Patent Rules

SOR/96-423

Registration 28 August, 1996

PATENT ACT

Patent Rules

P.C. 1996-1350 28 August, 1996

His Excellency the Governor General in Council, on the recommendation of the Minister of Industry and the Treasury Board, pursuant to sections 10 and 12^a, subsections 20(18), 27(2) and 28(1), sections 35, 46 and 48 and subsections 73(1) and (2) of the Patent Act as it read immediately before October 1, 1989, and sections 8.1^b, 10^c and 12^d, subsection 27(2)^e, section 27.1^f, subsections 28(1), 28.4(2) and (3)^g, 35(1)^h and 38.1(1)ⁱ, sections 46^j and 48^k and subsections 73(1) and (2)^l of the Patent Act, hereby makes the annexed Rules respecting the Patent Act.

^a R.S., c. 33 (3rd Supp.), s. 3^b S.C. 1993, c. 15, s. 27^c S.C. 1993, c. 15, s. 28^d S.C. 1993, c. 15, s. 29^e S.C. 1993, c. 15, s. 31^f S.C. 1993, c. 15, s. 32^g S.C. 1993, c. 15, s. 33^h R.S., c. 33 (3rd Supp.), s. 12ⁱ S.C. 1993, c. 15, s. 41^j S.C. 1993, c. 15, s. 43^k S.C. 1993, c. 15, s. 44^l S.C. 1993, c. 15, s. 52

RULES RESPECTING THE PATENT ACT

SHORT TITLE

1. These Rules may be cited as the Patent Rules.

INTERPRETATION

2. In these Rules,

"Act" means the Patent Act; (Loi)

"amino acid sequence" means

(a) an unbranched sequence of four or more contiguous amino acids, and

(b) any peptide or protein that includes abnormal linkages, cross links and end caps, non-peptidyl bonds or the like; (séquence d'acides aminés)

"amino acids" means those L-amino acids commonly found in naturally occurring proteins and such amino acids when they have been modified; (acides aminés)

"application" means, except as otherwise provided by these Rules, an application for a patent, but does not include an application for the reissue of a patent; (demande)

"associate patent agent" means a patent agent appointed by another patent agent in accordance with section 21; (coagent)

"authorized correspondent" means, in respect of an application,

(a) where the application was filed by the inventor, where no transfer of the inventor's right to the patent or of the whole interest in the invention has been registered in the Patent Office and where no patent agent has been appointed

(i) the sole inventor,

(ii) one of two or more joint inventors authorized by all such inventors to act on their joint behalf, or

(iii) where there are two or more joint inventors and no inventor has been authorized in accordance with subparagraph (ii), the first inventor named in the petition or, in the case of PCT national phase applications, the first inventor named in the international application,

(b) where an associate patent agent has been appointed or is required to be appointed pursuant to section 21, the associate patent agent, or

(c) where paragraphs (a) and (b) do not apply, a patent agent appointed pursuant to section 20; (correspondant autorisé)

"Budapest Treaty" means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, done at Budapest on April 28, 1977, to which Canada is a party; (Traité de Budapest)

"Canadian Patent Office Record" means the Canadian Patent Office Record referred to in subsection 78(3) of the Act; (Gazette du Bureau des brevets)

"claims" means claims referred to in subsection 27(4) of the Act or in subsection 34(2) of the Act as it read immediately before October 1, 1989; (revendications)

"description" means the part of a specification other than the claims, referred to in section 80; (description)

"divisional application" means an application filed in accordance with subsection 36(2) or (2.1) of the Act; (demande complémentaire)

"international application" means an application filed under the Patent Cooperation Treaty; (demande internationale)

"international depositary authority" means an international depositary authority within the meaning of Article 2(viii) of the Budapest Treaty; (autorité de dépôt internationale)

"nucleotide sequence" means an unbranched sequence of 10 or more contiguous nucleotides; (séquence de nucléotides)

"nucleotides" means those nucleotides that can be represented using the symbols set out in section 115 and such nucleotides when they have been modified; (nucléotides)

"patent agent" means any person or firm whose name is entered on the register of patent agents pursuant to section 15; (agent de brevets)

"Patent Cooperation Treaty" means the Patent Cooperation Treaty, done at Washington on June 19, 1970, including any amendments, modifications and revisions made from time to time to which Canada is a party; (Traité de coopération en matière de brevets)

"Patent Office" means the Patent Office established by section 3 of the Act; (Bureau des brevets)

"PCT national phase application" means an international application in respect of which the applicant has complied with the requirements of subsection 58(1) and, where applicable, subsection 58(2); (demande PCT à la phase nationale)

"period of grace" means a period of grace within the meaning of Article 5^bis(1) of the Paris Convention for the Protection of Industrial Property, made on March 20, 1883 and any amendments and revisions to which Canada is a party. (délai de grâce)

"petition" means a petition referred to in section 27 of the Act; (pétition)

"Regulations under the Budapest Treaty" means the Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure; (Règlement d'exécution du Traité de Budapest)

"Regulations under the PCT" means the Regulations under the Patent Cooperation Treaty; (Règlement d'exécution du PCT)

"sequence listing" means, in respect of an invention, a part of the description describing nucleotide or amino acid sequences and giving other related information required by sections 113 to 130; (listage des séquences)

"small entity" in respect of an invention, means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that

(a) has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees, or

(b) has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity that employs 50 or fewer employees or that is a university, and has knowledge of any subsequent transfer or license of, or of any subsisting contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees; (petite entité)

"specification" means a specification of an invention in accordance with subsections 27(3) and (4) of the Act; (mémoire descriptif)

"the Act as it read immediately before October 1, 1989" means the provisions of the Patent Act as it read immediately before October 1, 1989 subject, where applicable, to any amendments to the Patent Act coming into force

(a) after October 1, 1989 and before October 1, 1996, or

(b) after October 1, 1996; (Loi dans sa version antérieure au 1^er octobre 1989)

"transfer" means a change in ownership of a patent, of an application or of an interest in an invention and includes an assignment. (transfert) SOR/99-291, s. 1; SOR/2003-208, s. 1.

PART I
RULES OF GENERAL APPLICATION

Fees

3. Where a person takes any proceeding or requests that any service be rendered by the Commissioner or by the Patent Office, the person shall pay to the Commissioner the appropriate fee, if any, set out in Schedule II for that proceeding or service.

3.1 (1) Subject to subsection 6(1), if, before the expiry of a time limit for paying a fee set out in Schedule II, the Commissioner receives a communication in accordance with which a clear but unsuccessful attempt is made to pay the fee, the fee shall be considered to have been paid before the expiry of the time limit if

(a) the amount of the fee that was missing is paid before the expiry of the time limit;

(b) if a notice is sent in accordance with subsection (2), the amount of the fee that was missing, together with the late payment fee set out in item 22.1 of Schedule II, are paid before the expiry of the two-month period after the date of the notice; or

(c) if a notice is not sent, the amount of the fee that was missing, together with the late payment fee set out in item 22.1 of Schedule II, are paid before the expiry of the two-month period after the day on which the communication was received by the Commissioner.

(2) Subject to subsection 6(1) and unless the person making the communication did not provide information that would allow them to be contacted, if the Commissioner has received a communication in the circumstances referred to in subsection (1), the Commissioner shall, by notice to the person who made the communication, request payment of the amount of the fee that was missing together, if applicable, with the late payment fee referred to in subsection (1).

(3) Subsections (1) and (2) do not apply in respect of the fees set out in items 9 to 9.4 and 22.1 of Schedule II. SOR/2003-208, s. 2.

4. (1) The Commissioner shall, upon request, refund fees in accordance with subsections (2) to (15).

(2) Where an application is not accepted by the Commissioner because it does not meet the requirements referred to in section 93, 147 or 178 entitling it to a filing date, the fee paid shall be refunded, less $25.

(3) Where an application is submitted to the Commissioner by mistake and the Commissioner is notified before the application has been assigned a number that the application is to be withdrawn, the fee paid on the withdrawn application shall be refunded, less $25.

(4) Where, through inadvertence, more than one application is filed for the same invention, by or on behalf of the same person, and where any one of such applications is withdrawn before examination, any fee paid on the withdrawn application shall be refunded, less one-half of the filing fee.

(5) Where the Commissioner sends a notice to the applicant pursuant to subsection 94(1) and the applicant does not comply with the requisition set out in that notice, any fee paid pursuant to that subsection shall be refunded, less $25.

(6) Where a fee is paid by an applicant or a patentee on the basis that it is not a small entity, no refund shall be made solely for the reason that it is later determined that it was at the time of payment a small entity.

(7) Where a fee to register any document relating to a patent or an application is received and the document is not submitted, the fee paid shall be refunded.

(8) Where a request for the reinstatement of an abandoned application is received and the applicant does not comply with the requirements for reinstatement, any fee paid for reinstatement shall be refunded, less one-half of the reinstatement fee.

(9) Where a request for the reinstatement of an abandoned application is refused, any fee paid for reinstatement shall be refunded.

(10) A final fee referred to in subsection 30(1) or (5) shall be refunded if

(a) it is received during the prosecution of an application and the application is subsequently refused or abandoned;

(b) a request for its return is received before the start of technical preparations for issue; or

(c) it is submitted by a person who is not the authorized correspondent.

(11) Where a candidate for the Patent Agents' Examination withdraws the candidate's name by written notice to the Commissioner received

(a) before March 1 of the year of the examination, the fee paid shall be refunded; or

(b) on or after March 1 of the year of the examination and before the date of the examination, the fee paid shall be refunded, less $25.

(12) When the fee received with a request for a copy of a document is insufficient and the request is cancelled, the fee paid shall be refunded.

(13) When an application referred to in section 68 of the Act and presented under subsection 65(1) of the Act is not advertised in the Canadian Patent Office Record, any fee paid for advertising the application shall be refunded.

(14) Subject to subsections (2) to (13) and (15), any fee paid by mistake for copies of a document that the Patent Office does not have or paid in excess of the fee prescribed shall be refunded.

(15) No refund shall be made if the amount of the refund amounts to less than $1 or if the refund results from the exchange on foreign currency.

Communications

5. (1) Correspondence intended for the Commissioner or the Patent Office shall be addressed to the "Commissioner of Patents".

(2) Correspondence addressed to the Commissioner may be physically delivered to the Patent Office during ordinary business hours of the Office and shall be considered to be received by the Commissioner on the day of the delivery.

(3) For the purposes of subsection (2), where correspondence addressed to the Commissioner is physically delivered to the Patent Office outside of its ordinary business hours, it shall be considered to have been delivered to the Office during ordinary business hours on the day when the Office is next open for business.

(4) Correspondence addressed to the Commissioner may be physically delivered to an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered, during ordinary business hours of that establishment, and

(a) where the delivery is made to the establishment on a day that the Patent Office is open for business, the correspondence shall be considered to be received by the Commissioner on that day; and

(b) where the delivery is made to the establishment on a day that the Patent Office is closed for business, the correspondence shall be considered to be received by the Commissioner on the day when the Office is next open for business.

(5) For the purposes of subsection (4), where correspondence addressed to the Commissioner is physically delivered to an establishment outside of ordinary business hours of the establishment, it shall be considered to have been delivered to that establishment during ordinary business hours on the day when the establishment is next open for business.

(6) Correspondence addressed to the Commissioner may be sent at any time by electronic or other means of transmission specified by the Commissioner in the Canadian Patent Office Record.

(7) For the purposes of subsection (6), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is open for business, it shall be considered to be received by the Commissioner on that day.

(8) For the purposes of subsection (6), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is closed for business, it shall be considered to be received by the Commissioner on the day when the Office is next open for business. SOR/99-291, s. 2.

6. (1) Except as provided by the Act or these Rules, for the purpose of prosecuting or maintaining an application the Commissioner shall only communicate with, and shall only have regard to communications from, the authorized correspondent.

(2) For the purpose of appointing, in respect of an application, a patent agent or an associate patent agent or of revoking the appointment of a patent agent or an associate patent agent, the Commissioner shall have regard to communications from any of the applicant, the patent agent and the associate patent agent.

(3) Interviews with members of the Patent Office staff in respect of an application may be held during the business hours of the Patent Office by

(a) the authorized correspondent;

(b) the applicant, with the permission of the authorized correspondent; or

(c) an appointed non-resident patent agent, with the permission of the associate patent agent.

7. Communications addressed to the Commissioner in relation to an application shall include

(a) the name of the applicant or inventor;

(b) the application number, if one has been assigned by the Patent Office; and

(c) the title of the invention.

8. (1) Subject to subsection (2), communications addressed to the Commissioner in relation to an application or a patent shall relate to one application or patent only.

(2) Subsection (1) does not apply in respect of communications relating to

(a) a transfer, a licence or a security interest;

(b) a change in the name or address of an applicant, a patentee, a patent agent, an associate patent agent or a representative for service; or

(c) fees to maintain an application in effect or to maintain the rights accorded by a patent.

9. An authorized correspondent shall provide the Commissioner with its complete address and any communication sent by the Commissioner or by the Patent Office to the authorized correspondent at that address shall be considered to be sent on the date that it bears.

10. Communications addressed to the Commissioner pursuant to section 34.1 of the Act and communications addressed to the Commissioner with the stated or apparent intention of protesting against the granting of a patent shall be acknowledged, but, subject to section 10 of the Act or of the Act as it read immediately before October 1, 1989, no information shall be given as to the action taken.

11. Except as provided by section 11 of the Act, the Commissioner and the Patent Office shall not provide any information respecting an application that is not open to public inspection to any person other than the authorized correspondent, the applicant or a person authorized by the authorized correspondent or the applicant to receive the information.

Entry of Patent Agents on Register of Patent Agents

12. (1) Subject to subsection 14(2), for the purpose of having their name entered on the register of patent agents, a person is eligible to sit for the qualifying examination for patent agents referred to in section 14 if, on March 31 of the year in which the person proposes to sit for the examination,

(a) the person resides in Canada and has been employed for a period of at least 12 months on the examining staff of the Patent Office; or

(b) the person resides in Canada and has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications, for a period of at least 12 months.

(2) A person referred to in paragraph (l)(b) shall file with the Commissioner an affidavit or statutory declaration setting out the person's experience and responsibilities in the area of patent law and practice.

13. (1) An Examining Board is hereby established for the purpose of preparing, administering and marking the qualifying examination for patent agents referred to in section 14.

(2) The members of the Examining Board shall be appointed by the Commissioner, and the chairperson and at least three other members shall be employees of the Patent Office and at least five members shall be patent agents nominated by the Intellectual Property Institute of Canada. SOR/2003-208, s. 3.

14. (1) The Examining Board shall administer a qualifying examination for patent agents every year in the month of April.

(2) The Commissioner shall give notice in the Canadian Patent Office Record of the date of the qualifying examination and shall indicate in the notice that any person who proposes to sit for the examination shall, within the time specified in the notice, notify the Commissioner in writing and pay the fee set out in item 34 of Schedule II.

(3) The Commissioner shall designate the place or places where the qualifying examination is to be held and shall notify by registered mail, at least two weeks before the date of the examination, every person who has complied with the requirements set out in subsection (2).

15. The Commissioner shall enter on the register of patent agents, on payment of the fee set out in item 33 of Schedule II, the name of

(a) any resident of Canada who has demonstrated a good knowledge of Canadian patent law and practice by passing the qualifying examination for patent agents relating to patent law and practice;

(b) any resident of a country other than Canada who is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

(c) any firm, if the name of at least one member of the firm is entered on the register.

16. (1) During the period beginning on January 1 and ending on March 31 in every year

(a) every person who is a resident of Canada and whose name is entered on the register of patent agents shall pay the fee set out in item 35 of Schedule II in order to maintain the person's name on the register;

(b) every person who is a resident of another country and whose name is entered on the register of patent agents shall, in order to maintain the person's name on the register, file a statement, signed by the person, indicating the person's country of residence and stating that the person is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

(c) every firm whose name is entered on the register of patent agents shall, in order to maintain its name on the register, file a statement indicating each member of the firm whose name is entered on the register, signed by a duly authorized member of the firm whose own name is entered on the register.

(2) The Commissioner shall send to every patent agent who fails to comply with subsection (1) a notice requiring compliance within the three-month period after the date of the notice.

(3) The Commissioner shall remove from the register of patent agents the name of any patent agent who

(a) fails to comply with a notice sent pursuant to subsection (2); or

(b) no longer meets the requirements by virtue of which the name of the patent agent was entered on the register.

(4) The removal by the Commissioner of the name of a person from the register of patent agents constitutes a refusal to recognize that person as a patent agent for the purposes of section 16 of the Act.

17. Where the name of a patent agent has been removed from the register of patent agents pursuant to subsection 16(3), it may be reinstated on the register if the patent agent

(a) applies to the Commissioner, in writing, for reinstatement within the one-year period after the date on which the name of the patent agent was removed from the register;

(b) pays the fee set out in item 36 of Schedule II for applying for reinstatement on the register;

(c) pays the fee referred to in paragraph 16(1)(a) for maintaining the name of the patent agent on the register or files the statement referred to in paragraph 16(1)(b) or (c), as the case may be; and

(d) meets the requirements referred to in section 15 for entry of the name of the patent agent on the register.

18. Any decision of the Commissioner, pursuant to section 16 of the Act, to refuse to recognize a person as a patent agent shall be forthwith entered in the register of patent agents and published in the Canadian Patent Office Record, and a copy shall be sent by registered mail to the person referred to in the decision.

19. (1) When the Commissioner makes a decision pursuant to section 16 of the Act that a person be refused recognition as a patent agent, any correspondence respecting an application sent by the Commissioner or by the Patent Office to that person within the six-month period preceding the date of the decision and to which no reply has been made by that date is deemed not to have been sent to the applicant.

(2) An application filed by a person who has been refused recognition as a patent agent by the Commissioner or an application that includes an appointment of such a person as patent agent of the applicant or as associate patent agent shall be treated by the Commissioner as an application filed by the applicant or by the patent agent who appointed the associate patent agent.

Appointment of Patent Agents

20. (1) An applicant who is not an inventor shall appoint a patent agent to prosecute the application for the applicant.

(2) The appointment of a patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the applicant.

(3) The appointment of a patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the applicant or that patent agent.

21. (1) Every patent agent who does not reside in Canada and who is appointed as the patent agent for an applicant in respect of an application shall appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

(2) Every patent agent who resides in Canada and who is appointed as the patent agent for an applicant in respect of an application may appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

(3) The appointment of an associate patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the patent agent who appointed the associate patent agent.

(4) The appointment of an associate patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the associate patent agent or the patent agent who appointed the associate patent agent.

22. Any act by or in relation to a patent agent or an associate patent agent shall have the effect of an act by or in relation to the applicant.

23. Where an applicant is not the inventor and no patent agent residing in Canada has been appointed or any such appointment has been revoked, the Commissioner shall by notice requisition either that the applicant appoint a patent agent residing in Canada or, where a non-resident patent agent has been appointed, that the non-resident patent agent appoint an associate patent agent, within the three-month period after the date of the notice.

24. Where a patent agent withdraws from practice, any patent agent who is the successor to that patent agent and who has so established to the Commissioner, shall be considered to be the appointed patent agent until another patent agent is appointed, in respect of any application in which the patent agent who has withdrawn from practice has been appointed.

Time

25. Except where other times are provided by the Act or these Rules, the time within which action must be taken by an applicant where the Commissioner, by notice, requisitions the applicant to take any action necessary for compliance with the Act or these Rules is the three-month period after the requisition is made.

26. (1) Subject to subsection (2) and any other provision of these Rules, except in respect of Part V, the Commissioner is authorized to extend the time fixed by these Rules or by the Commissioner under the Act for doing anything, subject to both the extension being applied for and the fee set out in item 22 of Schedule II being paid before the expiry of that time, where the Commissioner is satisfied that the circumstances justify the extension.

(2) Where, for the purposes of paragraph 73(1)(a) of the Act, the Commissioner establishes a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is not authorized to extend the time for replying beyond six months after the requisition is made.

27. (1) Except in respect of Part V, the Commissioner is authorized to extend the time fixed by subsection 18(2) of the Act, subject to the fee set out in item 22 of Schedule II being paid, where the Commissioner is satisfied that the circumstances justify the extension.

(2) Except in respect of Part V, where the applicant is sent a notice in accordance with subsection 30(7), the Commissioner is authorized to extend the time fixed by paragraph 73(1)(f) of the Act where the Commissioner is satisfied that the circumstances justify the extension.

Examination

28. (1) Subject to subsection (2), the Commissioner may advance an application for examination out of its routine order upon the request of any person who pays the fee set out in item 4 of Schedule II, where the Commissioner determines that failure to advance the application is likely to prejudice that person's rights.

(2) In respect of an application filed on or after October 1, 1989, subsection (1) only applies if the application is open to public inspection under section 10 of the Act and a request for examination has been made pursuant to subsection 35(1) of the Act.

29. (1) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application for a patent describing the same invention has been filed, in or for any country, on behalf of the applicant or on behalf of any other person claiming under an inventor named in the application being examined, the examiner may requisition from the applicant any of the following information and a copy of any related document:

(a) an identification of any prior art cited in respect of the applications;

(b) the application numbers, filing dates and, if granted, the patent numbers;

(c) particulars of conflict, opposition, re-examination or similar proceedings; and

(d) where a document is not in either English or French, a translation of the document, or a part of the document, into English or French.

(2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an invention disclosed in the application was, before the filing date of the application, published or the subject of a patent, the examiner may requisition the applicant to identify the first publication of or patent for that invention.

(3) Subsections (1) and (2) do not apply to any information or document that is not available or known to the applicant, provided that the applicant states the reasons why the information or document is not available or known.

30. (1) Where an examiner, after examining an application, has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.

(2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application does not comply with the Act or these Rules, the examiner shall inform the applicant of the application's defects and shall requisition the applicant to amend the application in order to comply or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

(3) Where an applicant has replied in good faith to a requisition referred to in subsection (2) within the time provided but the examiner has reasonable grounds to believe that the application still does not comply with the Act or these Rules in respect of one or more 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.

(4) Where an examiner rejects an application, the notice shall bear the notation "Final Action" or "Décision finale", shall indicate the outstanding defects and shall requisition the applicant to amend the application in order to comply with the Act and these Rules or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

(5) Where in accordance with subsection 30(4) the applicant amends the application or provides arguments and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.

(6) Where the rejection is not withdrawn pursuant to subsection (5), the rejection shall be reviewed by the Commissioner and the applicant shall be given an opportunity to be heard.

(7) Where, after a notice is sent in accordance with subsection (1) or (5) but before a patent is issued, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules, the Commissioner shall notify the applicant, shall return the application to the examiner for further examination, and if the final fee has been paid shall refund it.

(8) After the applicant is sent a notice in accordance with subsection (7), sections 32 and 33 do not apply unless a further notice is sent to the applicant in accordance with subsection (1) or (5).

Amendments

31. An application that has been rejected by an examiner shall not be amended after the expiry of the time for responding to the examiner's requisition, made pursuant to subsection 30(4), except

(a) where the rejection is withdrawn in accordance with subsection 30(5);

(b) where the Commissioner is satisfied after review that the rejection is not justified and the applicant has been so informed;

(c) where the Commissioner has informed the applicant that the amendment is necessary for compliance with the Act and these Rules; or

(d) by order of the Federal Court or the Supreme Court of Canada.

32. (1) Except as otherwise provided by the Act or these Rules, after the applicant is sent a notice pursuant to subsection 30(1) or (5), no amendment, other than an amendment to correct a clerical error that is obvious on the face of the application, may be made to the application unless the fee set out in item 5 of Schedule II is paid.

(2) Except as otherwise provided by the Act or these Rules, after the applicant is sent a notice pursuant to subsection 30(1) or (5), no amendment may be made to the application that would necessitate a further search by the examiner in respect of the application or that would make the application not comply with the Act or these Rules.

33. Except as otherwise provided by the Act or these Rules, no amendment may be made to an application after payment of the final fee referred to in subsection 30(1) or (5).

34. Amendments to an application shall be made by inserting new pages in place of the pages altered by the amendments and shall be accompanied by a statement explaining their nature and purpose.

35. Clerical errors in any document relating to an application, other than a specification, a drawing or a document effecting a transfer or a change of name, which are due to the fact that something other than what was obviously intended was written, may be corrected by the applicant.

Unity of Invention

36. For the purposes of section 36 of the Act or of the Act as it read immediately before October 1, 1989, an application does not claim more than one invention if the subject-matters defined by the claims are so linked as to form a single general inventive concept.

Transfers and Changes of Name

37. Where an applicant who files an application in Canada or who complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2) is not the inventor, the following must be registered in the Patent Office:

(a) evidence, by way of affidavit, statutory declaration or copies of documents effecting transfers or changes of name, that the applicant is a legal representative of the inventor; and

(b) copies of documents effecting transfers relevant to the applicant's entitlement to file the application, unless copies of those transfers are registered for the purposes of paragraph (a).

38. No transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the currently recognized owner to the new owner has been registered in the Patent Office in respect of that patent or application.

39. No change in the name of the owner of a patent or an application shall be recognized by the Commissioner unless evidence of the change in the name of the owner, by way of affidavit, statutory declaration or a copy of a document effecting the change, has been registered in the Patent Office in respect of that patent or application.

40. Registration of a transfer shall not of itself operate as a revocation of an appointment of a patent agent or as an appointment of a representative.

41. A patent shall not be granted to a transferee of an application unless the request for registration of the transfer is filed on or before the date on which the final fee is paid in accordance with subsection 30(1) or (5) or, if the final fee is refunded in accordance with subsection 30(7), on or before the date on which the final fee is paid again in accordance with subsection 30(1) or (5).

Registration of Documents

42. Subject to sections 49 and 50 of the Act, the Commissioner shall, upon request and on payment of the fee set out in item 21 of Schedule II, register in the Patent Office any document relating to a patent or an application.

Reissue

43. An application for reissue pursuant to section 47 of the Act shall follow the form and the instructions for its completion set out in Form 1 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

Disclaimer

44. A disclaimer pursuant to section 48 of the Act or of the Act as it read immediately before October 1, 1989 shall follow the form and the instructions for its completion set out in Form 2 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

Re-Examination

45. Except when made by the patentee, a request pursuant to section 48.1 of the Act for a re-examination of any claim of a patent, and the prior art, shall be filed in duplicate.

Secret Applications and Patents

46. Where the Minister of National Defence gives a certificate in accordance with subsection 20(7) of the Act in relation to an application, all entries in any way concerning the application that may appear in any ordinary register maintained in the Patent Office are wholly obliterated, and no further entry concerning the application or any patent granted on the basis of the application shall be made in any such register until that Minister waives the benefits of that section with respect to such application or patent.

47. Where the Governor in Council orders under subsection 20(17) of the Act that an invention described in an application shall 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 shall, as soon as the Commissioner is informed of the order, notify the applicant by registered mail.

48. The Commissioner shall permit any public servant authorized in writing by the Minister of National Defence, or any officer of Her Majesty's Canadian Forces authorized in writing by the Minister of National Defence, to inspect any pending application that relates to any instrument or munition of war and to obtain a copy of any such application.

Abuse of Rights under Patents

49. (1) In this section, "application" means an application referred to in section 68 of the Act presented to the Commissioner under subsection 65(1) of the Act.

(2) Every application shall be accompanied by the fee set out in item 16 of Schedule II.

(3) For the purposes of subsection 69(1) of the Act, the prescribed time is the four-month period after

(a) the date on which the person or the patentee has been served with copies of the application and declarations referred to in subsection 68(1) of the Act; or

(b) where the person or the patentee has not been so served, the later of the date on which the application is advertised in the Canada Gazette and the date on which the application is advertised in the Canadian Patent Office Record.

PART II
PATENT COOPERATION TREATY

Definition

50. In this Part, "priority date" has the same meaning as in Article 2(xi) of the Patent Cooperation Treaty. (date de priorité)

Application of Treaty

51. Subject to subsection 58(8), the provisions of the Patent Cooperation Treaty and the Regulations under the PCT shall apply in respect of

(a) an international application filed with the Commissioner;

(b) an international application in which Canada is designated in accordance with the Patent Cooperation Treaty; and

(c) an international application in which Canada is designated and elected in accordance with the Patent Cooperation Treaty. SOR/99-291, s. 3.

International Phase

[SOR/2003-208, s. 4]

52. Where an international application is filed with the Commissioner and the applicant or, where there is more than one applicant, at least one of the applicants is a national or resident of Canada, the Commissioner shall act as a receiving Office as defined in Article 2(xv) of the Patent Cooperation Treaty.

53. An international application, in order to be filed with the Commissioner, shall be written in either English or French.

53.1 The Commissioner shall act as an International Searching Authority and an International Preliminary Examining Authority in accordance with the Patent Cooperation Treaty and the Regulations under the PCT. SOR/2003-208, s. 5.

54. (1) Correspondence addressed to the Commissioner in respect of an international application may be physically delivered to the Patent Office during ordinary business hours of the Office and shall be considered to be received by the Commissioner on the day of the delivery.

(2) For the purposes of subsection (1), where correspondence addressed to the Commissioner in respect of an international application is physically delivered to the Patent Office outside of its ordinary business hours, it shall be considered to have been delivered to the Office during ordinary business hours on the day when the Office is next open for business.

(3) Correspondence addressed to the Commissioner in respect of an international application may be physically delivered to an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered, during ordinary business hours of that establishment, and

(a) where the delivery is made to the establishment on a day that the Patent Office is open for business, the correspondence shall be considered to be received by the Commissioner on that day; and

(b) where the delivery is made to the establishment on a day that the Patent Office is closed for business, the correspondence shall be considered to be received by the Commissioner on the day when the Office is next open for business.

(4) For the purposes of subsection (3), where correspondence addressed to the Commissioner in respect of an international application is physically delivered to an establishment outside of ordinary business hours of the establishment, it shall be considered to have been delivered to that establishment during ordinary business hours on the day when the establishment is next open for business.

(5) Correspondence addressed to the Commissioner in respect of an international application may be sent at any time by electronic or other means of transmission specified by the Commissioner in the Canadian Patent Office Record.

(6) For the purposes of subsection (5), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is open for business, it shall be considered to be received by the Commissioner on that day.

(7) For the purposes of subsection (5), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is closed for business, it shall be considered to be received by the Commissioner on the day when the Office is next open for business. SOR/99-291, s. 4.

55. (1) Fees payable pursuant to Rules 15 and 57 of the Regulations under the PCT shall be paid in Canadian currency.

(2) Money received under Rules 15 and 57 of the Regulations under the PCT shall be deposited in the account entitled the Patent Cooperation Treaty Fund within the account entitled the Canadian Intellectual Property Office Revolving Fund and shall be paid out of that account for purposes in accordance with those Rules. SOR/2003-208, s. 6.

National Phase

[SOR/2003-208, s. 7]

56. Where an international application in which Canada is designated is filed, the Commissioner shall act as the designated Office as defined in Article 2(xiii) of the Patent Cooperation Treaty.

57. Where an international application in which Canada is designated is filed and the applicant has elected Canada as a country in respect of which the international preliminary examination report referred to in Article 35 of the Patent Cooperation Treaty shall be established, the Commissioner shall act as an elected Office as defined in Article 2(xiv) of the Patent Cooperation Treaty.

58. (1) An applicant who designates Canada, or who designates and elects Canada, in an international application shall, within the time prescribed by subsection (3),

(a) where the International Bureau of the World Intellectual Property Organization has not published the international application, provide the Commissioner with a copy of the international application;

(b) where the international application is not in English or French, provide the Commissioner with a translation of the international application into either English or French; and

(c) pay the basic national fee set out in item 10 of Schedule II.

(2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date shall, within the time prescribed by subsection (3), pay any fee set out in item 30 of Schedule II that would have been payable in accordance with section 99 or 154 had the international application been filed in Canada as a Canadian application on the international filing date.

(3) An applicant shall comply with the requirements of subsection (1) and, where applicable, subsection (2) not later than on the expiry of

(a) the 30-month period after the priority date; or

(b) where the applicant pays the additional fee for late payment set out in item 11 of Schedule II, the 42-month period after the priority date.

(4) Where the applicant provides a translation of the international application into either English or French in accordance with paragraph (1)(b) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful.

(5) Where the applicant who complies with the requirements of subsection (1) is not the applicant originally identified in the international application, the Commissioner shall requisition evidence that the applicant who complies with the requirements of that subsection is the legal representative of the originally identified applicant where the documents already in the Patent Office do not provide such evidence.

(5.1) Where the applicant who complies with the requirements of subsection (1) does not comply with a requisition made by the Commissioner pursuant to subsection (5) within three months after the requisition is made, that applicant shall be deemed never to have complied with the requirements of subsection (1).

(6) For the purposes of subsection (2), "international filing date" means the date accorded to an international application by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty.

(7) For greater certainty, section 26 does not apply in respect of the times specified in subsection (3) but does apply in respect of the time specified in subsection (5.1).

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

(9) An international application may not become a PCT national phase application where:

(a) before April 1, 2002, the 32-month period after the priority date has expired;

(b) the applicant had not complied with the requirements of subsection (1) and, where applicable, subsection (2) before the expiry of that period; and

(c) an election of Canada was not made before the expiry of the nineteenth month after the priority date. SOR/99-291, s. 5; SOR/2002-120, s. 1.

Application of Canadian Legislation

59. When an international application becomes a PCT national phase application, the application shall thereafter be deemed to be an application filed in Canada and the Act and these Rules shall thereafter apply in respect of that application.

59.1 For greater certainty, for the purpose of section 8 of the Act, an international application is deemed to be an instrument of record in the Patent Office only when it becomes a PCT national phase application. SOR/99-291, s. 6.

59.2 For greater certainty, in respect of an international application that has become a PCT national phase application, for the purposes of the Act and these Rules,

(a) information or notices included in the international application as filed shall be considered to have been received by the Commissioner on the filing date accorded to the application by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty; and

(b) information or notices furnished in accordance with the requirements of the Patent Cooperation Treaty before the application has become a PCT national phase application shall be considered to have been received by the Commissioner on the date that they were so furnished. SOR/99-291, s. 6.

60. For the purposes of section 11 of the Act, an international application in which Canada is designated is deemed to be pending in Canada only when it becomes a PCT national phase application.

61. The requirement in subsection 27(2) of the Act that an application contain a petition does not apply to PCT national phase applications.

62. (1) In respect of a PCT national phase application, where, on or before the expiry of the time specified in subsection (2), the application does not contain the information and documents listed below, the application is deemed to be abandoned for the purposes of subsection 73(2) of the Act:

(a) the name and address of the inventor;

(b) and (c) [Repealed, SOR/2004-67, s. 1]

(d) an appointment of a patent agent, where required by section 20;

(e) an appointment of an associate patent agent, where required by section 21; and

(f) an appointment of a representative, where required by section 29 of the Act.

(2) The time by which the information and documents referred to in subsection (1) must be submitted is the expiry of the latest of

(a) the 36-month period after the priority date; and

(b) [Repealed, SOR/2002-120, s. 2]

(c) the six-month period after the applicant complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2).

(3) For greater certainty, section 26 does not apply in respect of the time specified in subsection (2).

(4) For greater certainty, where an application was, before April 1, 2002, deemed to have been abandoned pursuant to subsection (1), the application may not be reinstated in accordance with subsection 73(3) of the Act after the expiry of the 12-month period after the date on which the application was deemed to be abandoned. SOR/2002-120, s. 2; SOR/2004-67, s. 1.

63. An international application in which Canada is designated, or in which Canada is designated and elected, shall not be considered to be an application mentioned in paragraph 28.2(1)(c) of the Act or to be a co-pending application mentioned in paragraph 28.2(1)(d) of the Act unless it has become a PCT national phase application.

64. (1) Section 28 of the Act does not apply to a PCT national phase application.

(2) The filing date of a PCT national phase application shall be considered to be the date accorded by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty.

65. In respect of a PCT national phase application, the applicant may substitute the requirements of Rule 4.10 of the Regulations under the PCT as it read immediately before July 1, 1998 for the requirements of section 142. SOR/99-291, s. 7.

66. Where the applicant complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2) on or after the date of the publication of the application in English or French by the International Bureau of the World Intellectual Property Organization in accordance with Article 21 of the Patent Cooperation Treaty, the application is deemed to be open to public inspection under section 10 of the Act on and after the date of that publication.