CHAPTER P-4

An Act respecting patents of invention

1. This Act may be cited as the Patent Act.

R.S., c. P-4, s. 1.

2. In this Act, except as otherwise provided,

“applicant” includes an inventor and the legal representatives of an applicant or inventor;

“claim date” means the date of a claim in an application for a patent in Canada, as determined in accordance with section 28.1;

“Commissioner” means the Commissioner of Patents;

“country” includes a Member of the World Trade Organization, as defined in subsection 2(1) of the World Trade Organization Agreement Implementation Act;

“filing date” means, in relation to an application for a patent in Canada, the date on which the application is filed, as determined in accordance with section 28;

“invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter;

“legal representatives” includes heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions;

“Minister” means the Minister of Industry or such other member of the Queen’s Privy Council for Canada as is designated by the Governor in Council as the Minister for the purposes of this Act;

“patent” means letters patent for an invention;

“patentee” means the person for the time being entitled to the benefit of a patent;

“predecessor in title” includes any person through whom an applicant for a patent in Canada claims the right to the patent;

“prescribed” means prescribed by rules or regulations of the Governor in Council and, in the case of a fee, includes a fee determined in the manner prescribed;

“prescribed fee”[Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 1]

“priority date”[Repealed, 1993, c. 15, s. 26]

“regulation” and “rule” include rule, regulation and form;

“request for priority” means a request under section 28.4.

“work on a commercial scale”[Repealed, 1993, c. 44, s. 189]

R.S., 1985, c. P-4, s. 2; R.S., 1985, c. 33 (3rd Supp.), s. 1; 1992, c. 1, s. 145(F); 1993, c. 2, s. 2, c. 15, s. 26, c. 44, s. 189; 1994, c. 47, s. 141; 1995, c. 1, s. 62.

2.1 This Act is binding on Her Majesty in right of Canada or a province.

1993, c. 44, s. 190.

3. There shall be attached to the Department of Industry, or to such other department of the Government of Canada as may be determined by the Governor in Council, an office called the Patent Office.

R.S., 1985, c. P-4, s. 3; 1992, c. 1, s. 145(F); 1995, c. 1, s. 63.

4. (1) The Governor in Council may appoint a Commissioner of Patents who shall, under the direction of the Minister, exercise the powers and perform the duties conferred and imposed on that officer by or pursuant to this Act.

(2) The Commissioner shall receive all applications, fees, papers, documents and models for patents, shall perform and do all acts and things requisite for the granting and issuing of patents of invention, shall have the charge and custody of the books, records, papers, models, machines and other things belonging to the Patent Office and shall have, for the purposes of this Act, all the powers that are or may be given by the Inquiries Act to a commissioner appointed under Part II of that Act.

(3) The Commissioner holds office during pleasure and shall be paid such annual salary as may be determined by the Governor in Council.

(4) The Commissioner may, after consultation with the Minister, delegate to any person he deems qualified any of his powers, duties and functions under this Act, except the power to delegate under this subsection.

(5) Any decision under this Act of a person authorized to make the decision pursuant to subsection (4) may be appealed in the like manner and subject to the like conditions as a decision of the Commissioner under this Act.

R.S., c. P-4, s. 4; 1984, c. 40, s. 57.

5. (1) An Assistant Commissioner of Patents may be appointed in the manner authorized by law and shall be a technical officer experienced in the administration of the Patent Office.

(2) When the Commissioner is absent or unable to act, the Assistant Commissioner, or, if he also is at the same time absent or unable to act, another officer designated by the Minister, may exercise the powers and shall perform the duties of the Commissioner.

R.S., c. P-4, s. 5.

6. There may be appointed in the manner authorized by law such principal examiners, examiners, associate examiners and assistant examiners, clerks, stenographers and other assistants as are necessary for the administration of this Act.

R.S., c. P-4, s. 6.

7. (1) No officer or employee of the Patent Office shall buy, sell, acquire or traffic in any invention, patent or right to a patent, or any interest therein, and every purchase, sale, assignment, acquisition or transfer of any invention, patent or right to a patent, or any interest therein, made by or to any officer or employee is void.

(2) Subsection (1) does not apply to a sale by an original inventor or to an acquisition under the last will, or by the intestacy, of a deceased person.

R.S., c. P-4, s. 7.

8. Clerical errors in any instrument of record in the Patent Office do not invalidate the instrument, but they may be corrected under the authority of the Commissioner.

R.S., 1985, c. P-4, s. 8; 1993, c. 15, s. 27.

8.1 (1) Subject to the regulations, any document, information or fee that is authorized or required to be submitted to the Commissioner under this Act may be submitted in electronic or other form in any manner specified by the Commissioner.

(2) For the purposes of this Act, any document, information or fee submitted in accordance with subsection (1) is deemed to be received by the Commissioner at the time provided by the regulations.

1993, c. 15, s. 27.

8.2 Subject to the regulations, any document or information received by the Commissioner under this Act in electronic or other form may be entered or recorded by any information storage device, including any system of mechanical or electronic data processing, that is capable of reproducing stored documents or information in intelligible form within a reasonable time.

1993, c. 15, s. 27.

9. If any patent is destroyed or lost, a certified copy may be issued in lieu thereof on payment of the prescribed fee.

R.S., c. P-4, s. 9.

10. (1) Subject to subsections (2) to (6) and section 20, all patents, applications for patents and documents filed in connection with patents or applications for patents shall be open to public inspection at the Patent Office, under such conditions as may be prescribed.

(2) Except with the approval of the applicant, an application for a patent, or a document filed in connection with the application, shall not be open to public inspection before a confidentiality period of eighteen months has expired.

(3) The confidentiality period begins on the filing date of the application or, where a request for priority has been made in respect of the application, it begins on the earliest filing date of any previously regularly filed application on which the request is based.

(4) Where a request for priority is withdrawn on or before the prescribed date, it shall, for the purposes of subsection (3) and to the extent that it is withdrawn, be considered never to have been made.

(5) An application shall not be open to public inspection if it is withdrawn in accordance with the regulations on or before the prescribed date.

(6) A prescribed date referred to in subsection (4) or (5) must be no later than the date on which the confidentiality period expires.

R.S., 1985, c. P-4, s. 10; R.S., 1985, c. 33 (3rd Supp.), s. 2; 1993, c. 15, s. 28.

11. Notwithstanding the exception in section 10, the Commissioner, on the request of any person who states in writing the name of the inventor, if available, the title of the invention and the number and date of a patent said to have been granted in a named country other than Canada, and who pays or tenders the prescribed fee, shall inform that person whether an application for a patent of the same invention is or is not pending in Canada.

R.S., c. P-4, s. 11.

12. (1) The Governor in Council may make rules or regulations

(a) respecting the form and contents of applications for patents;

(b) respecting the form of the Register of Patents and of the indexes thereto;

(c) respecting the registration of assignments, transmissions, disclaimers, judgments or other documents relating to any patent;

(d) respecting the form and contents of any certificate issued pursuant to this Act;

(e) prescribing the fees or the manner of determining the fees that may be charged in respect of the filing of applications for patents or the taking of other proceedings under this Act or under any rule or regulation made pursuant to this Act, or in respect of any services or the use of any facilities provided thereunder by the Commissioner or any person employed in the Patent Office;

(f) prescribing the fees or the manner of determining the fees that shall be paid to maintain in effect an application for a patent or to maintain the rights accorded by a patent;

(g) respecting the payment of any prescribed fees including the time when and the manner in which such fees shall be paid, the additional fees that may be charged for the late payment of such fees and the circumstances in which any fees previously paid may be refunded in whole or in part;

(h) for carrying into effect the terms of any treaty, convention, arrangement or engagement that subsists between Canada and any other country;

(i) for carrying into effect, notwithstanding anything in this Act, 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;

(j) respecting the entry on, the maintenance of and the removal from the register of patent agents of the names of persons and firms, including the qualifications that must be met and the conditions that must be fulfilled by a person or firm before the name of the person or firm is entered thereon and to maintain the name of the person or firm on the register;

(j.1) respecting the submission of documents, information or fees under section 8.1, including

(i) the documents, information or fees that may be submitted in electronic or other form under that section,

(ii) the persons or classes of persons by whom they may be submitted, and

(iii) the time at which they are deemed to be received by the Commissioner;

(j.2) respecting the entering or recording of any document or information under section 8.2;

(j.3) prescribing the manner in which an application for a patent may be withdrawn and, for the purposes of subsections 10(4) and (5), prescribing the date, or the manner of determining the date, on or before which a request for priority or an application for a patent must be withdrawn;

(j.4) respecting requests for priority, including

(i) the period within which priority must be requested,

(ii) the manner in which and period within which the Commissioner must be informed of the matters referred to in subsection 28.4(2),

(iii) the documentation that must be filed in support of requests for priority, and

(iv) the withdrawal of requests for priority;

(j.5) respecting the time within which requests for examination must be made and prescribed fees must be paid under subsection 35(1);

(j.6) respecting the deposit of biological material for the purposes of section 38.1;

(j.7) respecting the manner in which amendments may be made to specifications or drawings furnished as part of an application for a patent;

(j.8) authorizing the Commissioner to extend, subject to any prescribed terms and conditions, the time fixed by or under this Act for doing anything where the Commissioner is satisfied that the circumstances justify the extension;

(k) prescribing any other matter that by any provision of this Act is to be prescribed; and

(l) generally, for carrying into effect the objects and purposes of this Act or for ensuring the due administration thereof by the Commissioner and other officers and employees of the Patent Office.

(2) Any rule or regulation made by the Governor in Council has the same force and effect as if it had been enacted herein.

R.S., 1985, c. P-4, s. 12; R.S., 1985, c. 33 (3rd Supp.), s. 3; 1993, c. 15, s. 29.

13. (1) The Commissioner shall cause a seal to be made for the purposes of this Act and may cause to be sealed therewith every patent and other instrument and copy thereof issuing from the Patent Office.

(2) Every court, judge and person shall take notice of the seal of the Patent Office, shall admit the impressions thereof in evidence in like manner as the impressions of the Great Seal are admitted in evidence and shall take notice of and admit in evidence, without further proof and without production of the originals, all copies or extracts certified under the seal of the Patent Office to be copies of or extracts from documents deposited in that Office.

R.S., c. P-4, s. 13.

14. In any action or proceeding respecting a patent authorized to be had or taken in Canada under this Act, a copy of any patent granted in any other country, or any official document connected therewith, purporting to be certified under the hand of the proper officer of the government of the country in which the patent has been obtained, may be produced before the court or a judge thereof, and the copy of the patent or document purporting to be so certified may be admitted in evidence without production of the original and without proof of the signature or official character of the person appearing to have signed it.

R.S., c. P-4, s. 14.

15. A register of patent agents shall be kept in the Patent Office on which shall be entered the names of all persons and firms entitled to represent applicants in the presentation and prosecution of applications for patents or in other business before the Patent Office.

R.S., 1985, c. P-4, s. 15; R.S., 1985, c. 33 (3rd Supp.), s. 4.

16. For gross misconduct or any other cause that he may deem sufficient, the Commissioner may refuse to recognize any person as a patent agent or attorney either generally or in any particular case.

R.S., c. P-4, s. 16.

17. In all cases where an appeal is provided from the decision of the Commissioner to the Federal Court under this Act, the appeal shall be had and taken pursuant to the Federal Courts Act and the rules and practice of that Court.

R.S., 1985, c. P-4, s. 17; 2002, c. 8, s. 182.

18. (1) Whenever an appeal to the Federal Court from the decision of the Commissioner is permitted under this Act, notice of the decision shall be mailed by the Commissioner by registered letter addressed to the interested parties or their respective agents.

(2) The appeal shall be taken within three months after the date of mailing of the notice, unless otherwise provided by or under this Act.

R.S., 1985, c. P-4, s. 18; 1993, c. 15, s. 30.

19. (1) Subject to section 19.1, the Commissioner may, on application by the Government of Canada or the government of a province, authorize the use of a patented invention by that government.

(2) Subject to section 19.1, the use of the patented invention may be authorized for such purpose, for such period and on such other terms as the Commissioner considers expedient but the Commissioner shall settle those terms in accordance with the following principles:

(a) the scope and duration of the use shall be limited to the purpose for which the use is authorized;

(b) the use authorized shall be non-exclusive; and

(c) any use shall be authorized predominantly to supply the domestic market.

(3) The Commissioner shall notify the patentee of any use of the patented invention that is authorized under this section.

(4) Where the use of the patented invention is authorized, the authorized user shall pay to the patentee such amount as the Commissioner considers to be adequate remuneration in the circumstances, taking into account the economic value of the authorization.

(5) The Commissioner may, on application by the patentee and after giving all concerned parties an opportunity to be heard, terminate the authorization if the Commissioner is satisfied that the circumstances that led to the granting of the authorization have ceased to exist and are unlikely to recur, subject to such conditions as the Commissioner deems appropriate to protect the legitimate interests of the authorized user.

(6) An authorization granted under this section is not transferable.

R.S., 1985, c. P-4, s. 19; 1993, c. 44, s. 191.

19.1 (1) The Commissioner may not authorize the use of a patented invention under section 19 unless the applicant establishes that

(a) it has made efforts to obtain from the patentee on reasonable commercial terms and conditions the authority to use the patented invention; and

(b) its efforts have not been successful within a reasonable period.

(2) Subsection (1) does not apply in cases of national emergency or extreme urgency or where the use for which the authorization is sought is a public non-commercial use.

(3) The Commissioner may not, under section 19, authorize any use that is a prescribed use unless the proposed user complies with the prescribed conditions.

(4) The Commissioner may not, under section 19, authorize any use of semi-conductor technology other than a public non-commercial use.

1993, c. 44, s. 191; 1994, c. 47, s. 142.

19.2 Any decision made by the Commissioner under section 19 or 19.1 is subject to appeal to the Federal Court.

1993, c. 44, s. 191.

19.3 (1) The Governor in Council may make regulations for the purpose of implementing, in relation to patents, Article 1720 of the Agreement.

(2) In subsection (1), “Agreement” has the same meaning as in subsection 2(1) of the North American Free Trade Agreement Implementation Act.

1993, c. 44, s. 191.

20. (1) Any officer, servant or employee of the Crown or of a corporation that is an agent or servant of the Crown, who, acting within the scope of his duties and employment, invents any invention in instruments or munitions of war shall, if so required by the Minister of National Defence, assign to that Minister on behalf of Her Majesty all the benefits of the invention and of any patent obtained or to be obtained for the invention.

(2) Any person other than a person described in subsection (1) who invents an invention described in that subsection may assign to the Minister of National Defence on behalf of Her Majesty all the benefits of the invention and of any patent obtained or to be obtained for the invention.

(3) An inventor described in subsection (2) is entitled to compensation for an assignment to the Minister of National Defence under this Act and in the event that the consideration to be paid for the assignment is not agreed on, it is the duty of the Commissioner to determine the amount of the consideration, which decision is subject to appeal to the Federal Court.

(4) Proceedings before the Federal Court under subsection (3) shall be held in camera on request made to the court by any party to the proceedings.

(5) An assignment to the Minister of National Defence under this Act effectually vests the benefits of the invention and patent in the Minister of National Defence on behalf of Her Majesty, and all covenants and agreements therein contained for keeping the invention secret and otherwise are valid and effectual, notwithstanding any want of valuable consideration, and may be enforced accordingly by the Minister of National Defence.

(6) Any person who has made an assignment to the Minister of National Defence under this section, in respect of any covenants and agreements contained in such assignment for keeping the invention secret and otherwise in respect of all matters relating to that invention, and any other person who has knowledge of such assignment and of such covenants and agreements, shall be, for the purposes of the Security of Information Act, deemed to be persons having in their possession or control information respecting those matters that has been entrusted to them in confidence by any person holding office under Her Majesty, and the communication of any of that information by the first mentioned persons to any person other than one to whom they are authorized to communicate with, by or on behalf of the Minister of National Defence, is an offence under section 4 of the Security of Information Act.

(7) Where any agreement for an assignment to the Minister of National Defence under this Act has been made, the Minister of National Defence may submit an application for patent for the invention to the Commissioner, with the request that it be examined for patentability, and if the application is found allowable may, before the grant of any patent thereon, certify to the Commissioner that, in the public interest, the particulars of the invention and of the manner in which it is to be worked are to be kept secret.

(8) If the Minister of National Defence so certifies, the application and specification, with the drawing, if any, and any amendment of the application, and any copies of those documents and the drawing and the patent granted thereon shall be placed in a packet sealed by the Commissioner under authority of the Minister of National Defence.

(9) The packet described in subsection (8) shall, until the expiration of the term during which a patent for the invention may be in force, be kept sealed by the Commissioner, and shall not be opened except under the authority of an order of the Minister of National Defence.

(10) The packet described in subsection (8) shall be delivered at any time during the continuance of the patent to any person authorized by the Minister of National Defence to receive it, and shall, if returned to the Commissioner, be kept sealed by him.

(11) On the expiration of the term of the patent, the packet described in subsection (8) shall be delivered to the Minister of National Defence.

(12) No proceeding by petition or otherwise lies to have declared invalid or void a patent granted for an invention in relation to which a certificate has been given by the Minister of National Defence under subsection (7), except by permission of the Minister.

(13) No copy of any specification or other document or drawing in respect of an invention and patent, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open to the inspection of the public, but, except as otherwise provided in this section, this Act shall apply in respect of the invention and patent.

(14) The Minister of National Defence may at any time waive the benefit of this section with respect to any particular invention, and the specification, documents and drawing relating thereto shall thereafter be kept and dealt with in the regular way.

(15) No claim shall be allowed in respect of any infringement of a patent that occurred in good faith during the time that the patent was kept secret under this section, and any person who, before the publication of the patent, had in good faith done any act that, but for this subsection would have given rise to a claim, is entitled, after the publication, to obtain a licence to manufacture, use and sell the patented invention on such terms as may, in the absence of agreement between the parties, be settled by the Commissioner or by the Federal Court on appeal from the Commissioner.

(16) The communication of any invention for any improvement in munitions of war to the Minister of National Defence, or to any person or persons authorized by the Minister of National Defence to investigate the invention or the merits thereof, shall not, nor shall anything done for the purposes of the investigation, be deemed use or publication of the invention so as to prejudice the grant or validity of any patent for the invention.

(17) The Governor in Council, if satisfied that an invention relating to any instrument or munition of war, described in any specified application for patent not assigned to the Minister of National Defence, is vital to the defence of Canada and that the publication of a patent therefor should be prevented in order to preserve the safety of the State, may order that the invention and application and all the documents relating thereto shall be treated for all purposes of this section as if the invention had been assigned or agreed to be assigned to the Minister of National Defence.

(18) The Governor in Council may make rules for the purpose of ensuring secrecy with respect to applications and patents to which this section applies and generally to give effect to the purpose and intent thereof.

R.S., 1985, c. P-4, s. 20; 2001, c. 41, s. 36.

21. Where by any agreement between the Government of Canada and any other government it is provided that the Government of Canada will apply section 20 to inventions disclosed in any application for a patent assigned or agreed to be assigned by the inventor to that other government, and the Commissioner is notified by any minister of the Crown that the agreement extends to an invention in a specified application, the application and all the documents relating thereto shall be dealt with as provided in section 20, except subsections (3) and (4), as if the invention had been assigned or agreed to be assigned to the Minister of National Defence.

R.S., c. P-4, s. 21.