Patent Act (R.S.C., 1985, c. P-4)

Full Document:  

Act current to 2018-07-05 and last amended on 2017-09-21. Previous Versions

AMENDMENTS NOT IN FORCE

  • — 2014, c. 39, s. 114, as amended by 2017, c. 6, s. 135(2)

    • 114 The definition filing date in section 2 of the Patent Act is replaced by the following:

      filing date

      filing date means the date on which an application for a patent in Canada is filed, as determined in accordance with section 28 or subsection 28.01(2) or 36(4); (date de dépôt)

  • — 2014, c. 39, s. 115

    • 115 Subsection 4(2) of the Act is replaced by the following:

      • Duties of Commissioner

        (2) The Commissioner shall receive all applications, fees, and documents relating to patents, shall perform and do all acts and things requisite for the granting and issuing of patents, shall have the charge and custody of the books, records 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.

  • — 2014, c. 39, s. 117

    • 1993, c. 15, s. 27

      117 Sections 8.1 and 8.2 of the Act are replaced by the following:

      • Electronic form and means
        • 8.1 (1) Subject to the regulations, any document, information or fee that is submitted to the Commissioner or the Patent Office under this Act may be submitted in any electronic form, and by any electronic means, that is specified by the Commissioner.

        • Collection, storage, etc.

          (2) Subject to the regulations, the Commissioner and the Patent Office may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information or to seal a patent or other document.

        • Definition of electronic

          (3) In this section, electronic, in reference to a form or means, includes optical, magnetic and other similar forms or means.

  • — 2014, c. 39, s. 118

      • 118 (1) Subsection 12(1) of the Act is amended by adding the following after paragraph (a):

        • (a.1) defining drawing for the purposes of this Act and respecting the circumstances in which certain drawings may be furnished as part of applications for patents;

        • (a.2) respecting abstracts in applications for patents, including authorizing the Commissioner to amend or replace abstracts;

        • (a.3) respecting the consequences of a failure to comply with a notice given under subsection 27(7);

        • (a.4) respecting the processing and examination of applications for patents;

      • R.S., c. 33 (3rd Supp.), s. 3

        (2) Paragraph 12(1)(c) of the Act is replaced by the following:

        • (c) respecting the registration of transmissions, disclaimers, judgments or other documents relating to a patent or an application for a patent;

        • (c.1) respecting the recording of transfers of patents or applications for patents;

      • (3) Subsection 12(1) of the Act is amended by adding the following after paragraph (i):

        • (i.1) for carrying into effect the Patent Law Treaty, done at Geneva on June 1, 2000, including any amendments and revisions made from time to time to which Canada is a party;

      • 1993, c. 15, s. 29(2)

        (4) Paragraphs 12(1)(j.1) to (j.5) of the Act are replaced by the following:

        • (j.01) respecting the circumstances in which an applicant, patentee or other person may or must be represented by a patent agent or other person in business before the Patent Office;

        • (j.1) respecting the submission, including in electronic form and by electronic means, of documents and information to the Commissioner or the Patent Office, including the time at which they are deemed to be received by the Commissioner or the Patent Office;

        • (j.2) respecting the use of electronic means for the purposes of subsection 8.1(2);

        • (j.3) respecting the withdrawal of an application for a patent 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 is to be withdrawn;

        • (j.31) respecting additions to the specification and additions of drawings for the purposes of subsection 28.01(1);

        • (j.4) respecting requests for priority, including

          • (i) the period within which priority is to be requested,

          • (ii) the information and documents that are to be submitted in support of requests for priority,

          • (iii) the period within which that information and those documents are to be submitted,

          • (iv) the withdrawal of requests for priority, and

          • (v) the correction of requests for priority or of information or documents submitted in support of them and the effect of corrections on the duration of the confidentiality period referred to in subsection 10(3);

        • (j.41) respecting the application of subsection 28.4(6);

        • (j.5) for the purposes of section 36,

          • (i) defining one invention, and

          • (ii) respecting requirements for divisional applications;

      • 1993, c. 15, s. 29(2)

        (5) Paragraph 12(1)(j.8) of the Act is replaced by the following:

        • (j.71) respecting amendments to the specification or drawings for the purposes of subsection 38.2(1);

        • (j.72) respecting the replacement of all or part of the text matter of a specification or drawing contained in an application for a patent that is in a language other than English or French with a translation into English or French, for the purposes of paragraph 38.2(3)(b);

        • (j.73) respecting the conditions set out in subsection 46(5), including the circumstances in which subparagraph 46(5)(a)(ii) and paragraph 46(5)(b) do not apply;

        • (j.74) establishing a period for the purposes of subsection 55.11(2);

        • (j.75) establishing a period for the purposes of subsection 55.11(3);

        • (j.76) respecting the reinstatement of applications for patents under subsection 73(3), including the circumstances in which subparagraph 73(3)(a)(ii) and paragraph 73(3)(b) do not apply;

        • (j.77) respecting communications between the Commissioner and any other person;

        • (j.8) authorizing the Commissioner to, during or after the end of the time period fixed under this Act for doing anything, extend that time period, subject to any prescribed terms and conditions, if the Commissioner considers that the circumstances justify the extension;

  • — 2014, c. 39, s. 119

    • R.S., c. 33 (3rd Supp.), s. 4

      119 Section 15 of the Act is replaced by the following:

      • Register of patent agents

        15 A register shall be kept in the Patent Office, on which shall be entered the names of all persons and firms that may act as patent agents.

      • Representation by patent agents

        15.1 In the prescribed circumstances, an applicant, patentee or other person shall be represented by a patent agent in all business before the Patent Office.

  • — 2014, c. 39, s. 120

    • 1993, c. 15, s. 31
      • 120 (1) Subsection 27(2) of the French version of the Act is replaced by the following:

        • Dépôt de la demande

          (2) L’inventeur ou son représentant légal doit, conformément aux règlements, déposer une demande qui comprend une pétition et un mémoire descriptif de l’invention et payer la taxe réglementaire.

      • 1993, c. 15, s. 31

        (2) Subsections 27(6) and (7) of the Act are replaced by the following:

        • Drawings

          (5.1) In the case of a machine, or in any other case in which an invention admits of illustration by means of drawings, the applicant shall, as part of the application, furnish drawings of the invention that clearly show all parts of the invention.

        • Particulars

          (5.2) Each drawing is to include references corresponding with the specification. The Commissioner may, as the Commissioner sees fit, require further drawings or dispense with the requirement to furnish any drawing.

        • Requirements not met

          (6) If, on its filing date, an application does not meet the requirements of subsection (2), other than the payment of the application fee, the Commissioner shall, by notice, require the applicant to meet those requirements on or before the prescribed date.

        • Application fee not paid

          (7) If, on the filing date of the application, the application fee is not paid, the Commissioner shall, by notice, require the applicant to pay the application fee and the prescribed late fee on or before the prescribed date.

  • — 2014, c. 39, s. 121

    • R.S., c. 33 (3rd Supp.), s. 9; 1993, c. 15, ss. 32 and 33

      121 Sections 27.1 and 28 of the Act are replaced by the following:

      • Reference to previously filed application
        • 27.01 (1) Subject to the prescribed requirements and within the prescribed period, an applicant may submit to the Commissioner a statement to the effect that a reference to a specified previously filed application for a patent is being submitted instead of all or part of the specification contained in or a drawing that is required to be contained in the application. The prescribed period shall not end later than six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1).

        • Specification or drawing deemed in application

          (2) If the applicant submits the statement within the prescribed period and meets the prescribed requirements, the specification or drawing in the previously filed application is deemed to have been contained in the application on the date on which the Commissioner receives the statement.

      • Maintenance fees
        • 27.1 (1) To maintain an application for a patent in effect, the prescribed fees shall be paid on or before the prescribed dates.

        • Late fee and notice

          (2) If a prescribed fee is not paid on or before the applicable prescribed date,

          • (a) the prescribed late fee shall be paid, in addition to the prescribed fee; and

          • (b) the Commissioner shall send a notice to the applicant stating that the application will be deemed to be abandoned if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.

        • Prescribed fee deemed paid on prescribed date

          (3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent, the prescribed fee and late fee are paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the prescribed fee shall be deemed to have been paid on the applicable prescribed date.

        • Patent not invalid

          (4) A patent shall not be declared invalid by reason only that the application on the basis of which the patent was granted was not maintained in effect.

      • Filing date
        • 28 (1) Subject to subsections 28.01(2) and 36(4), the filing date of an application for a patent in Canada is the date on which the Commissioner receives the prescribed documents and information or, if they are received on different dates, the latest of those dates.

        • Outstanding documents and information

          (2) The Commissioner shall notify an applicant whose application does not contain all of the documents and information referred to in subsection (1) of the documents and information that are outstanding and require that the applicant submit them within two months after the date of the notice.

        • Application deemed never filed

          (3) If the Commissioner does not receive the outstanding documents and information within that two-month period, the application is deemed never to have been filed. However, any fees paid in respect of the application shall not be refunded to the applicant.

      • Addition to specification or addition of drawing to application
        • 28.01 (1) Subject to the regulations, an applicant may, within the prescribed period, add to the specification that is contained in their application or add a drawing to their application for a patent by submitting the addition to the Commissioner along with a statement by the applicant indicating that the addition is being made under this section. The prescribed period shall not end later than six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1).

        • Filing date

          (2) If an applicant submits an addition to the Commissioner under subsection (1) and the addition is not withdrawn within the prescribed period, the filing date of the application is the later of the date on which the Commissioner receives the addition and the filing date referred to in subsection 28(1), unless

          • (a) the applicant has, on the earliest date on which the Commissioner receives any document or information under subsection 28(1), made a request for priority in respect of the application under section 28.4;

          • (b) the addition is completely contained in a previously regularly filed application on which the request for priority is based;

          • (c) the applicant requests, in accordance with the regulations, that the filing date be the filing date referred to in subsection 28(1); and

          • (d) the applicant complies with any prescribed requirements.

        • Addition deemed in application

          (3) In the circumstances set out in paragraphs (2)(a) to (d), the addition is deemed to have been contained in the application on its filing date for the purposes of subsections 38.2(2) and (3).

  • — 2014, c. 39, s. 122

    • 1993, c. 15, s. 33

      122 Paragraph 28.1(1)(b) of the French version of the Act is replaced by the following:

      • b) à cette date, il s’est écoulé, depuis la date de dépôt de la demande déposée antérieurement, au plus douze mois;

  • — 2014, c. 39, s. 123

    • 1993, c. 15, s. 33

      123 Paragraph 28.2(1)(a) of the Act is replaced by the following:

      • (a) before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;

  • — 2014, c. 39, s. 124

    • 1993, c. 15, s. 33

      124 Paragraph 28.3(a) of the Act is replaced by the following:

      • (a) information disclosed before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and

  • — 2014, c. 39, s. 125

    • 2001, c. 34, s. 63
      • 125 (1) Subsection 28.4(2) of the Act is replaced by the following:

        • Requirements for request

          (2) The request for priority shall be made in accordance with the regulations and the applicant shall submit to the Commissioner the filing date, the name of the country or office of filing and the number of each previously regularly filed application on which the request is based.

        • Request deemed never filed

          (2.1) A request for priority is deemed never to have been made if the request is not made in accordance with the regulations or if the applicant does not submit the information, other than the number of each previously regularly filed application, required under subsection (2).

      • 1993, c. 15, s. 33

        (2) Subsection 28.4(3) of the French version of the Act is replaced by the following:

        • Retrait de la demande

          (3) Le demandeur peut, selon les modalités réglementaires, retirer la demande de priorité à l’égard de la demande déposée antérieurement; si elle est fondée sur plusieurs demandes, il peut la retirer à l’égard de toutes celles-ci ou d’une ou de plusieurs d’entre elles.

      • 1993, c. 15, s. 33

        (3) The portion of paragraph 28.4(5)(a) of the Act before subparagraph (i) is replaced by the following:

        • (a) on the filing date of one of the following applications, as the case may be, more than 12 months have elapsed since the filing date of the previously regularly filed application:

      • 1993, c. 15, s. 33

        (4) The portion of paragraph 28.4(5)(b) of the English version of the Act before subparagraph (i) is replaced by the following:

        • (b) before the filing date of the application referred to in one of subparagraphs (a)(i) to (iv), as the case may be, another application

      • (5) Section 28.4 of the Act is amended by adding the following after subsection (5):

        • Filing date deemed to be within 12 months

          (6) Subject to the regulations, for the purposes of paragraph 28.1(1)(b) and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii), the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if

          • (a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application but within two months after the end of those 12 months; and

          • (b) the applicant, within the prescribed time,

            • (i) makes a request to the Commissioner for this subsection to apply,

            • (ii) states, in the request, that the failure to file the pending application or the co-pending application, as the case may be, within 12 months after the filing date of the previously regularly filed application was unintentional, and

            • (iii) complies with any prescribed requirements.

        • Powers of the Federal Court

          (7) If subsection (6) applies, the Federal Court may, by order, declare that subsection never to have produced its effects if the Federal Court determines that the failure referred to in subparagraph (6)(b)(ii) was intentional.

  • — 2014, c. 39, s. 127

    • 127 Paragraph 31(2)(a) of the Act is replaced by the following:

      • (a) an applicant has agreed in writing to transfer a patent, when granted, to another person or to a joint applicant and refuses to proceed with the application, or

  • — 2014, c. 39, s. 128

    • 1993, c. 15, s. 38

      128 Subsection 35(2) of the Act is replaced by the following:

      • Prescribed time

        (2) The request shall be made within the prescribed time and the prescribed fee shall be paid within that time.

      • Late fee and notice

        (3) If the request is not made or the prescribed fee is not paid within the prescribed time,

        • (a) the prescribed late fee shall be paid, in addition to the prescribed fee; and

        • (b) the Commissioner shall send a notice to the applicant stating that the application will be deemed to be abandoned if the request is not made and the prescribed fee and late fee are not paid before the end of two months after the date of the notice.

      • Request deemed made and prescribed fee deemed paid within prescribed time

        (4) If the request is made and the prescribed fee and late fee are paid before a notice is sent or, if a notice has been sent, the request is made and the prescribed fee and late fee are paid before the end of two months after the date of the notice, the request shall be deemed to have been made and the prescribed fee shall be deemed to have been paid within the prescribed time.

      • Required examination

        (5) The Commissioner may by a notice sent to the applicant, require that the request be made and the prescribed fee be paid within the prescribed time. However, the Commissioner is not authorized to send the notice if the prescribed time would end after the prescribed time referred to in subsection (2).

      • Non-application

        (6) If a notice is sent under subsection (5), subsections (2) to (4) do not apply.

  • — 2014, c. 39, s. 129

    • 1993, c. 15, s. 39

      129 Subsection 36(3) of the Act is replaced by the following:

      • Original application abandoned

        (3) If an original application mentioned in subsection (2) or (2.1) is deemed to be abandoned and is not reinstated, the time for filing a divisional application ends on the later of the day on which the original application is deemed to be abandoned and the end of the prescribed time referred to in subsection 73(3).

  • — 2014, c. 39, s. 130

    • R.S., c. 33 (3rd Supp.), s. 13; 1993, c. 15, s. 40

      130 The heading before section 37 and sections 37 and 38 of the Act are replaced by the following:

      Biological Materials

  • — 2014, c. 39, s. 131

    • 1993, c. 15, s. 41
      • 131 (1) Subsection 38.2(1) of the French version of the Act is replaced by the following:

        • Modification du mémoire descriptif et des dessins
          • 38.2 (1) Sous réserve des paragraphes (2) et (3) et des règlements, les dessins et le mémoire descriptif qui sont compris dans la demande de brevet peuvent être modifiés avant la délivrance du brevet.

      • 1993, c. 15, s. 41

        (2) Subsections 38.2(2) and (3) of the Act are replaced by the following:

        • Restriction

          (2) The specification and drawings may not be amended to add matter not reasonably to be inferred from the specification or drawings contained in the application on its filing date.

        • Language other than English or French

          (3) However, if all or part of the text matter of the specification or drawings contained in the application on its filing date is in a language other than English or French, the specification and drawings may not be amended to add matter not reasonably to be inferred from both

          • (a) the specification or drawings contained in the application on its filing date, and

          • (b) the specification or drawings contained in the application immediately after the text matter is replaced by an English or French translation, in accordance with the regulations.

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

          (4) Subsections (2) and (3) do not apply if it is admitted in the specification that the matter is prior art with respect to the application.

  • — 2014, c. 39, s. 132

    • R.S., c. 33 (3rd Supp.), s. 16; 1993, c. 15, s. 43

      132 Section 46 of the Act is replaced by the following:

      • Maintenance fees
        • 46 (1) To maintain the rights accorded by a patent issued under this Act in effect, the prescribed fees shall be paid on or before the prescribed dates.

        • Late fee and notice

          (2) If a prescribed fee is not paid on or before the applicable prescribed date,

          • (a) the prescribed late fee shall be paid, in addition to the prescribed fee; and

          • (b) the Commissioner shall send a notice to the patentee stating that the term limited for the duration of the patent will be deemed to have expired if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.

        • Prescribed fee deemed paid on prescribed date

          (3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent, the prescribed fee and late fee are paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the prescribed fee shall be deemed to have been paid on the applicable prescribed date.

        • Term limited deemed expired on prescribed date

          (4) If the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the term limited for the duration of the patent shall be deemed to have expired on the applicable prescribed date.

        • Subsection (4) deemed never to have produced its effects

          (5) Subject to the regulations, if the term limited for the duration of a patent is deemed to have expired under subsection (4), that subsection is deemed never to have produced its effects if

          • (a) the patentee, within the prescribed time,

            • (i) makes a request to the Commissioner for the term limited for the duration of the patent to never have been deemed to have expired,

            • (ii) states, in the request, the reasons for the failure to pay the prescribed fee and late fee before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, and

            • (iii) pays the prescribed fee, the late fee and any additional prescribed fee; and

          • (b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the patentee of this determination.

        • Powers of the Federal Court

          (6) If subsection (5) applies, the Federal Court may, by order, declare the term limited for the duration of the patent to have expired on the applicable prescribed date if the Federal Court determines either

          • (a) that the statement of the reasons referred to in subparagraph (5)(a)(ii) contains a material allegation that is untrue, or

          • (b) that, if paragraph (5)(b) applies, the failure referred to in subparagraph (5)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.

  • — 2014, c. 39, s. 133

    • R.S., c. 33 (3rd Supp.), s. 17
      • 133 (1) The portion of subsection 48(1) of the Act after paragraph (b) is replaced by the following:

        the patentee may, on payment of a prescribed fee, make a disclaimer of the parts that the patentee does not claim to hold by virtue of the patent or a transfer of the patent.

      • (2) Subsection 48(5) of the Act is repealed.

  • — 2014, c. 39, s. 134

    • R.S., c. 33 (3rd Supp.), ss. 19 and 20

      134 The heading before section 49 and sections 49 to 51 of the Act are replaced by the following:

      Transfers

      • Patent, application and right or interest in invention
        • 49 (1) A patent, an application for a patent, and the right or interest in an invention are transferable, in whole or in part.

        • Recording of transfer of application

          (2) The Commissioner shall, subject to the regulations, record the transfer of an application for a patent on the request of the applicant or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the application.

        • Recording of transfer of patent

          (3) The Commissioner shall, subject to the regulations, record the transfer of a patent on the request of the patentee or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the patent.

        • Transfer void

          (4) A transfer of a patent that has not been recorded is void against a subsequent transferee if the transfer to the subsequent transferee has been recorded.

        • Removal of recording

          (5) The Commissioner shall remove the recording of the transfer of an application for a patent or the transfer of a patent on receipt of evidence satisfactory to the Commissioner that the transfer should not have been recorded.

        • Limitation

          (6) The Commissioner is not authorized to remove the recording of a transfer of a patent for the reason only that the transferor had previously transferred the patent to another person.

  • — 2014, c. 39, s. 135

    • 1993, c. 15, s. 48

      135 Subsection 55(2) of the Act is replaced by the following:

      • Liability damage before patent is granted

        (2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the specification contained in the application for the patent became open to public inspection, in English or French, under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the specification became open to public inspection, in English or French, under that section.

  • — 2014, c. 39, s. 136

    • 136 The Act is amended by adding the following after section 55.1:

      • Exception — third party rights
        • 55.11 (1) This section applies only in respect of the following patents:

          • (a) a patent that was granted on the basis of an application

            • (i) in respect of which the prescribed fee referred to in subsection 27.1(2) was not paid on or before the applicable prescribed date referred to in that subsection, without taking into account subsection 27.1(3),

            • (ii) in respect of which a request referred to in subsection 35(2) was not made and the prescribed fee referred to in that subsection was not paid within the prescribed time referred to in that subsection, without taking into account subsection 35(4), or

            • (iii) that was deemed abandoned under paragraph 73(1)(a), (b), (e) or (f) or subsection 73(2);

          • (b) a patent that was granted on the basis of a divisional application that

            • (i) results, under subsection 36(2) or (2.1), from the division of an original application that is an application referred to in this paragraph or paragraph (a), and

            • (ii) was filed after the beginning of the period referred to in subsection (2) or, if it is earlier, the period referred to in subsection (3), that applies to the patent granted on the basis of the original application or that would apply to that patent if it were granted; and

          • (c) a patent in respect of which the prescribed fee referred to in subsection 46(2) was not paid on or before the applicable prescribed date referred to in that subsection, without taking into account subsection 46(3).

        • Act committed during period

          (2) No action for infringement of a patent lies against a person in respect of an act that would otherwise constitute an infringement of the patent if that act is committed in good faith by the person during a period that is established by regulations made under paragraph 12(1)(j.74).

        • Act committed after period or transfer

          (3) If, during a period established by regulations made under paragraph 12(1)(j.75), a person, in good faith, committed an act that would otherwise constitute an infringement of a patent or made serious and effective preparations to commit that act,

          • (a) no action for infringement of the patent lies against the person in respect of that act if the person commits it after that period but before the person transfers the business or the part of the business in the course of which the act was committed or the preparations were made; and

          • (b) no action for infringement of the patent lies, if the business or the part of the business in the course of which the act was committed or the preparations were made is transferred, against the transferee in respect of that act if the transferee commits it after the transfer but before the transferee subsequently transfers the business or the part of the business.

        • Subsequent acquisition

          (4) No action for infringement of a patent lies against a person in respect of the use or sale of a specific article, machine, manufacture or composition of matter if the person acquired the specific article, machine, manufacture or composition of matter, directly or indirectly, from a person who made it and against whom no action for infringement of the patent lies under subsection (2) or (3) for making that specific article, machine, manufacture or composition of matter.

  • — 2014, c. 39, s. 137

    • 1993, c. 15, s. 52
      • 137 (1) Subsection 73(1) of the Act is replaced by the following:

        • Deemed abandonment of applications
          • 73 (1) An application for a patent in Canada shall be deemed to be abandoned if

            • (a) the applicant does not reply in good faith, within the prescribed time, to any requisition made by an examiner in connection with an examination;

            • (b) the applicant does not comply with a notice given under subsection 27(6);

            • (c) the prescribed fee and late fee referred to in a notice sent under paragraph 27.1(2)(b) are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice;

            • (d) the request referred to in a notice sent under paragraph 35(3)(b) is not made and the prescribed fee and late fee referred to in that notice are not paid before the end of two months after the date of the notice;

            • (e) the request referred to in a notice sent under subsection 35(5) is not made and the prescribed fee referred to in that notice is not paid within the prescribed time; or

            • (f) the applicant does not pay the prescribed fees stated to be payable in a notice of allowance of patent within six months after the date of the notice.

      • 1993, c. 15, s. 52

        (2) Subsection 73(2) of the French version of the Act is replaced by the following:

        • Abandon

          (2) Elle est aussi réputée abandonnée dans les circonstances réglementaires.

      • 1993, c. 15, s. 52

        (3) Subsection 73(3) of the Act is replaced by the following:

        • Reinstatement

          (3) Subject to the regulations, an application that is deemed to be abandoned is reinstated if

          • (a) the applicant, within the prescribed time,

            • (i) makes a request for reinstatement to the Commissioner,

            • (ii) states, in the request, the reasons for the failure to take the action that should have been taken in order to avoid the abandonment,

            • (iii) takes the action that should have been taken in order to avoid the abandonment, and

            • (iv) pays the prescribed fee; and

          • (b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the applicant of this determination.

        • Powers of the Federal Court

          (3.1) The Federal Court may, by order, declare an application that is reinstated under subsection (3) to never have been reinstated if the Federal Court determines either

          • (a) that the statement of the reasons referred to in subparagraph (3)(a)(ii) contains a material allegation that is untrue, or

          • (b) that, if paragraph (3)(b) applies, the failure referred to in subparagraph (3)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.

  • — 2014, c. 39, s. 138

    • 138 The Act is amended by adding the following after section 73:

      • Patent not invalid
        • 73.1 (1) A patent shall not be declared invalid by reason only that the application on the basis of which the patent was granted was deemed to be abandoned and was not reinstated.

        • Exception

          (2) Subsection (1) does not apply if the Federal Court makes an order under subsection 73(3.1) in respect of the application on the basis of which the patent was granted.

  • — 2014, c. 39, s. 139

    • 2001, c. 10, s. 3

      139 Sections 78.1 and 78.2 of the Act are replaced by the following:

      • Definition of coming-into-force date

        • 78.1 (1) In sections 78.2, 78.21 and 78.5 to 78.56, coming-into-force date means the day on which section 121 of the Economic Action Plan 2014 Act, No. 2 comes into force.

        • Definition of filing date

          (2) In sections 78.21, 78.22, 78.4, 78.5, 78.53 and 78.54, filing date means the date on which an application for a patent in Canada is filed, as determined in accordance with section 78.2.

      • Filing date

        78.2 The filing date of an application for a patent is

        • (a) with respect to an original application,

          • (i) if all of the following elements were received by the Commissioner before October 1, 1989, the date on which they were received or, if they were received on different dates, the latest of those different dates:

            • (A) a statement that the granting of a patent is sought, executed by the applicant or by a patent agent on the applicant’s behalf,

            • (B) a specification, including claims,

            • (C) any drawing referred to in the specification,

            • (D) an abstract of the part of the specification other than the claims,

            • (E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read on the day on which the fee was received,

          • (ii) if subparagraph (i) does not apply, one or more of the following elements were received by the Commissioner on or after October 1, 1989 and all of the following elements were received by the Commissioner before October 1, 1996, the date on which they were received or, if they were received on different dates, the latest of those different dates:

            • (A) a petition executed by the applicant or by a patent agent on the applicant’s behalf,

            • (B) a specification, including claims,

            • (C) any drawing referred to in the specification,

            • (D) an abstract of the part of the specification other than the claims,

            • (E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read on the day on which the fee was received,

          • (iii) if subparagraphs (i) and (ii) do not apply, one or more of the following elements were received by the Commissioner on or after October 1, 1996 and all of the following elements were received by the Commissioner before June 2, 2007, the date on which they were received or, if they were received on different dates, the latest of those different dates:

            • (A) an indication, in English or French, that the granting of a Canadian patent is sought,

            • (B) the applicant’s name,

            • (C) the address of the applicant or of their patent agent,

            • (D) a document, in English or French, that on its face appears to describe an invention,

            • (E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read on the day on which the fee was received, and

          • (iv) if subparagraphs (i) to (iii) do not apply, one or more of the following elements were received by the Commissioner on or after June 2, 2007 and all of the following elements were received by the Commissioner before the coming-into-force date, the date on which they were received or, if they were received on different dates, the latest of those different dates:

            • (A) an indication, in English or French, that the granting of a Canadian patent is sought,

            • (B) the applicant’s name,

            • (C) the address of the applicant or of their patent agent,

            • (D) a document, in English or French, that on its face appears to describe an invention,

            • (E) either a small entity declaration, in accordance with section 3.01 of the Patent Rules as it read on the day on which the declaration was received, and the small entity fee set out in item 1 of Schedule II to those Rules as that item read on the day on which that fee was received or the standard fee set out in item 1 of that Schedule, as that item read on the day on which that standard fee was received; or

        • (b) with respect to a divisional application, the filing date of the original application from which the divisional application results, determined in accordance with this section.

      • Applications — no filing date

        78.21 An application for a patent that is filed before the coming-into-force date and that does not have a filing date on the coming-into-force date shall be deemed never to have been filed.

      • Applications — filing date before October 1, 1989

        78.22 An application for a patent whose filing date is before October 1, 1989 shall be dealt with and disposed of in accordance with

        • (a) the provisions of this Act as they read immediately before October 1, 1989, other than the definition legal representatives in section 2, subsections 4(2) and 7(1), sections 15 and 29, paragraph 31(2)(a) and sections 49 to 51; and

        • (b) the definition legal representatives in section 2, subsections 4(2) and 7(1), sections 8.1, 15 and 15.1, paragraph 31(2)(a) and sections 38.1, 49 and 78.2.

  • — 2014, c. 39, s. 140

    • 2001, c. 10, s. 4

      140 Sections 78.4 and 78.5 of the Act are replaced by the following:

      • Applications — filing date October 1, 1989 to before October 1, 1996

        78.4 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is on or after October 1, 1989 but before October 1, 1996 shall be dealt with and disposed of in accordance with

        • (a) the provisions of this Act, other than the definition filing date in section 2, subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6); and

        • (b) subsection 27(2) as it read immediately before October 1, 1996.

      • Applications — filing date October 1, 1996 to before coming-into-force date

        78.5 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is on or after October 1, 1996 but before the coming-into-force date shall be dealt with and disposed of in accordance with the provisions of this Act, other than the definition filing date in section 2, subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6).

      • Abandonment before coming-into-force date

        78.51 If an application for a patent was deemed to be abandoned under section 73 as it read immediately before the coming-into-force date, that section 73 applies in respect of that abandonment.

      • Abandonment — requisition or notice before coming-into-force date
        • 78.52 (1) If, on or after the coming-into-force date, an applicant fails to do any act described in paragraph 73(1)(a), (b), (e) or (f), as those paragraphs read immediately before that date, in respect of a requisition made or notice given, as the case may be, before that date, section 73 as it read immediately before that date applies in respect of any abandonment resulting from the failure.

        • Abandonment — section 97 of the Patent Rules

          (2) If, on or after the coming-into-force date, an applicant fails to do any act described in section 97 of the Patent Rules, as that section read immediately before that date, in respect of a requisition of the Commissioner that was given before that date, section 73 as it read immediately before that date applies in respect of any abandonment resulting from the failure.

      • Patents  filing date before October 1, 1989

        78.53 Subject to subsection 78.55(2), any matter arising on or after the coming-into-force date, in respect of a patent granted on the basis of an application whose filing date is before October 1, 1989, shall be dealt with and disposed of in accordance with

        • (a) the provisions of this Act, other than the definitions claim date, filing date and request for priority in section 2, sections 10, 27 to 28.4, 34.1 to 36, 38.2 and 55 and paragraphs 55.11(1)(a) and (b); and

        • (b) sections 10 and 55 and subsections 61(1) and (3), as they read immediately before October 1, 1989.

      • Patents — filing date October 1, 1989 to before coming-into-force date

        78.54 Subject to subsection 78.55(1) and section 78.56, any matter arising on or after the coming-into-force date in respect of a patent granted on the basis of an application whose filing date is on or after October 1, 1989 but before the coming-into-force date shall be dealt with and disposed of in accordance with the provisions of this Act, other than the definition filing date in section 2 and section 28.

      • Application of section 46 — item 31 of Schedule II to Patent Rules
        • 78.55 (1) If the time, not including a period of grace, set out in item 31 of Schedule II to the Patent Rules to pay the applicable fee to maintain the rights accorded by a patent in effect ends before the coming-into-force date, section 46 as it read immediately before the coming-into-force date applies in respect of that fee.

        • Application of section 46 — item 32 of Schedule II to Patent Rules

          (2) If the time, not including a period of grace, set out in item 32 of Schedule II to the Patent Rules to pay the applicable fee to maintain the rights accorded by a patent in effect ends before the coming-into-force date, section 46 as it read immediately before the coming-into-force date applies in respect of that fee.

      • Non-application of subsection 27.1(4) and section 73.1

        78.56 Subsection 27.1(4) and section 73.1 do not apply to a patent that was granted before the coming-into-force date or to a reissued patent if the original patent was granted before that date.

      • Reissued patents

        78.57 For greater certainty, for the purposes of sections 78.53 and 78.54, a reissued patent is considered to be issued on the basis of the original application.

      • Regulations

        78.58 For greater certainty, a regulation made under subsection 12(1) applies to an application for a patent referred to in section 78.22, unless the regulation provides otherwise.

  • — 2014, c. 39, s. 141

    • 2005, c. 18, s. 2

      141 Subsection 78.6(5) of the Act is replaced by the following:

      • Application

        (5) For greater certainty, this section also applies to applications for patents mentioned in section 78.22.

  • — 2015, c. 36, s. 50

    • 50 Subsection 5(2) of the Patent Act is replaced by the following:

      • Absence, inability to act or vacancy

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

  • — 2015, c. 36, s. 51

    • 51 Section 8 of the Act is repealed.

  • — 2015, c. 36, s. 52

    • 52 Section 11 of the Act is repealed.

  • — 2015, c. 36, s. 53

      • 53 (1) Subsection 12(1) of the Act is amended by adding the following after paragraph (g):

        • (g.1) authorizing the Commissioner to waive, subject to any prescribed terms and conditions, the payment of a fee if the Commissioner is satisfied that the circumstances justify it;

      • (2) Paragraph 12(1)(j.5) of the Act is replaced by the following:

        • (j.5) respecting divisional applications, including the time period within which divisional applications may be filed and the persons who may file divisional applications;

        • (j.51) defining one invention for the purposes of section 36;

      • (3) Subsection 12(1) of the Act is amended by adding the following after paragraph (j.8):

        • (j.81) respecting the correction of obvious errors in documents submitted to the Commissioner or the Patent Office or in patents or other documents issued under this Act, including

          • (i) the determination of what constitutes an obvious error, and

          • (ii) the effect of the correction;

  • — 2015, c. 36, s. 56

    • 56 Subsection 26.1(1) of the Act is repealed.

  • — 2015, c. 36, s. 57

    • 57 The portion of subsection 28.4(4) of the Act before paragraph (a) is replaced by the following:

      • Multiple previously regularly filed applications

        (4) If two or more applications have been previously regularly filed as described in paragraph 28.1(1)(a), subparagraph 28.2(1)(d)(i) or paragraph 78.3(1)(a) or (2)(a), either in or for the same country or in or for different countries,

  • — 2015, c. 36, s. 58

      • 58 (1) Subsections 38.2(1) and (2) of the Act are replaced by the following:

        • Amendments to specifications and drawings
          • 38.2 (1) Subject to subsections (2) to (3.1) and the regulations, the specification and drawings contained in an application for a patent in Canada may be amended before the patent is issued.

          • Restriction

            (2) The specification and drawings contained in an application, other than a divisional application, may not be amended to add matter that cannot reasonably be inferred from the specification or drawings contained in the application on its filing date.

      • (2) Subsection 38.2(4) of the Act is replaced by the following:

        • Divisional application

          (3.1) The specification and drawings contained in a divisional application may not be amended to add matter

          • (a) that may not be or could not have been added, under subsection (2) or (3) or this subsection, to the specification and drawings contained in the application for a patent from which the divisional application results; or

          • (b) that cannot reasonably be inferred from the specification or drawings contained in the divisional application on the date on which the Commissioner, in respect of that application, receives the prescribed documents and information or, if they are received on different dates, on the latest of those dates.

        • Non-application of subsections (2) to (3.1)

          (4) Subsections (2) to (3.1) do not apply if it is admitted in the specification that the matter is prior art with respect to the application.

        • Application subject to regulations

          (5) Subsections (2) to (3.1) apply subject to any regulations made under paragraph 12(1)(j.81).

  • — 2015, c. 36, s. 59

    • 59 Subparagraph 55.11(1)(a)(iii) of the Act is replaced by the following:

      • (iii) that was deemed abandoned under paragraph 73(1)(a), (b) or (e), under paragraph 73(1)(f) as it read at any time before the coming into force of this subparagraph or under subsection 73(2);

  • — 2015, c. 36, s. 61(1)

      • 61 (1) The portion of subsection 68(1) of the Act before paragraph (a) is replaced by the following:

        • Contents of applications
          • 68 (1) Every application presented to the Commissioner under section 65 shall

  • — 2015, c. 36, s. 62

      • 62 (1) Subsection 73(1) of the Act is amended by adding “or” at the end of paragraph (d), by striking out “or” at the end of paragraph (e) and by repealing paragraph (f).

      • (2) Subsections 73(4) and (5) of the Act are replaced by the following:

        • Filing date

          (5) An application that is reinstated retains its filing date.

  • — 2015, c. 36, s. 63

    • 63 Section 78 of the Act is replaced by the following:

      • Time period extended
        • 78 (1) If a time period fixed under this Act for doing anything ends on a prescribed day or a day that is designated by the Commissioner, that time period is extended to the next day that is not a prescribed day or a designated day.

        • Power to designate day

          (2) The Commissioner may, on account of unforeseen circumstances and if the Commissioner is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Commissioner shall inform the public of that fact on the website of the Canadian Intellectual Property Office.

  • — 2015, c. 36, s. 64

    • 64 Paragraphs 78.22(a) and (b) of the Act are replaced by the following:

      • (a) the provisions of this Act as they read immediately before October 1, 1989, other than the definition legal representatives in section 2, subsections 4(2), 5(2) and 7(1), sections 8, 15 and 29, paragraph 31(2)(a) and sections 49 to 51 and 78; and

      • (b) the definition legal representatives in section 2, subsections 4(2), 5(2) and 7(1), sections 8.1, 15 and 15.1, paragraph 31(2)(a) and sections 38.1, 49, 78 and 78.2.

  • — 2015, c. 36, s. 65

    • Replacement of “complémentaire” and “complémentaires”

      65 The French version of the Act is amended by replacing “complémentaire” and “complémentaires” with “divisionnaire” and “divisionnaires”, respectively, with any grammatical adaptations, in the following provisions:

      • (a) the heading before section 36;

      • (b) subsections 36(2) to (4);

      • (c) the portion of paragraph 55.11(1)(b) before subparagraph (i); and

      • (d) paragraph 78.2(b).

  • — 2015, c. 36, ss. 71(1), (6) to (12)

    • 2014, c. 39
      • 71 (1) In this section, other Act means the Economic Action Plan 2014 Act, No. 2.

      • (6) If subsection 53(2) of this Act comes into force on the same day as subsection 118(4) of the other Act, then that subsection 118(4) is deemed to have come into force before that subsection 53(2).

      • (7) If section 58 of this Act comes into force on the same day as section 131 of the other Act, then that section 131 is deemed to have come into force before that section 58.

      • (8) If section 59 of this Act comes into force on the same day as section 136 of the other Act, then that section 136 is deemed to have come into force before that section 59.

      • (9) If subsection 62(1) of this Act comes into force on the same day as subsection 137(1) of the other Act, then that subsection 137(1) is deemed to have come into force before that subsection 62(1).

      • (10) If section 140 of the other Act comes into force before subsection 62(1) of this Act, then, on the day on which that subsection 62(1) comes into force, section 78.52 of the Patent Act is amended by adding the following after subsection (1):

        • Abandonment — notice after coming-into-force date

          (1.1) If, on or after the day on which subsection 62(1) of the Economic Action Plan 2015 Act, No. 1 comes into force, an applicant fails to pay the prescribed fees stated to be payable in a notice of allowance of patent given before that day but after the coming-into-force date, paragraph 73(1)(f) as it read immediately before the day on which that subsection 62(1) comes into force applies in respect of any abandonment resulting from the failure.

      • (11) If section 64 of this Act comes into force on the same day as section 139 of the other Act, then that section 139 is deemed to have come into force before that section 64.

      • (12) If section 65 of this Act comes into force on the same day as sections 129, 136 and 139 of the other Act, then those sections 129, 136 and 139 are deemed to have come into force before that section 65.

  • — 2017, c. 6, s. 45

    • 1993, c. 2, s. 7

      45 The heading “Patented Medicines” before section 79 of the Act is replaced by the following:

      Patented or Protected Medicines

  • — 2017, c. 6, s. 46

    • 1993, c. 2. , s. 7
      • 46 (1) The definition breveté ou titulaire d’un brevet in subsection 79(1) of the French version of the Act is replaced by the following:

        patentee

        breveté ou titulaire d’un brevet La personne ayant pour le moment droit à l’avantage d’un brevet pour une invention liée à un médicament, ainsi que quiconque peut exercer tout droit d’un titulaire dans un cadre autre qu’une licence prorogée en vertu du paragraphe 11(1) de la Loi de 1992 modifiant la Loi sur les brevets. (patentee)

      • (2) Subsection 79(1) of the Act is amended by adding the following in alphabetical order:

        medicine

        medicine includes a drug, as defined in section 104, and a medicinal ingredient; (médicament)

        rights holder

        rights holder means, in respect of an invention pertaining to a medicine, a patentee and the person for the time being entitled to the benefit of a certificate of supplementary protection for that invention, and includes, if any other person is entitled to exercise rights in relation to the certificate, that other person in respect of those rights; (titulaire de droits)

  • — 2017, c. 6, s. 47

    • 1993, c. 2, s. 7
      • 47 (1) The portion of subsection 80(1) of the Act before paragraph (a) is replaced by the following:

        • Pricing information, etc., required by regulations
          • 80 (1) A rights holder for an invention pertaining to a medicine shall, as required by and in accordance with the regulations, provide the Board with the information and documents that the regulations may specify respecting

      • 1993, c. 2, s. 7

        (2) Paragraph 80(1)(c) of the English version of the Act is replaced by the following:

        • (c) the costs of making and marketing the medicine, if that information is available to the rights holder in Canada or is within the knowledge or control of the rights holder;

      • 1993, c. 2, s. 7

        (3) The portion of subsection 80(2) of the Act before paragraph (a) is replaced by the following:

        • Former rights holder

          (2) Subject to subsection (3), a person who is a former rights holder for an invention pertaining to a medicine shall, as required by and in accordance with the regulations, provide the Board with the information and documents that the regulations may specify respecting

      • 1993, c. 2, s. 7

        (4) Paragraphs 80(2)(b) and (c) of the Act are replaced by the following:

        • (b) the price at which the medicine was sold in any market in Canada and elsewhere during the period in which the person was a rights holder for the invention;

        • (c) the costs of making and marketing the medicine produced during that period, whether incurred before or after the patent was issued or the certificate of supplementary protection took effect, if that information is available to the person in Canada or is within the knowledge or control of the person;

      • 1993, c. 2, s. 7

        (5) Subsection 80(3) of the Act is replaced by the following:

        • Limitation

          (3) Subsection (2) does not apply to a person who has not, for a period of three or more years, been entitled to the benefit of the patent or certificate of supplementary protection, as the case may be, or to exercise any rights in relation to the patent or certificate.

  • — 2017, c. 6, s. 48

    • 1993, c. 2, s. 7
      • 48 (1) Subsection 81(1) of the Act is replaced by the following:

        • Pricing information, etc. required by Board
          • 81 (1) The Board may, by order, require a rights holder or former rights holder for an invention pertaining to a medicine to provide the Board with information and documents respecting

            • (a) in the case of a rights holder, any of the matters referred to in paragraphs 80(1)(a) to (e);

            • (b) in the case of a former rights holder, any of the matters referred to in paragraphs 80(2)(a) to (e); and

            • (c) any other related matters that the Board may require.

      • 1993, c. 2, s. 7

        (2) Subsection 81(2) of the English version of the Act is replaced by the following:

        • Compliance with order

          (2) A rights holder or former rights holder in respect of whom an order is made under subsection (1) shall comply with the order within the time that is specified in the order or as the Board may allow.

      • 1993, c. 2, s. 7

        (3) Subsection 81(3) of the Act is replaced by the following:

        • Limitation

          (3) No order may be made under subsection (1) in respect of a former rights holder who, more than three years before the day on which the order is proposed to be made, ceased to be entitled to the benefit of the patent or certificate of supplementary protection, as the case may be, or to exercise any rights in relation to the patent or certificate.

  • — 2017, c. 6, s. 49

    • 1993, c. 2, s. 7
      • 49 (1) Subsections 82(1) and (2) of the Act are replaced by the following:

        • Notice of introductory price
          • 82 (1) A rights holder for an invention pertaining to a medicine who intends to sell the medicine in a market in Canada in which it has not previously been sold shall, as soon as practicable after determining the date on which the medicine will be first offered for sale in that market, notify the Board of its intention and of that date.

          • Pricing information and documents

            (2) If the Board receives a notice under subsection (1) from a rights holder or otherwise has reason to believe that a rights holder for an invention pertaining to a medicine intends to sell the medicine in a market in Canada in which the medicine has not previously been sold, the Board may, by order, require the rights holder to provide the Board with information and documents respecting the price at which the medicine is intended to be sold in that market.

      • 1993, c. 2, s. 7

        (2) Subsection 82(3) of the English version of the Act is replaced by the following:

        • Compliance with order

          (3) Subject to subsection (4), a rights holder in respect of whom an order is made under subsection (2) shall comply with the order within the time that is specified in the order or as the Board may allow.

      • 1993, c. 2, s. 7

        (3) Subsection 82(4) of the Act is replaced by the following:

        • Limitation

          (4) No rights holder shall be required to comply with an order made under subsection (2) prior to the 60th day preceding the date on which the rights holder intends to first offer the medicine for sale in the relevant market.

  • — 2017, c. 6, s. 50

    • 1993, c. 2, s. 7; 1994, c. 26, s. 54(F)

      50 Section 83 of the Act is replaced by the following:

      • Order re excessive prices
        • 83 (1) If the Board finds that a rights holder for an invention pertaining to a medicine is selling the medicine in any market in Canada at a price that, in the Board’s opinion, is excessive, the Board may, by order, direct the rights holder to cause the maximum price at which the rights holder sells the medicine in that market to be reduced to the level that the Board considers not to be excessive and that is specified in the order.

        • Order re excessive prices

          (2) Subject to subsection (4), if the Board finds that a rights holder for an invention pertaining to a medicine has, while a rights holder, sold the medicine in any market in Canada at a price that, in the Board’s opinion, was excessive, the Board may, by order, direct the rights holder to do any one or more of the following things that will, in the Board’s opinion, offset the amount of the excess revenues estimated by it to have been derived by the rights holder from the sale of the medicine at an excessive price:

          • (a) reduce the price at which the rights holder sells the medicine in any market in Canada, to the extent and for the period that are specified in the order;

          • (b) to the extent and for the period that are specified in the order, reduce the price at which the rights holder sells, in any market in Canada, any other medicine to which a patented invention, or invention protected by a certificate of supplementary protection, of the rights holder pertains;

          • (c) pay to Her Majesty in right of Canada an amount that is specified in the order.

        • Order re excessive prices

          (3) Subject to subsection (4), if the Board finds that a former rights holder for an invention pertaining to a medicine had, while a rights holder, sold the medicine in any market in Canada at a price that, in the Board’s opinion, was excessive, the Board may, by order, direct the former rights holder to do any one or more of the following things that will, in the Board’s opinion, offset the amount of the excess revenues estimated by it to have been derived by the former rights holder from the sale of the medicine at an excessive price:

          • (a) to the extent and for the period that are specified in the order, reduce the price at which the former rights holder sells, in any market in Canada, a medicine to which a patented invention, or invention protected by a certificate of supplementary protection, of the former rights holder pertains; or

          • (b) pay to Her Majesty in right of Canada an amount that is specified in the order.

        • If policy to sell at excessive price

          (4) If the Board, having regard to the extent and duration of the sales of the medicine at an excessive price, is of the opinion that the rights holder or former rights holder has engaged in a policy of selling the medicine at an excessive price, the Board may, by order, in lieu of any order it may make under subsection (2) or (3), as the case may be, direct the rights holder or former rights holder to do any one or more of the things referred to in that subsection that will, in the Board’s opinion, offset not more than twice the amount of the excess revenues estimated by it to have been derived by the rights holder or former rights holder from the sale of the medicine at an excessive price.

        • Excess revenues

          (5) In estimating the amount of excess revenues under subsection (2), (3) or (4), the Board shall not consider any revenues derived by a rights holder or former rights holder before December 20, 1991 or any revenues derived by a former rights holder after they ceased to be entitled to the benefit of the patent or certificate of supplementary protection, as the case may be, or to exercise any rights in relation to the patent or certificate.

        • Right to hearing

          (6) Before the Board makes an order under this section, it shall provide the rights holder or former rights holder with a reasonable opportunity to be heard.

        • Limitation period

          (7) No order may be made under this section in respect of a former rights holder who, more than three years before the day on which the proceedings in the matter commenced, ceased to be entitled to the benefit of the patent or certificate of supplementary protection, as the case may be, or to exercise any rights in relation to the patent or certificate.

  • — 2017, c. 6, s. 51

    • 1993, c. 2, s. 7
      • 51 (1) Subsections 84(1) and (2) of the Act are replaced by the following:

        • Compliance
          • 84 (1) A rights holder or former rights holder who is required by any order made under section 83 to reduce the price of a medicine shall commence compliance with the order within one month after the date of the order or within a greater period after that date that the Board determines is practical and reasonable, having regard to the circumstances of the rights holder or former rights holder.

          • Compliance

            (2) A rights holder or former rights holder who is directed by any order made under section 83 to pay an amount to Her Majesty shall pay that amount within one month after the date of the order or within a greater period after that date that the Board determines is practical and reasonable, having regard to the circumstances of the rights holder or former rights holder.

      • 1993, c. 2, s. 7

        (2) Subsection 84(3) of the English version of the Act is replaced by the following:

        • Debt due to Her Majesty

          (3) An amount payable by a rights holder or former rights holder to Her Majesty under any order made under section 83 constitutes a debt due to Her Majesty and may be recovered in any court of competent jurisdiction.

  • — 2017, c. 6, s. 52

    • 1993, c. 2, s. 7

      52 Subsection 85(3) of the Act is replaced by the following:

      • Research costs

        (3) In determining under section 83 whether a medicine is being or has been sold in any market in Canada at an excessive price, the Board shall not take into consideration research costs other than the Canadian portion of the world costs related to the research that led to the invention pertaining to that medicine or to the development and commercialization of that invention, calculated in proportion to the ratio of sales by the rights holder in Canada of that medicine to total world sales.

  • — 2017, c. 6, s. 53

    • 1993, c. 2, s. 7

      53 Subsections 88(1) and (2) of the Act are replaced by the following:

      • Sales and expense information, etc., to be provided
        • 88 (1) A rights holder for an invention pertaining to a medicine shall, as required by and in accordance with the regulations, or as the Board may, by order, require, provide the Board with the information and documents that the regulations or the order may specify respecting

          • (a) the identity of the licensees in Canada of the rights holder;

          • (b) the revenue of the rights holder, and details of the source of the revenue, whether direct or indirect, from sales of medicine in Canada; and

          • (c) the expenditures made by the rights holder in Canada on research and development relating to medicine.

        • Additional information

          (2) If the Board believes on reasonable grounds that any person has information or documents pertaining to the value of sales of medicine in Canada by a rights holder or the expenditures made by a rights holder in Canada on research and development relating to medicine, the Board may, by order, require the person to provide the Board with any of the information or documents that are specified in the order, or with copies of them.

  • — 2017, c. 6, s. 54

    • 1993, c. 2, s. 7
      • 54 (1) Subsection 89(1) of the Act is replaced by the following:

        • Report
          • 89 (1) The Board shall in each year submit to the Minister a report setting out

            • (a) the Board’s estimate of the proportion, as a percentage, that the expenditures of each rights holder in Canada in the preceding year on research and development relating to medicine is of the revenues of those rights holders from sales of medicine in Canada in that year; and

            • (b) the Board’s estimate of the proportion, as a percentage, that the total of the expenditures of rights holders in Canada in the preceding year on research and development relating to medicine is of the total of the revenues of those rights holders from sales of medicine in Canada in that year.

      • 1993, c. 2, s. 7

        (2) Subsection 89(3) of the Act is replaced by the following:

        • Exception

          (3) The Board shall, in the report, identify the rights holders in respect of whom an estimate referred to in subsection (1) is given in the report, and may, in the report, identify any person who has failed to comply with subsection 88(1) or (2) at any time in the year in respect of which the report is made.

  • — 2017, c. 6, s. 55

    • 1993, c. 2, s. 7

      55 Subsection 96(4) of the Act is replaced by the following:

      • Guidelines

        (4) Subject to subsection (5), the Board may issue guidelines with respect to any matter within its jurisdiction but such guidelines are not binding on the Board or any rights holder or former rights holder.

  • — 2017, c. 6, s. 56

    • 1993, c. 2, s. 7

      56 Subsections 100(2) and (3) of the Act are replaced by the following:

      • Contents

        (2) The report shall contain

        • (a) a summary of pricing trends in the pharmaceutical industry; and

        • (b) the name of each rights holder and former rights holder in respect of whom an order was made under subsection 81(1) or 82(2) or section 83 during the year and a statement as to the status of the matter in respect of which the order was made.

      • Report summary

        (3) The summary referred to in paragraph (2)(a) may be based on information and documents provided to the Board by any rights holder or former rights holder under section 80, 81 or 82 or in any proceeding under section 83, but shall not be set out in a manner that would make it possible to identify that rights holder or former rights holder.

  • — 2017, c. 6, s. 57

    • 1993, c. 2, s. 7
      • 57 (1) Paragraph 101(1)(d) of the English version of the Act is replaced by the following:

        • (d) specifying factors for the purposes of subsection 85(1) or (2), including factors relating to the introductory price of any medicine to which a patented invention, or invention protected by a certificate of supplementary protection, pertains;

      • 1993, c. 2, s. 7

        (2) Paragraph 101(1)(h) of the English version of the Act is replaced by the following:

        • (h) requiring or authorizing the Board to perform the duties, in addition to those provided for in this Act, that are specified in the regulations, including duties to be performed by the Board in relation to the introductory price of any medicine to which a patented invention, or invention protected by a certificate of supplementary protection, pertains; and

  • — 2017, c. 6, s. 58

    • 1999, c. 26, s. 50

      58 Section 103 of the Act is replaced by the following:

      • Agreements with provinces

        103 The Minister may enter into agreements with any province respecting the distribution of, and may pay to that province out of the Consolidated Revenue Fund, amounts received or collected by the Receiver General under section 83 or 84 or in respect of an undertaking given by a rights holder or former rights holder that is accepted by the Board in lieu of holding a hearing or making an order under section 83, less any costs incurred in relation to the collection and distribution of those amounts.

  • — 2017, c. 6, ss. 135(1), (6), (10), (11)

    • 2014, c. 39
      • 135 (1) In this section, other Act means the Economic Action Plan 2014 Act, No. 2.

      • (6) On the first day on which both subsection 118(5) of the other Act and subsection 34(3) of this Act are in force, paragraph 12(1)(j.8) of the Patent Act is replaced by the following:

        • (j.8) authorizing the Commissioner to, during or after the end of the time period fixed under this Act in respect of any business before the Patent Office, for doing anything, extend that time period, subject to any prescribed terms and conditions, if the Commissioner considers that the circumstances justify the extension;

      • (10) On the first day on which both section 134 of the other Act and section 59 of this Act are in force, subsection 118(1) of the Patent Act is replaced by the following:

        • Transfer of patent
          • 118 (1) Despite subsection 49(1), a certificate of supplementary protection, or an application for one, is not transferable other than by the transfer of the patent, or part of the patent, that is set out in the certificate or application.

      • (11) On the first day on which both section 136 of the other Act and section 59 of this Act are in force, subsection 124(1) of the Patent Act is amended by adding the following after paragraph (d):

        • (d.1) section 55.11, with

          • (i) in subsection (1), the reference to “the following patents” to be read as a reference to “certificates of supplementary protection that set out the following patents”,

          • (ii) in subsections (2) and (4), any reference to “patent” to be read as a reference to “certificate of supplementary protection”, and

          • (iii) in subsection (3), any reference to “a patent” to be read as a reference to “a patent, or the certificate of supplementary protection that sets out the patent,” and any reference to “the patent” to be read as a reference to “the certificate of supplementary protection”;

  • — 2017, c. 6, ss. 136(1), (2), (10)

    • 2015, c. 36
      • 136 (1) In this section, other Act means the Economic Action Plan 2015 Act, No. 1.

      • (2) On the first day on which both subsection 53(3) of the other Act and section 59 of this Act are in force, the portion of paragraph 12(1)(j.81) of the Patent Act before subparagraph (i) is replaced by the following:

        • (j.81) respecting the correction of obvious errors in documents submitted to the Commissioner or the Patent Office or in patents or other documents granted or issued under this Act, other than under sections 106 to 134, including

      • (10) On the first day on which both section 63 of the other Act and section 44 of this Act are in force, subsection 78(1) of the Patent Act is replaced by the following:

        • Time period extended
          • 78 (1) If a time period fixed under this Act, in respect of any business before the Patent Office, for doing anything ends on a prescribed day or a day that is designated by the Commissioner, that time period is extended to the next day that is not a prescribed day or a designated day.

  • — 2017, c. 20, s. 455

    • Bill C-30

      455 If Bill C-30, introduced in the 1st session of the 42nd Parliament and entitled the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act, receives royal assent, then, on the first day on which both section 59 of that Act and section 451 of this Act are in force, section 133 of the Patent Act is replaced by the following:

      • Service Fees Act

        133 The Service Fees Act does not apply in respect of the fees referred to in section 106 or 134.

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