Economic Action Plan 2014 Act, No. 2 (S.C. 2014, c. 39)

Assented to 2014-12-16

Marginal note:R.S., c. 33 (3rd Supp.), s. 17
  •  (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  • (2) Subsection 48(5) of the Act is repealed.

Marginal note:R.S., c. 33 (3rd Supp.), ss. 19 and 20

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

TRANSFERS

Marginal note: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.

  • Marginal note: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.

  • Marginal note: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.

  • Marginal note: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.

  • Marginal note: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.

  • Marginal note: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.

Marginal note:1993, c. 15, s. 48

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

  • Marginal note: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.

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

Marginal note: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).

  • Marginal note: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).

  • Marginal note: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.

  • Marginal note: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.

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

    Marginal note: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.

  • Marginal note:1993, c. 15, s. 52

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

    • Marginal note:Abandon

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

  • Marginal note:1993, c. 15, s. 52

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

    • Marginal note: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.

    • Marginal note: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.

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

Marginal note: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.

  • Marginal note: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.

Marginal note:2001, c. 10, s. 3

 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.

Marginal note: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.

Marginal note: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.

Marginal note: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.

 
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