they submit or make available the copy referred to in that subsection, or does not submit a translation required by subsection (3) before the filing date of the application for a patent, the Commissioner must by notice require the applicant to submit an English or French translation of the document to the Commissioner not later than two months after the date of the notice.

Translation replaces specification and drawings

(5) The specification and 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 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.

Translation replaces original

(6) A translation submitted under subsection (3), or submitted after the notice referred to in subsection (4) is sent, of a document that on its face appears to be a description replaces the translated document.

Restriction

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

Non-application of subsection 3(1)

(8) Subsection 3(1) does not apply in respect of the times 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

Prescribed date — withdrawal of request for priority

17 For the purposes of subsection 10(4) of the Act, if a request for priority with respect to a particular previously regularly filed application for a patent is withdrawn, the prescribed date is the earlier of

Prescribed date — withdrawn applications

18 For the purposes of subsection 10(5) of the Act, the prescribed date is the earlier of

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:

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 date 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 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

Maintaining name on register

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

Removal from register

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

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

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

Common representative by default — application for patent

(4) Subject to subsection (8), in respect of an application for a patent — other than a divisional application — in respect of 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:

Common representative by default — divisional application

(5) Subject to subsection (8), 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:

Common representative by default — patent

(6) Subject to subsection (8), in respect of a patent — other than a reissued patent — in respect of 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

(7) Subject to subsection (8), in respect of a reissued patent, in respect of 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 time of reissue is deemed to be appointed as the common representative in respect of the reissued patent.

Common representative by default — transfer

(8) 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 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:

Revocation of appointment

(9) 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 (8).

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

Manner of appointment of patent agent by applicant or patentee

(3) The appointment of a patent agent by an applicant for a patent or a patentee must be made

Manner of appointment of patent agent 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

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

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) If a patent agent 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, the agent must appoint a patent agent who resides in Canada as an associate patent agent in respect of that business.

Manner of appointment of associate patent agent

(3) The appointment of an associate patent agent must be made

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

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

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,

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 155(4) of these Rules, or complying with the requirements of subsection 155(1), (2) or (3) of these Rules,

Exception

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

Exceptions

(4) For the purposes of submitting a request to record a name change under section 126,

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 155(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,

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,

Reissue or 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,

Clarification

38 For greater certainty, sections 33 to 37 do not apply to the act of signing

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:

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 authorized in writing by the Minister of National Defence, or an officer of the Canadian Forces 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 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

Small entity status condition

(2) The small entity status condition is that

Small entity declaration

(3) A small entity declaration must

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, 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

Margins to be blank

(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, specification or drawing must be identified as such.

Petition

Title and content

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

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

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, specification or 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, in the following manner and order,

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.

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.

Deemed withdrawal of application

(2) If an applicant fails to comply with a notice given under subsection 27(7) of the Act, the application for a patent is deemed 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

Prescribed requirements

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

Non-application of subsection 3(1)

(3) Subsection 3(1) does not apply in respect of the time 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,

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

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

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

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

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),

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, specification or drawings included in that application, before the earlier of

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 an application for a patent (the "pending application") 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

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 particular 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 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 or for Canada — the applicant must, not later than the day referred to in subsection (2), with respect to each previously regularly filed application

Date

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

Withdrawal of request for priority

(3) If a request for priority in respect of a particular 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.

Notice

(4) If the applicant does not comply with the requirements of paragraph (1)(a) or (b) within the period 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.

Deemed compliance

(5) If the applicant complies with the requirements of paragraph (1)(a) or (b) after the period 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 deemed to have complied with subsection (1).

Non-compliance

(6) If the applicant does not comply with the requirements of paragraph (1)(a) or (b) in respect of a particular 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 deemed to have been withdrawn at the end of that time in respect of that previously regularly filed application unless

Deemed compliance

(7) If the conditions set out in paragraphs (6)(a) and (b) are met in respect of a particular previously regularly filed application for a patent, the applicant is deemed 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 particular previously regularly filed application for a patent, and if the patent office where that application was filed provides the applicant — or, if a patent has been issued on the basis of the pending application, the patentee — with the copy and certificate referred to in paragraph (1)(a), the applicant for a patent or the patentee must submit the copy and certificate to the Commissioner not later than two months after the day on which they were received by the applicant or patentee.

Non-compliance with subsection (8)

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

Deemed compliance — divisional application

(10) The applicant of a divisional application is deemed to have complied with subsection (1) in respect of a particular 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 deemed to have complied with subsection (1) in respect of that previously regularly filed application.

Deemed withdrawal — request for priority

(11) A request for priority in respect of a divisional application is deemed to have been withdrawn in respect of a particular 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, deemed 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 request 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

Non-compliance

(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 deemed 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 Priority

Prescribed time

77 (1) For the purposes of paragraph 28.4(6)(b) of the Act, the prescribed time is

Requirements

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

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

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

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

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

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

Notice regarding 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

Notice regarding 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 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,

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 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 within 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

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),

Notice of allowance deemed not sent

(17) A notice of allowance that is sent under subsection (1), (6) or (10) is deemed 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

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 An application for a patent is a divisional application only if on its presentation date

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

Clarification

91 For greater certainty, the specification and drawings contained in a divisional application on its presentation date must not, unless it is admitted in the specification that the matter is prior art with respect to the application, contain matter that

Actions deemed 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 action is deemed to have been taken, in respect of the divisional application, on the date the action was taken in respect of the original application:

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:

Non-application of subsection 3(1)

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

Date of deposit of biological material to be included

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 deemed never 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

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 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 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 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 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 drawings was intended and that nothing other than the proposed amendment could have been intended.

After rejection

101 If an application for a patent is rejected by an examiner under subsection 86(3), the specification and drawings contained in the application must not be amended by the applicant after the date prescribed by subsection 86(8), except if

Amendment to specification or drawings

102 An amendment by the applicant to the specification or 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.

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

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

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.

Error in application number of original application

107 (1) An error in the application number of the original application that is identified in the petition of a divisional application must be corrected by the Commissioner on the request of the applicant if the request is made not later than three months after the presentation date of that divisional application.

Date of correction

(2) A correction made under subsection (1) is deemed to have been made on the day on which the petition was submitted.

Non-application of subsection 3(1)

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

Obvious error made by Commissioner

108 (1) The Commissioner may, on his or her own initiative within six 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 drawings referenced in the patent if, from the documents that were in the possession of the Patent Office on that day, it is obvious both that something other than what appears in the patent, specification or 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 deemed to have been made on the day on which the patent was issued.

Obvious error made by re-examination board

109 (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 both 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 deemed to have been made on the day on which the certificate was issued.

Correction on request of patentee

110 (1) On the request of the patentee, made in accordance with subsection (2), not later than six 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

Contents of request

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

Notice

(3) If a request is made under subsection (1) during the six-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 deemed to have been made on the day on which the patent was issued.

Non-application of subsection 3(1)

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

Certificate

112 (1) If the Commissioner corrects an error under section 108, 109 or 110, 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 both 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

113 (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,

Small entity status condition

(2) The small entity status condition is that

Small entity declaration

(3) A small entity declaration must

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 twelve-month period preceding the day on which the patent was issued but that 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

Dates

114 For the purposes of subsection 46(1) of the Act, the prescribed dates are

Clarification

115 For greater certainty, for the purposes of sections 113 and 114, 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

116 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

117 (1) For the purposes of paragraph 46(5)(a) of the Act, the prescribed time is any time within 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 referred to in subsection (1).

Additional prescribed fee

118 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

119 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

120 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

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

Prescribed fee

122 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

123 (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

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 met if 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

Numbering of claims

124 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

125 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

126 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

127 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

128 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

129 For the purposes of subsections 55.11(2) and (3) of the Act, the prescribed periods are

Abuse of Rights Under Patents

Application fee

130 (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

131 (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:

Non-application of subsection 3(1)

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

Abandonment and Reinstatement

Time to reply

132 (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

133 For the purposes of subsection 73(2) of the Act, an application for a patent is deemed to be abandoned if

Prescribed time — request for reinstatement

134 (1) For the purposes of paragraph 73(3)(a) of the Act, in respect of a particular failure to take an action, the prescribed time begins on the day on which the application for a patent is deemed, as a result of that failure, to be abandoned and ends 12 months after that day.

Request for reinstatement in respect of 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

Non-application of subsection 3(1)

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

Prescribed fee

135 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

136 (1) Subparagraph 73(3)(a)(ii) and paragraph 73(3)(b) of the Act do not apply

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

137 (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

138 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

139 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

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

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

141 (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

142 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

143 (1) Subject to subsection (2) and subsections 155(11) and (12), the provisions of the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions apply in respect of

Exception

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

International Phase

Receiving Office

144 The Commissioner must act as a receiving Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions, 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.

Application in English or French

145 An international application that is filed with the Commissioner must be entirely in English or entirely in French.

International Searching Authority and International Preliminary Examining Authority

146 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

147 (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

148 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

149 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

150 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

151 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

152 The amount of the additional fee for 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

153 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

154 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

155 (1) An applicant who designates Canada in an international application must, not later than 30 months after the priority date,

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

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 deemed to have complied with those requirements within that period if

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 the two-month period 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 amount of the small entity fee was paid.

Correction of error in name of applicant

(6) An error in the name of an applicant in a PCT national phase application that arises from inadvertence, accident or mistake, without any fraudulent or deceptive intention, must be corrected by 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

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 deemed never to have complied

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

156 (1) If an international application becomes a PCT national phase application, the application is deemed, beginning on its national phase entry date, to be an application for a patent filed in Canada and, subject to sections 158 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 209, the national phase entry date of an application for a patent is.

Small entity declaration

(3) For the purpose of subsection (2), an applicant is not considered to have paid the fee referred to in subparagraph 155(1)(c)(i), paragraph 155(2)(a) or clause 155(3)(a)(iii)(A) or 155(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 155(1)(b), the translation replaces the text of the PCT national phase application.

Restriction

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

Clarification

157 (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,

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 deemed open to public inspection

158 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 deemed 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

159 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

160 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.

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

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

163 An international application is deemed 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 155 was not paid.

PART 3

Transitional Provisions

DIVISION 1

Interpretation

Definitions

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

Filing date

(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 was forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, and was 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,

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, and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules and if a notice of allowance was not sent by the Commissioner 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,

Date

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

Notice — 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 that 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.

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 and in respect of which the rejection has not been withdrawn.

Non-application of subsection 3(1)

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

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 drawings contained in the application must not be amended after the date prescribed by subsection 172(4) of these Rules, except if

Reference to section 38.2 of Act

174 The reference to "section 38.2 of the Act" in paragraph 91(b), in relation to a category 1 application, is to be read as a reference to "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, respectively, as a reference to "section 179 of the former Rules" and "subsection 184(3) of the former Rules".

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 133 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 the 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 was deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before the coming-into-force date, and was 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 he or she 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 withinù the time referred to in subsection (1).

Exception

(4) In the case of 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 or for 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:

Non-compliance

(2) If the applicant does not comply with the requirements of paragraph (1)(a) or (b) in respect of a particular 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 deemed to have been withdrawn at the end of that time in respect of that previously regularly filed application unless

Deemed compliance

(3) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a particular previously regularly filed application for a patent, the applicant is deemed 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 particular previously regularly filed application for a patent and if the patent office where that application was filed provides the applicant for a patent — or, if a patent has been issued on the pending category 2 application, the patentee — with 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 two months after the day on which they were received by the applicant or patentee.

Non-compliance with subsection (4)

(5) If the applicant or patentee fails to comply with subsection (4) in respect of a particular previously regularly filed application for a patent, the request for priority is deemed 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

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, and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules and if a notice of allowance was not sent by the Commissioner 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 item 13 of Schedule 2 not later than four months after the date of that notice.

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

Date

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

Notice — application found allowable after specific 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 must require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of that notice.

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 and in respect of which the rejection has not been withdrawn.

Non-application of subsection 3(1)

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

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 drawings contained in the application must not be amended after the date prescribed by subsection 184(4) of these Rules, except if

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

Presentation date

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

Application deemed abandoned

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

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 133 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 was deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before the coming-into-force date, and was 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 he or she 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, made in respect of a category 3 application, has been withdrawn with respect to a particular previously regularly filed application for a patent before the coming-into-force date, the prescribed date is, despite section 17, the later of

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

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

Non-application of subsection 3(1)

(4) Subsection 3(1) does not apply to the time limits set out 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 or for 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:

Non-compliance

(2) If the applicant does not comply with the requirements of paragraph (1)(a) or (b) in respect of a particular 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 deemed 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,

Deemed compliance

(3) If the conditions set out in paragraphs (2)(a) and (b) are met by the applicant in respect of a particular previously regularly filed application for a patent, the applicant is deemed 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 by the applicant in respect of a particular previously regularly filed application for a patent and if the patent office where that application was filed provides the applicant — or, if a patent has been issued on the pending category 3 application, the patentee — with 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 two months after the day on which they were received by the applicant or patentee.

Non-compliance with subsection (4)

(5) If the applicant or patentee fails to comply with subsection (4) in respect of a particular previously regularly filed application for a patent, the request for priority is deemed 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

Non-application of subsection 3(1)

(2) Subsection 3(1) does not apply to the time limits set out in 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

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 a notice of allowance was not sent 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 item 13 of Schedule 2 not later than four months after the date of that notice.

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,

Date

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

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 must require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of that notice.

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 and in respect of which the rejection has not been withdrawn.

Non-application of subsection 3(1)

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

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 drawings contained in the application must not be amended after the date prescribed by subsection 199(4) of these Rules, except if

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 deemed to be a request referred to in section 95 of these Rules.

Independent expert deemed to be nominated

(2) An independent expert who was nominated under subsection 109(1) of the former Rules is deemed 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

Presentation date

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

Application deemed abandoned

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

DIVISION 5
Rules Applicable to Certain Patents

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

204 (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

205 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

206 (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 — if he or she 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

207 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 113(1) is to be read as a reference to "set out in item 1 of Schedule 3".

Patent not invalid

208 (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

209 (1) In these Rules, if the applicant of an international application for which the international filing date, as defined in section 142, 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 142, precedes the coming-into-force date has, on or after the coming-into-force date, complied with the requirements of subparagraphs 155(3)(a)(ii) to (iv) and paragraph 155(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 155(3)(a)(iii)(A) or 155(3)(b)(i)(A) or (ii)(A) until the small entity declaration has been filed.

Extension of period — section 207

210 The Commissioner is authorized to extend the time for the payment of a fee referred to in subsection 113(1), as modified by section 207 — 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

211 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 prescribed by former Rules

212 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

213 (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-month period" in subsections 11(1) and (2) is to be read as a reference to "six-month period" if the refusal to recognize the person to whom that communication is sent as a patent agent or an attorney occurred within the six-month period following the coming-into-force 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-month period" in subsection 11(3) is to be read as a reference to "six-month period" if the name of the person to whom that communication is sent is removed from the register of patent agents within the six-month period following the coming-into-force date.

Documents not in English or French

214 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

215 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

216 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

217 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),

Representation — patent granted before coming-into-force date

218 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),

Representation — patent reissued before coming-into-force date

219 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),

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

220 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 that 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,

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

221 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,

Non-application of section 37

222 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

223 (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 deemed to be filed in accordance with subsection 44(3) or 113(3) of these Rules, respectively, 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 deemed to be filed in accordance with subsection 123(4) of these Rules.

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

224 (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

Exception

(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

225 (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 may, instead of complying with the requirements of section 54, comply with

Exception

(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

226 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 may, instead of complying with the requirements of section 54, comply with the requirements of section 37 of the former Rules.

Clarification

227 For greater certainty, the dates prescribed by sections 69 and 114 do not include any dates that precede the coming-into-force date.

Final fee paid before coming-into-force date

228 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

Notice of allowance deemed not sent

229 For greater certainty, a notice of allowance is deemed never to have been sent if it was deemed never to have been sent before the coming-into-force date.

Non-application of section 89

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

Periods referred to in section 129

231 For greater certainty, the periods prescribed by paragraph 129(a), (b) or (e) do not include any period that begins less than six months after the coming-into-force date and the periods prescribed by paragraph 129(c) do not include any period that begins less than 12 months after the coming-into-force date.

Publication in Canadian Patent Office Record

232 For the purposes of paragraph 131(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 155(3)(a)(i)

233 Subparagraph 155(3)(a)(i) does not apply in respect of an international application for which the international filing date, as defined in section 142, precedes the coming-into-force date.

Exception to section 162

234 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

235 The Patent Rules footnote 1 are repealed.

Coming into Force

S.C. 2015, c. 36

236 These Rules come into force on the day on which section 53 of the Economic Action Plan 2015 Act, No. 1, comes into force, but if they are registered after that day, they come into force on the day on which they are registered.

SCHEDULE 1

(Sections 1, 119 and 121)

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,

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, 110, 113, 116, 118, 120, 122, 123, 125 to 128, 130, 133, 135, 137 to 141, 148 to 152, 155, 171, 184, 187, 199, 203, 207, 211, 212 and 228)

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
  • (ii) standard fee
  • 50.00
  • 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
  • (ii) standard fee
  • 100.00
  • 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
  • (ii) standard fee
  • 125.00
  • 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
  • (ii) standard fee
  • 225.00
  • 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
  • (ii) standard fee
  • 100.00
  • 200.00
  • (b) in any other case,
 
  • (i) small entity fee
  • (ii) standard fee
  • 400.00
  • 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
  • (ii) standard fee
  • 150.00
  • 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 deemed 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 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 155(4) of these Rules 150.00

PART 5

Fees in Respect of Patents
Item

Column 1

Description

Column 2

Amount ($)

24 Fee for requesting correction of an error under subsection 110(1) of these Rules, 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
  • (ii) standard fee
  • 50.00
  • 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
  • (ii) standard fee
  • 100.00
  • 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
  • (ii) standard fee
  • 125.00
  • 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
  • (ii) standard fee
  • 225.00
  • 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 patentor 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 onj more than one physical medium, for each physical medium requested other than the first
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 207)

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
  • (ii) standard fee
  • 50.00
  • 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
  • (ii) standard fee
  • 100.00
  • 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
  • (ii) standard fee
  • 125.00
  • 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
  • (ii) standard fee
  • 225.00
  • 450.00