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What you should know!
New regulations amending the Patent Rules
Rules amending the Patent Rules were published in the Canada Gazette, Part II, Vol. 141, No. 10, on May 16, 2007, and came into force on June 2, 2007. In order to facilitate a smooth transition, the Patent Office has highlighted several key changes in the new regulations, as listed below, that may affect patent applicants/holders. The following does not offer legislative advice — it is an operational view of the impact of the changes. For a complete review of the new regulations, please consult the CIPO website.
- Small entity definition: This definition can now be found in subsection 3.01 (3) of the Patent Rules. "Small entity" is now defined as 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. It also excludes entities that have transferred or licensed any right in the invention to an entity that has more than 50 employees, unless that entity is a university. Similarly, it excludes entities that have an obligation, other than a contingent obligation, to transfer or licence any right in the invention to other than a small entity.
- Small entity declaration: Subsection 3.01 (1) of the Patent Rules identifies the specific requirements for a small entity declaration. Although the declaration may be submitted as part of the petition, the Office encourages you to submit it as a separate document since the small entity declaration, unlike the petition, requires a signature. A statement indicating that the applicant/patentee "believes that they are entitled to pay fees at the small entity level" must also be included in the declaration. While the Patent Office will not refuse previously submitted small entity declarations, i.e. those submitted prior to June 2, they recommend that clients submit a new small entity declaration following the requirements of subsection 3.01 (1). It is important that the small entity declaration be signed. The Patent Office is in the process of creating a Small Entity Declaration Tool that will soon be available on the CIPO website to facilitate this process.
- Relief payment: Please note that pursuant to section 26 of the Patent Rules, the Commissioner of Patents is now authorized to grant patent applicants/holders an extension of time to allow correction of fees mistakenly paid at the small entity level providing certain conditions as set out in subsection 26(4) of said regulations are satisfied. Please note that this new provision applies only to fees paid on or after June 2, 2007.
- Changes in title or ownership: Whereas prior to June 2, 2007, any changes in title or ownership that occurred prior to the filing of an application for a patent required evidence, applicants now need only provide a declaration indicative of the chain of title events as per subsection 3(2) of Form 3 of Schedule I to the Rules. For PCT applications entering the national phase in Canada, a declaration as to the applicant's entitlement to apply for and be granted a patent must be submitted in accordance with Rule 4.17 of the Regulations under the PCT. For non-PCT applications, the declaration can be included in the petition or submitted as a separate document. For PCT national entries, the declaration may have been included in the PCT request or can be submitted directly to the designated Office as a separate document.
- Sequence Listing: The Canadian format for sequence listing is now in line with the Patent Cooperation Treaty (PCT) standard.
- Re-examination: If a person, other than the patentee, requests re-examination, the prescribed fee will be based on the entity size of the requester at the time of the request, and no longer on the entity size of the applicant. Please note that in order to benefit from the small entity fee, if the requester is a person other than the patentee, a signed small entity declaration will be required.
In the period following the coming into force of the new regulations, the Patent Office has been working alongside clients to make the processes affected by the new regulations as smooth as possible. The support from, and open communication with, patent holders/applicants is well appreciated. For any questions or comments you may have, please contact, Andrée Patry in Patent Office Operations, or Krista Pearce, the legislative contact in the Office. For general information, please contact the CIPO Client Service Centre at 1-866-997-1936.
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