Vol. 140, No. 51 — December 23, 2006

Rules Amending the Patent Rules

Statutory authority

Patent Act

Sponsoring department

Department of Industry

REGULATORY IMPACT
ANALYSIS STATEMENT

(This statement is not part of the Rules.)

Description

This initiative proposes to amend the Patent Rules, the Trade-marks Regulations (1996), the Industrial Design Regulations, the Integrated Circuit Topography Regulations, and the Copyright Regulations.

The main purpose of this initiative is to amend the Patent Rules to encourage small entities (i.e. entities employing 50 or fewer employees or a university) to use the patent system while providing a relief mechanism for those who mistakenly pay fees at the small entity level.

The regulatory initiative also proposes additional amendments to the Patent Rules, as well as to the Trade-marks Regulations (1996), the Industrial Design Regulations, the Integrated Circuit Topography Regulations, and the Copyright Regulations in order to improve the intellectual property regime by simplifying procedures and reducing processing times and costs, in keeping with the principles of the Government's initiative on Smart Regulation and the Paperwork Burden Reduction Initiative (PBRI).

Amendments to the Patent Rules

The proposed amendments to the Patent Rules deal with (a) the small entity regime; (b) the harmonization of the Canadian standard for describing sequence listing with the Patent Cooperation Treaty (PCT) standard; (c) the type of evidence required when the applicant is not the inventor; (d) the refund policy; (e) the clarification of certain practices for PCT national entry; and (f) a series of minor amendments.

(a) Small entity regime

The Patent Act and Patent Rules require patent applicants/ holders to pay fees. Prior to 1985, there was no distinction of fees based upon entity size. In 1985, the Government introduced "small entity" provisions to encourage universities and small businesses to use the patent system by reducing certain fees by 50%. This discount amounts to savings for the patent applicant/ holder of up to $3,000 over the life of a patent.

Prior to 2003, it was the practice of the Canadian Intellectual Property Office (CIPO) to accept "top-up" payments if entities mistakenly paid small entity fees but later realized that they should have paid the regular fees. In 2003, however, the Federal Court of Appeal's decision in Dutch Industries Ltd. v. The Commissioner of Patents, Barton No-Till Disk Inc. and Flexi-Coil Ltd. (Dutch Industries) held that the Commissioner of Patents lacked the authority to accept these "top-up" payments. The Court also ruled that a patent applicant/holder's entity status—small or large—is determined when the patent regime is first engaged (generally when a patent application is submitted) and that this status is maintained throughout the life of the patent. The Court's decision put thousands of patents at risk, as they could be invalidated if challenged. Section 2 of An Act to amend the Patent Act was therefore enacted to provide retroactive relief to patent holders and applicants affected by the Dutch Industries decision. It provides a one-year time limit to correct past fees that were incorrectly paid at the small entity level. This section came into force on February 1, 2006. However, there are very limited provisions to provide relief in instances where small entity fees are mistakenly paid after February 1, 2006. As a result, entities whose status is ambiguous under the Patent Rules have been reluctant to take the risk of taking advantage of the 50% reduction in certain fees, fearing that the patent could be invalidated. This is evidenced by CIPO's data, which indicates that small entities currently amount to only 11% of patent applications received (as opposed to 22% in 2000).

The intent of the proposed amendments to the Patent Rules is to encourage the use of small entity provisions by removing the uncertainty surrounding the small entity regime. The proposed amendments clarify the definition of small entity, the relevant date on which small entity status is to be assessed, the nature of the declaration by patent applicants and holders that they are entitled to pay at the small entity level, and the time within which the declaration must be made. The proposed amendments also put in place a corrective mechanism that enables patent holders and applicants to obtain an extension of time to fix up payments that have been made incorrectly at the small entity level.

More specifically, it is proposed that

• the definition of "small entity" be refined to mean an entity that employs 50 or fewer employees or that is a university, and that is not controlled by nor has transferred or licensed its obligation to an entity that employs more than 50 people;
• the small entity status for a regularly filed application is to be determined on the filing of the application and at national entry for PCT applications;
• patent applicants/holders must submit a small entity declaration, in the petition or in a separate document, stating that they believe that they are entitled to pay fees at the small entity level;
• if patent applicants/holders wish to pay as a small entity, they must submit the small entity declaration at the time of payment or, if they pay their fees before the prescribed due date, they should submit the declaration before that deadline;
• the Commissioner of Patents be authorized to grant patent applicants/holders an extension of time that will permit the correction of fees mistakenly paid at the small entity level;
• fee corrections made pursuant to the relief mechanism would only be permitted if the patent applicant/holder makes a statement that the small entity fee was paid in good faith and the application for an extension is filed without undue delay; and
• patent applicants/holders would be required to pay the difference in fees and the prescribed fee for requesting an extension of time.

(b) Harmonization of the Canadian format for sequence listing with the PCT standard

The PCT, to which Canada is a member, establishes a system of international cooperation under which an applicant can initiate patent protection procedures in over 130 countries by filing one "international application." Filing a PCT international application has the same effect as if a regular national application was filed in each member state where the applicant desires patent protection.

Under the PCT, Canadians can initially file an international application, in a standardized format, with the Commissioner of Patents. The application is then published and is subjected to an international search and an optional preliminary examination. The application and the search and examination reports are then provided to the selected Patent Offices where the applicant wishes to seek patent protection. However, Canada requires a different format for filing an invention that contains a nucleotide or amino acid sequence.

The proposed amendment would bring the Canadian format for submitting sequence listings in line with the PCT standard by referencing the latter in the Patent Rules. The advantage of using the reference technique is that the Canadian standard will automatically change whenever the PCT standard changes, thereby ensuring that our standard is always in keeping with the international standard and reducing the regulatory burden for applicants.

(c) Type of evidence required when the applicant is not the inventor

In order for CIPO to keep its records up to date with respect to the chain of title for applications/patents, the Patent Rules require an applicant who is not the inventor to file evidence that the applicant is entitled to apply for and be granted a patent. Currently, the applicant must provide evidence such as affidavits or statutory declarations and pay the associated fee to register these legal documents with the Patent Office (i.e. CIPO).

In keeping with the Government's initiative to reduce the administrative burden on businesses, it is proposed that the requirement to provide such evidence be replaced with a requirement to provide the information by way of a simple declaration either in the petition or on a separate form. As a result of this modification, approximately 37 000 applicants per year would no longer have to register evidence and pay the associated registration fee, resulting in a cost saving for applicants of up to $3.7M per year.

The proposed amendment is consistent with the requirements under the PCT and also reflects the international trend in Patent Offices to move towards a simpler way of providing this type of information.

(d) Refund policy

Section 4 of the Patent Rules enumerates a list of circumstances under which a patent applicant/holder can request a refund from the Commissioner of Patents. Under the current Rules, there is no time limit for requesting a refund. For administrative reasons, it is proposed to cap the time limit to three years. This amount of time allows patent applicants/holders sufficient time to discover their mistake and would alleviate CIPO of the administrative burden of maintaining a financial liability indefinitely.

It is further proposed that subsection 4(6) of the Patent Rules be amended and reworded to clarify that patent applicants/holders who paid the standard fee but could have paid the small entity fee would not be entitled to a refund for the difference in fees.

(e) Clarification of certain practices for PCT national entry

Under the PCT, an applicant files a single application which designates a number of countries where protection is sought. The effect of filing an international application is equivalent to filing a separate application in each of these designated countries. However, in order to obtain patent protection in these countries, the applicant must initiate patent granting procedures in each country (the "national phase").

If the applicant wishes to seek rights in Canada, CIPO must receive a completed application to process the request. Currently, CIPO may send a courtesy letter to the applicants inviting them to submit the required documents but is under no obligation to do so. This lack of any official requisition on the part of CIPO could have the unintended consequence that an application becomes irrevocably abandoned without the applicant having been informed by CIPO. Thus, in order to improve CIPO's service to businesses, it is proposed that the Patent Rules be amended to require the Commissioner of Patents to provide a notice to PCT applicants informing them that certain documents are still required to complete the application. Abandonment would not occur until the applicant has been notified of the deficiency and has had the opportunity to respond.

It is further proposed that paragraph 58(3)(b) of the Patent Rules be amended and reworded to clarify that additional late payment fees are due before the expiry of the 42-month period after the priority date for PCT national entries.

(f) Minor amendments

In keeping with the Government's initiative on Smart Regulation and the PBRI, a series of minor amendments are proposed to improve and facilitate dealings with CIPO and to accommodate technological advances. Proposed amendments include allowing new translations to replace faulty ones during PCT national entry; permitting CIPO to request that a PCT national phase application be withdrawn before the same application can be filed again; standardizing the format for electronic forms; retaining only the electronic version of a sequence listing application (as opposed to the paper form); not allowing a trade-mark, coined word or the name of a person in the title of an invention; and providing free certified copies of documents to the Federal Court. The latter would reduce the financial burden on owners or applicants wishing to pursue their rights in the Federal Court.

Amendments to the Trade-marks Regulations (1996)

The proposed amendments to the Trade-marks Regulations (1996) deal with (a) the granting of extensions of time at various steps in opposition proceedings; and (b) other minor amendments.

(a) Proposed changes to extension of time

The goal of the proposed changes is to streamline the trade-marks opposition process to create efficiencies and to reduce costs to applicants and opponents to opposition proceedings.

Generally, after examination of a trade-mark application, the Registrar of Trade-marks publishes the application in the Trade-marks Journal to serve notice to the public that the application has been considered and, barring successful opposition, will be allowed. If individuals or companies believe that the advertised trade-mark is in conflict with their interests, they may file a Statement of Opposition with the Trade-marks Opposition Board (TMOB). The other party will be informed and will be allowed to respond with a counterstatement. After evidence has been exchanged, the parties may request that an oral hearing be held before the TMOB issues a final decision in the case.

Under the Trade-marks Regulations (1996), parties are subject to various time limits for providing their documents in an opposition proceedings. As these time limits are fairly short, parties (applicants as well as opponents) often request a time extension with the payment of a fee. In general, the Registrar of Trade-marks has been using the Registrar's discretion to grant a time extension based on the Procedure Before the Trade-marks Opposition Board, a practice notice that provides guidance on the amount of time the Registrar would typically grant and how the Registrar would typically deal with requests for further extensions.

Given that most parties tend to request and be granted a time extension, it is proposed that some of the time limits in the Trade-marks Regulations (1996) be extended, thereby avoiding the associated administrative burden and costs for the parties to seek extensions and for the Registrar of Trade-marks to consider these requests. Therefore, the proposal is to increase the time limit for filing a counter-statement from one month to two months, and from one month to four months for filing opponent's evidence under Rule 41 and applicant's evidence under Rule 42.

This would ensure an efficient procedure where parties would have sufficient time set out in the Regulations to prepare their documents without the administrative burden and cost for requesting additional time extensions. CIPO would subsequently amend its current practice and reduce the amount of time extensions it normally grants for parties to meet their obligations to submit documents.

(b) Other minor amendments

The proposal includes several other minor amendments aimed at improving the opposition procedure as well as reducing costs for parties. First, it is proposed that the Trade-marks Regulations (1996) facilitate communication between parties by allowing the use of courier services and other means as agreed by the parties. Second, the proposal seeks to remove fees currently charged to clients for amending the trade-marks register. It is estimated that this change would affect about 17 000 applications annually, resulting in savings of up to $0.85M per year to clients. Finally, it is proposed that CIPO would no longer charge a fee ($35 for each certificate, plus other related charges) for certified copies that clients need to provide to the Federal Court, should they wish to pursue their rights in the judicial system. It is difficult to quantify the overall estimated savings, as that would depend on the number of trade-mark cases in the Federal Court.

Amendments to the Industrial Design Regulations, the Integrated Circuit Topography Regulations, and the Copyright Regulations

It is proposed that the Industrial Design Regulations, the Copyright Regulations, and the Integrated Circuit Topography Regulations be amended to allow CIPO to provide free certified copies of documents to the Federal Court and therefore reduce the financial burden on owners or applicants wishing to pursue their rights.

It is also proposed that the rules of correspondence regarding receipt of mail in the Integrated Circuit Topography Regulations be amended. Currently, the Regulations provide only for the physical delivery of documents and does not allow for correspondence by other means of transmission. The proposed amendment seeks to modernize the relevant provisions.

Alternatives

CIPO has considered the following options:

(a) Small entity regime

Option 1. Do not adopt the proposed amendments (status quo)

This would leave the small entity regime in the Patent Rules unchanged. However, since the Dutch Industries court decision, patent applicants/holders have been reluctant to take advantage of the financial incentive given to small entities. The risk of losing rights to a patent if challenged in court over the uncertainty of the small entity regime is too high. The status quo would therefore continue to discourage small entities from taking advantage of the regime specifically aimed at encouraging those with limited financial means to use the patent system.

Option 2. Abolish the small entity regime

The small entity regime was created as an incentive for small businesses and universities to seek patent rights and capitalize on these rights thereafter. Similarly, the Government of Canada has created numerous programs, such as the Small Business Financing Program and Technology Partnership Canada, to ensure that small businesses and universities thrive. Abolishing the small entity regime would therefore not be in line with the Government of Canada's general goal of providing assistance to small businesses and universities.

(b) Other proposed amendments

Option: Do not adopt the proposed amendments (status quo)

The proposed amendments are in line with the Government's initiative on Smart Regulation and the PBRI by, among other things, streamlining procedures, removing the necessity to file in two different formats, and abolishing formalities that require fee payments. Adopting the status quo would imply that applicants and intellectual property rights holders would continue to face the same administrative burden and bear unnecessary costs.

Benefits and costs

Small entity regime

The small entity regime represents a cost saving of approximately $3,000 per patent. Furthermore, an improved small entity regime would bring additional benefits to applicants/patentees, such as

— clearer regulations and processes related to the small entity regime, thereby reducing the grounds on which patent rights could be challenged on the basis of an incorrectly paid fee;

— a more user-friendly, fair and flexible small entity regime with a clear definition of who can claim small entity status and what must be filed in order to benefit from paying reduced fees; and

— a comprehensive relief mechanism available to those who incorrectly and inadvertently pay small entity fees.

The loss in potential revenues for CIPO would be managed within its operations.

Other proposed amendments

Proposed changes to the Patent Rules, the Trade-marks Regulations (1996), the Copyright Regulations, the Industrial Design Regulations and the Integrated Circuit Topography Regulations will improve the intellectual property regulatory regime, making it more user-friendly, cost-effective and responsive to clients' needs by

— clarifying existing office practices and streamlining processes for the trade-marks opposition process, thereby reducing both the time and expense incurred by applicants, as well as reducing the administrative handling of opposition cases;

— harmonizing certain technical requirements with international standards, thereby reducing duplication and client workload;

— eliminating the fee for making amendments to the trade-mark register, which will affect about 17 000 applications, resulting in savings to clients of approximately $0.85M per year;

— modifying the requirement that applicants register with CIPO evidence of transfers and changes in name in instances where an applicant is not the inventor, which will impact about 37 000 applicants, resulting in savings to clients of approximately $3.7M per year; and

— eliminating the fee for certified copies of documents to the Federal Court, resulting in monetary savings to clients involved in trade-marks, industrial designs and integrated circuit topography disputes.

Consultation

On May 3, 2006, CIPO began a three-week public consultation on the proposed amendments via its Web site. CIPO also sent letters to the following stakeholder groups, informing them of the consultation process and inviting their comments: the International Association for the Protection of Intellectual Property, the Association of Universities and Colleges of Canada, the Canadian Bar Association (CBA), the Canadian Federation of Independent Businesses (CFIB), the International Federation of Intellectual Property Attorneys, the Intellectual Property Institute of Canada (IPIC), the Licensing Executives Society, the International Trademark Association, and the Canadian Chamber of Commerce.

CIPO received five submissions.

There were divergent views on the proposed amendments to the "small entity" regime. On the one hand, the CFIB, an organization representing 105 000 small and medium-sized business owners, supports the proposed amendments, as they lessen the burden, financial and regulatory, to their businesses. On the other hand, IPIC, a professional organization whose members include a large majority of patent agents, submitted that the small entity provisions should be repealed, as patent applicants/holders could lose their patent rights if the fee structure is not followed. In keeping with the overall strategy to help small and medium enterprises and universities, the intention is to keep the policy that the Government introduced in 1985 to entice small entities and universities to use the patent system but to minimize the risk by proposing a relief mechanism to address IPIC's concerns.

Moreover, IPIC and CBA held that the proposed definition, although more precise than the current definition, could be subject to varying interpretation. However, prior informal discussions with stakeholders, including IPIC, showed that it was quite difficult to find an all-encompassing definition without entering into a long list of what should or should not be covered under the small entity regime. CFIB submitted that it favours simplicity, as it can be very difficult for entrepreneurs to understand all the obligations required in order to comply properly. Therefore, to keep the regime simple and user-friendly, it is intended that the proposal provide a general definition.

Other comments were directed towards minor aspects of the amendments. In many instances, the stakeholders' views were taken into account and resulted in amendments to the proposed regulations. For example, additional provisions were added to the proposal with respect to trade-marks to respond to IPIC's issue of "lost mail" by courier companies and to clarify when service is deemed effected on the opposing party. Similarly, at the request of IPIC, the proposed Patent Rules were amended to clarify that any amendment to a sequence listing, whether adding an original one or replacing an existing one, must not go beyond the original disclosure so as not to increase the scope of patent protection.

Some of the concerns expressed by stakeholders were dissipated after a meeting with CIPO officials. For example, IPIC was in favour of the proposed trade-mark amendments regarding extensions of time after CIPO officials assured them that these amendments would be accompanied with modifications to the practice notice.

Finally, CIPO received comments that were not within the purview of the proposed amendments. For example, some stakeholders expressed their concerns regarding the reliability of electronic documents. CIPO recognizes the importance of keeping the documents safe from the threat of being tampered with and continuously strives through its office practice to improve its information technology systems. Similarly, CBA recommended that CIPO inform its clients of any changes to the PCT standard for sequence listings, which CIPO intends to do through the posting of practice notices on its Web site.

Compliance and enforcement

These Rules would be enforced by application of existing provisions in the Patent Act, the Trade-marks Act, the Industrial Design Act, the Integrated Circuit Topography Act and the Copyright Act.

There would be no additional compliance and enforcement costs required to monitor and enforce these regulatory changes.

Contact

Denis Wong, Acting Chief, Legislative, Regulatory and Policy Affairs, Corporate Strategies Branch, Canadian Intellectual Property Office, Place du Portage, Phase II, Room 4023B, 50 Victoria Street, Gatineau, Quebec K1A 0C9, 819-934-4257 (telephone), 819-997-5052 (fax), wong.denis@ic.gc.ca (email).

PROPOSED REGULATORY TEXT

Notice is hereby given, that the Governor in Council, pursuant to section 12 (see footnote a) of the Patent Act, and section 12 (see footnote b) of the Patent Act as it read immediately before October 1, 1989, proposes to make the annexed Rules Amending the 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 Scott Vasudev, Canadian Intellectual Property Office, 50 Victoria Street, Place du Portage I, Gatineau, Quebec K1A 0C9 (tel: 819-997-3055; fax: 819-994-1989; e-mail: Vasudev.Scott@ic.gc.ca).

Ottawa, December 14, 2006

MARY O'NEILL
Assistant Clerk of the Privy Council

RULES AMENDING THE PATENT RULES

AMENDMENTS

1. (1) The definitions "amino acids", "nucleotides" and "small entity" in section 2 of the Patent Rules (see footnote 1) are repealed.

(2) The definitions "amino acid sequence", "nucleotide sequence" and "sequence listing" in section 2 of the Rules are replaced by the following:

"amino acid sequence" has the same meaning as in the PCT sequence listing standard; (séquence d'acides aminés)

"nucleotide sequence" has the same meaning as in the PCT sequence listing standard; (séquence de nucléotides)

"sequence listing" has the same meaning as in the PCT sequence listing standard; (listage des séquences)

(3) Section 2 of the Rules is amended by adding the following in alphabetical order:

"PCT sequence listing standard" means the Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications under the PCT provided for in the Administrative Instructions under the Patent Cooperation Treaty; (Norme PCT de listages des séquences)

2. Section 3 of the Rules is replaced by the following:

3. (1) If 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.

(2) The appropriate fee on filing an application under subsection 27(2) of the Act is

(a) if a small entity declaration is filed in accordance with section 3.01, the small entity fee set out in item 1 of Schedule II; and

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

(3) The appropriate fee on requesting examination of an application under subsection 35(1) of the Act is

(a) if before the expiry of the applicable time prescribed by section 96 a small entity declaration is filed in respect of the application in accordance with section 3.01, the applicable small entity fee set out in item 3 of Schedule II; and

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

(4) In respect of a final fee under subsection 30(1) or (5), the appropriate basic fee is

(a) if before the expiry of the time prescribed by subsection 30(1) or (5) a small entity declaration is filed in respect of the application in accordance with section 3.01, the applicable small entity fee set out in item 6 of Schedule II; and

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

(5) The appropriate basic national fee under paragraph 58(1)(c) is

(a) if before the expiry of the time prescribed by subsection 58(3) a small entity declaration is filed in accordance with section 3.01, the small entity fee set out in item 10 of Schedule II; and

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

(6) The appropriate fee on requesting re-examination of a claim or claims in a patent under subsection 48.1(1) of the Act is

(a) the small entity fee set out in item 14 of Schedule II if

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

(7) In respect of a fee to maintain in effect under sections 99 and 154 an application filed on or after October 1, 1989, the appropriate fee is

(a) if before the expiry of the time prescribed for payment of the fee a small entity declaration is filed in accordance with section 3.01, the applicable small entity fee set out in item 30 of Schedule II; and

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

(8) In respect of a fee to maintain under sections 100, 101, 155 and 156 the rights accorded by a patent issued on the basis of an application filed on or after October 1, 1989, the appropriate fee is

(a) if before the expiry of the time prescribed for payment of the fee a small entity declaration is filed in accordance with section 3.01, the applicable small entity fee set out in item 31 of Schedule II; and

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

(9) In respect of a fee to maintain under subsections 182(1) and (3) the rights accorded by a patent issued on or after October 1, 1989 on the basis of an application filed before that date, the appropriate fee is

(a) if before the expiry of the time prescribed for payment of the fee a small entity declaration is filed in accordance with section 3.01, the applicable small entity fee set out in item 32 of Schedule II; and

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

3.01 (1) Subject to section 3.02, a small entity declaration

(a) shall be filed with the Commissioner by the authorized correspondent, in the case of an application, or by the patentee, in the case of a patent;

(b) may be filed as part of the petition or as a separate document;

(c) shall, if not filed as part of the petition, identify the application or patent to which it relates;

(d) shall contain a statement to the effect that the applicant or patentee believes that in accordance with subsection (2) they are entitled to pay fees at the small entity level in respect of that application or patent;

(e) shall be signed by the applicant or patentee or by a patent agent appointed by the applicant or patentee; and

(f) shall indicate the name of the applicant or patentee and, if applicable, the name of the patent agent signing the declaration.

(2) An applicant or patentee may pay fees at the small entity level in respect of an application or patent if

(a) in respect of an application other than a PCT national phase application or a patent issued on the basis of such an application, on the filing date of the application the applicant originally identified in the petition is a small entity in respect of the invention to which the application or patent relates; and

(b) in respect of a PCT national phase application or a patent issued on the basis of such an application, on the date when the requirements of subsection 58(1) and, if applicable, subsection 58(2) are complied with, the applicant who complies with those requirements is a small entity in respect of the invention to which the application or patent relates.

(3) For the purposes of subsection (2), "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) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or

(b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.

(4) For greater certainty, for the purposes of this section,

(a) a divisional application is considered to have the same filing date as the original application;

(b) a small entity declaration filed in respect of an original application on a date that is on or before the actual date of filing of a divisional application shall be considered to have also been filed on that date in respect of the divisional application; and

(c) a reissued patent is considered to be issued on the basis of the original application.

3.02 (1) A small entity declaration by a person, other than the patentee, requesting re-examination shall

(a) contain a statement to the effect that the person believes that, at the time of the request for re-examination, they are a small entity;

(b) be signed by the person or by a patent agent appointed by that person; and

(c) indicate the name of the person and, if applicable, the name of the patent agent signing the declaration.

(2) For the purposes of subsection (1), "small entity" means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees.

3. (1) Subsection 4(1) of the Rules is replaced by the following:

4. (1) The Commissioner shall, on request, refund fees in accordance with subsections (2) to (16).

(2) Subsection 4(6) of the Rules is replaced by the following:

(6) If a person pays a standard fee set out in an item of Schedule II, no refund shall be made solely for the reason that the appropriate fee is in fact the small entity fee set out in that item.

(3) Section 4 of the Rules is amended by adding the following after subsection (15).

(16) No refund shall be made unless the request is made before the expiry of three years after the day on which the payment was made.

4. Section 26 of the Rules is amended by adding the following after subsection (2).

(3) Except in respect of Part V, if the appropriate fee under subsection 3(3), (5), (7), (8) or (9) in respect of a proceeding or service is either a small entity fee or a standard fee, and if, after the coming into force of this subsection, a person pays the small entity fee but the applicant or patentee later becomes aware that the standard fee should have been paid, the Commissioner is authorized to extend the time fixed by these Rules for payment of the appropriate fee if the Commissioner is satisfied that the circumstances justify the extension.

(4) An extension may be authorized under subsection (3) only if the following conditions are satisfied:

(a) the applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and the subject application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid;

(b) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee as set out in Schedule II to the Patent Rules as they read at the time the small entity fee was paid; and

(c) the applicant or patentee pays the fee set out in item 22 of Schedule II in respect of each fee that is the subject of an application for such an extension.

5. The Rules are amended by adding the following after section 26:

26.1 (1) If, after the coming into force of this subsection, an applicant fails to comply with a notice of allowance requisitioning payment of the applicable final fee set out in paragraph 6(a) of Schedule II only because they paid in error the small entity fee instead of the standard fee referred to in paragraph 3(4)(b), the Commissioner is authorized to extend the 12-month period prescribed by section 98 or 152 to make a request for reinstatement in respect of that failure if the Commissioner is satisfied that the circumstances justify the extension.

(2) An extension may be authorized under subsection (1) only if the following conditions are satisfied:

(a) the applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and the subject application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid; and

(b) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee as set out in subparagraph 6(a)(i) of Schedule II to the Patent Rules as they read at the time the small entity fee was paid.

26.2 For greater certainty, if a time is fixed for doing anything by a provision of these Rules, the time fixed for doing that thing is the time that is fixed by that provision as extended by the Commissioner under section 26 or 26.1.

6. Section 27 of the Rules is replaced by the following:

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

7. Subsections 30(7) and (8) of the Rules are replaced by the following:

(7) If 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

(a) notify the applicant of that fact;

(b) notify the applicant that the notice is withdrawn;

(c) return the application to the examiner for further examination; and

(d) if the final fee has been paid, refund it.

(8) Subsection (7) does not apply in respect of an application that has been deemed to be abandoned under section 73 of the Act unless the application has been reinstated in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 97 or 151 of these Rules.

(9) After a notice is sent to the applicant in accordance with subsection (7),

(a) the notice that was sent in accordance with subsection (1) or (5) is deemed never to have been sent; and

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

(10) If an application has been abandoned under paragraph 73(1)(f) of the Act and reinstated,

(a) for the purposes of this section and section 32, any previous notice that was sent in accordance with subsection (1) or (5) is deemed never to have been sent; and

(b) if the final fee has already been paid and has not been refunded, any further notice sent in accordance with subsection (1) or (5) shall not requisition payment of the final fee.

(11) Subsection 26(1) does not apply in respect of the times set out in subsections (1) and (5).

8. Section 33 of the Rules is renumbered as subsection 33(1) and is amended by adding the following:

(2) If an application has been abandoned under paragraph 73(1)(f) of the Act and reinstated,

(a) subsection (1) does not apply; and

(b) no amendment may be made to an application after a new notice is sent in accordance with subsection 30(1) or (5).

9. Section 37 of the Rules is repealed.

10. (1) Paragraph 58(1)(c) of the Rules is replaced by the following:

(c) pay the appropriate basic national fee prescribed by subsection 3(5).

(2) Paragraph 58(3)(b) of the Rules is replaced by the following:

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

(3) Subsection 58(4) of the Rules is replaced by the following:

(4) If 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 either

(a) a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful, or

(b) a new translation together with a statement by the translator to the effect that, to the best of the translator's knowledge, the new translation is complete and faithful.

(4) Section 58 of the Rules is amended by adding the following after subsection (5.1):

(5.2) The Commissioner is not authorized under subsection 26(1) to extend the time prescribed by subsection (5.1) beyond the later of the expiry of the 6-month period after the requisition is made and the expiry of the 42-month period after the priority date.

(5) Subsection 58(7) of the Rules is replaced by the following:

(7) Subsection 26(1) does not apply in respect of the times specified in subsection (3).

(6) Section 58 of the Rules is amended by adding the following after subsection (9):

(10) Once an international application becomes a PCT national phase application, it may not become a further PCT national phase application unless the earlier PCT national phase application has been withdrawn.

11. Section 59.2 of the Rules is renumbered as subsection 59.2(1) and is amended by adding the following:

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

12. Section 62 of the Rules is repealed.

13. Section 68 of the Rules is amended by adding the following after subsection (2):

(3) Documents filed in electronic form in connection with patents and applications shall be in an electronic format specified by the Commissioner in the Canadian Patent Office Record.

(4) If a document is initially filed in an electronic format not specified in the Canadian Patent Office Record, it shall be replaced by a document in a specified format and a statement shall be filed to the effect that the replacement document is the same as the document initially filed.

14. Subsection 69(3) of the Rules is replaced by the following:

(3) Subject to subsections (4) and (5) and except as otherwise provided by these Rules, the margins of the pages referred to in subsections (1) and (2) must be completely blank.

15. Subsection 71(2) of the Rules is replaced by the following:

(2) If the applicant provides a translation of a document into either English or French in accordance with subsection (1) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide either

(a) a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful, or

(b) a new translation together with a statement by the translator to the effect that, to the best of the translator's knowledge, the new translation is complete and faithful.

16. Section 77 of the Rules is replaced by the following:

77. Subject to sections 78 and 78.1, the petition shall follow the form and the instructions for its completion set out in Form 3 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

17. Section 78 of the English version of the Rules is replaced by the following:

78. For the purposes of section 29 of the Act, an appointment of a representative in Canada shall be included in the petition in accordance with section 5 of Form 3 of Schedule I or in a separate document.

18. The Rules are amended by adding the following after section 78:

Declaration

78.1 The declaration referred to in section 3 of Form 3 of Schedule I shall be included in the petition or be submitted as a separate document.

19. (1) Paragraph 80(1)(a) of the Rules is replaced by the following:

(a) state the title of the invention, which shall be short and precise and shall not include a trade-mark, coined word or personal name;

(2) Paragraph 80(1)(g) of the Rules is replaced by the following:

(g) contain a sequence listing where required by subsection 111(1).

20. Subsection 86(3) of the Rules is replaced by the following:

(3) If the application contains a sequence listing, the claims may refer to sequences represented in the sequence listing by the sequence identifier and preceded by "SEQ ID NO:".

(3.1) For the purposes of subsection (3), "sequence identifier" has the same meaning as in the PCT sequence listing standard.

21. Paragraph 93(e) of the Rules is replaced by the following:

(e) either

22. Section 94 of the Rules is replaced by the following:

94. (1) If on the expiry of the applicable time prescribed under subsection (2) or (3) an application does not comply with the applicable requirements set out in subsection (2) or (3), the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those requirements, and to pay the fee set out in item 2 of Schedule II, before the expiry of the later of the 3-month period after the date of the notice and the 12-month period after the filing date of the application.

(2) In respect of an application other than a PCT national phase application, for the purposes of subsection (1),

(a) the time is the 15-month period after the filing date of the application or, if a request for priority has been made in respect of the application, the 15-month period after the earliest filing date of any previously regularly filed application on which the request for priority is based; and

(b) the requirements are that

(3) In respect of a PCT national phase application, for the purposes of subsection (1),

(a) the time is the 3-month period after the applicant complies with the requirements of subsection 58(1) and if applicable, subsection 58(2); and

(b) the requirements are that the application contain the information or documents listed below:

(4) Subsection 26(1) does not apply in respect of the times set out in subsections (2) and (3).

23. Section 98 of the Rules is replaced by the following:

98. (1) For an application deemed to be abandoned under section 73 of the Act to be reinstated, the applicant shall, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 97, make a request for reinstatement to the Commissioner, take the action that should have been taken in order to avoid the abandonment and pay the fee set out in item 7 of Schedule II, before the expiry of the 12-month period after the date on which the application is deemed to be abandoned as a result of that failure.

(2) For the purposes of subsection (1), if an application is deemed to be abandoned for failure to pay a fee referred to in subsection 3(3), (4) or (7), for the applicant to take the action that should have been taken in order to avoid the abandonment, the applicant shall, before the expiry of the time prescribed by subsection (1), either

(a) pay the applicable standard fee, or

(b) file a small entity declaration in respect of the application in accordance with section 3.01 and pay the applicable small entity fee.

24. Sections 111 to 131 of the Rules are replaced by the following:

111. (1) If an application contains disclosure of a nucleotide or amino acid sequence other than a sequence identified as forming a part of the prior art, the description shall contain, in respect of that sequence, a sequence listing in electronic form, and both the sequence listing and the electronic form shall comply with the PCT sequence listing standard.

(2) If an application originally filed without a sequence listing is amended to include a sequence listing, the applicant shall file a statement to the effect that the listing does not go beyond the disclosure in the application as filed.

(3) If a sequence listing initially filed in paper form 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 shall file a statement to the effect that the replacement listing does not go beyond the disclosure in the application as filed.

25. Subsection 136(2) of the Rules is replaced by the following:

(2) If the applicant provides a translation of a document into either English or French in accordance with subsection (1) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide either

(a) a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful, or

(b) a new translation together with a statement by the translator to the effect that, to the best of the translator's knowledge, the new translation is complete and faithful.

26. Section 152 of the Rules is replaced by the following:

152. (1) For an application deemed to be abandoned under section 73 of the Act to be reinstated, the applicant must, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 151, make a request for reinstatement to the Commissioner, take the action that should have been taken in order to avoid the abandonment and pay the fee set out in item 7 of Schedule II, before the expiry of the 12-month period after the date on which the application is deemed to be abandoned as a result of that failure.

(2) For the purposes of subsection (1), if an application is deemed to be abandoned for failure to pay a fee referred to in subsection 3(4) or (7), for the applicant to take the action that should have been taken in order to avoid the abandonment, the applicant must, before the expiry of the time prescribed by subsection (1), either

(a) pay the applicable standard fee, or

(b) file a small entity declaration in respect of the application in accordance with section 3.01 and pay the applicable small entity fee.

27. Subsection 172(2) of the Rules is replaced by the following:

(2) If the applicant provides a translation of a document into either English or French in accordance with subsection (1) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide either

(a) a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful, or

(b) a new translation together with a statement by the translator to the effect that, to the best of the translator's knowledge, the new translation is complete and faithful.

28. Subsection 3(2) of Form 3 of Schedule I to the Rules is replaced by the following:

(2) The applicant is entitled to apply for and be granted a patent by virtue of the following:

29. The third paragraph of the instructions to Form 3 of Schedule I to the Rules is replaced by the following:

The applicant shall include in the petition or submit as a separate document a declaration in accordance with either subsection 3(1) or (2). If the subsection 3(2) declaration is included or submitted, it must be worded as above, with such inclusion, omission, repetition and re-ordering of the matters listed as items 3(2)(i) to (viii) as is necessary to explain the applicant's entitlement. Item numbers need not be included. This declaration is applicable only to those events that have occurred before the filing date. The possible kinds of transfer of entitlement in item 3(2)(vii) include merger, acquisition, inheritance, donation and so forth. If there has been a succession of transfers from the inventor, the order in which transfers are listed should follow the actual succession of transfers, and items may be included more than once, as necessary to explain the applicant's entitlement.

30. Item 1 of Schedule II to the Rules is replaced by the following:

31. Item 3 of Schedule II to the Rules is replaced by the following:

32. Item 6 of Schedule II to the Rules is replaced by the following:

33. Item 10 of Schedule II to the Rules is replaced by the following:

34. Item 14 of Schedule II to the Rules is replaced by the following:

35. Item 21 of Schedule II to the Rules is replaced by the following:

36. Items 26 and 26.1 of Schedule II to the Rules are replaced by the following:

37. Items 30 to 32 of Schedule II to the Rules are replaced by the following:

38. The Rules are amended by replacing the expression "Section 26" with the expression "Subsection 26(1)" wherever it occurs in the following provisions:

(a) subsection 88(5);

(b) subsection 96(3);

(c) section 102;

(d) subsection 104(5);

(e) subsection 142(2);

(f) subsection 148(2);

(g) subsection 150(3);

(h) section 157; and

(i) subsection 160(5).

TRANSITIONAL PROVISIONS

39. In respect of fees paid before the coming into force of these Rules, if a fee was paid by an applicant or patentee on the basis that the applicant or patentee was not a small entity, no refund shall be made solely for the reason that it was later determined to be a small entity.

40. In respect of an application, other than a PCT national phase application, filed before the coming into force of these Rules, the applicant may substitute the requirements of section 37 of the Patent Rules as they read immediately before the coming into force of these Rules and of Form 3 of Schedule I to the Patent Rules as they read immediately before the coming into force of these Rules for the requirements of Form 3 of Schedule I to the Patent Rules.

41. In respect of a PCT national phase application filed before the coming into force of these Rules, the applicant must either comply with the requirements of section 37 of the Patent Rules as they read immediately before the coming into force of these Rules or file a declaration as to the applicant's entitlement, as at the international filing date, to apply for and be granted a patent, in accordance with Rule 4.17 of the Regulations under the PCT.

42. In respect of a PCT national phase application filed before the coming into force of these Rules, the applicant may substitute the requirements of section 62 of the Patent Rules as they read immediately before the coming into force of these Rules for the requirements of section 94 of the Patent Rules.

43. In respect of applications filed before the coming into force of these Rules, the applicant may substitute the requirements of sections 111 to 131 of the Patent Rules as they read immediately before the coming into force of these Rules for the requirements of section 111 of the Patent Rules.

COMING INTO FORCE

44. These Rules come into force 30 days after the day on which they are registered.

[51-1-o]

Footnote a

S.C. 1993, c. 15, s. 29

Footnote b

R.S., c. 33 (3rd Supp.), s. 3

Footnote 1

SOR/96-423

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