Patent Rules (SOR/96-423)

Regulations are current to 2014-09-29 and last amended on 2014-05-01. Previous Versions

Examination

  •  (1) In respect of an application that has a filing date on or after October 1, 1989 and that is open to public inspection under section 10 of the Act, the Commissioner shall advance out of its routine order the examination of the application under subsection 35(1) of the Act on the request of

    • (a) any person, on payment of the fee set out in item 4 of Schedule II, if failure to advance the application is likely to prejudice that person’s rights; or

    • (b) the applicant, if the applicant files with the Commissioner a declaration indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources.

  • (2) With respect to a request made under subsection (1) by an applicant, the Commissioner shall not advance the examination of the application out of its routine order and shall return to its routine order any examination that has been advanced if, after April 30, 2011,

    • (a) the Commissioner extends, under subsection 26(1), the time fixed by these Rules or by the Commissioner under the Act for doing anything in respect of the application; or

    • (b) the application is deemed to be abandoned under subsection 73(1) of the Act whether or not it is reinstated under subsection 73(3) of the Act.

  • SOR/2011-61, s. 1.
  •  (1) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application for a patent describing the same invention has been filed, in or for any country, on behalf of the applicant or on behalf of any other person claiming under an inventor named in the application being examined, the examiner may requisition from the applicant any of the following information and a copy of any related document:

    • (a) an identification of any prior art cited in respect of the applications;

    • (b) the application numbers, filing dates and, if granted, the patent numbers;

    • (c) particulars of conflict, opposition, re-examination or similar proceedings; and

    • (d) where a document is not in either English or French, a translation of the document, or a part of the document, into English or French.

  • (2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an invention disclosed in the application was, before the filing date of the application, published or the subject of a patent, the examiner may requisition the applicant to identify the first publication of or patent for that invention.

  • (3) Subsections (1) and (2) do not apply to any information or document that is not available or known to the applicant, provided that the applicant states the reasons why the information or document is not available or known.

  •  (1) Where an examiner, after examining an application, has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.

  • (2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application does not comply with the Act or these Rules, the examiner shall inform the applicant of the application’s defects and shall requisition the applicant to amend the application in order to comply or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

  • (3) Where an applicant has replied in good faith to a requisition referred to in subsection (2) within the time provided but the examiner has reasonable grounds to believe that the application still does not comply with the Act or these Rules in respect of one or more of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.

  • (4) Where an examiner rejects an application, the notice shall bear the notation “Final Action” or “Décision finale”, shall indicate the outstanding defects and shall requisition the applicant to amend the application in order to comply with the Act and these Rules or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

  • (5) If before the expiry of the period under subsection (4), the applicant amends the application or provides arguments and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules,

    • (a) the examiner shall notify the applicant that the rejection is withdrawn; and

    • (b) the Commissioner shall notify the applicant that the application has been found allowable and requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.

  • (6) If the applicant amends the application or provides arguments within the time referred to in subsection (4) but, after the expiration of that time, the examiner does not have reasonable grounds to believe that the application complies with the Act and these Rules,

    • (a) the Commissioner shall notify the applicant that the rejection has not been withdrawn;

    • (b) any amendments made within the time referred to in subsection (4) shall be considered not to have been made; and

    • (c) the rejected application shall be reviewed by the Commissioner.

  • (6.1) If, during the review of a rejected application, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the Final Action notice, the Commissioner shall inform the applicant of those defects and invite the applicant to submit arguments as to why the application does comply within the time specified by the Commissioner.

  • (6.2) If, after review of a rejected application, the Commissioner determines that the rejection is not justified on the basis of the defects indicated in the Final Action notice and has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.

  • (6.3) If, after review of a rejected application, the Commissioner determines that the application does not comply with the Act or these Rules, but that specific amendments are necessary, the Commissioner shall notify the applicant that the specific amendments have to be made within three months after the date of the notice. If the applicant complies with that notice, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice of allowance.

  • (6.4) Before an application is refused pursuant to section 40 of the Act, the applicant shall be given an opportunity to be heard.

  • (7) If, after a notice of allowance is sent under subsection (1), (5), (6.2) or (6.3) but before a patent is issued, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules, the Commissioner shall

    • (a) notify the applicant of that fact;

    • (b) notify the applicant that the notice of allowance is withdrawn;

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

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

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

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

    • (a) the notice of allowance that was sent under subsection (1), (5), (6.2) or (6.3) is deemed never to have been sent; and

    • (b) sections 32 and 33 do not apply unless a further notice of allowance is sent to the applicant under subsection (1), (5), (6.2) or (6.3).

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

    • (a) for the purposes of this section and section 32, any previous notice of allowance that was sent under subsection (1), (5), (6.2) or (6.3) is deemed never to have been sent; and

    • (b) if the final fee has already been paid and has not been refunded, any further notice of allowance sent under subsection (1), (5), (6.2) or (6.3) shall not requisition payment of the final fee.

  • (11) Subsection 26(1) does not apply in respect of the times set out in subsections (1), (5), (6.2) and (6.3).

  • SOR/2007-90, s. 7;
  • SOR/2013-212, s. 3.