Patent Rules (SOR/96-423)

Regulations are current to 2017-11-20 and last amended on 2017-09-21. Previous Versions

Effect of Withdrawals on Public Inspection

 For the purposes of subsection 10(4) of the Act, where a request for priority with respect to a particular previously regularly filed application is withdrawn in accordance with section 144, the prescribed date is the date that is sixteen months after the filing date of that previously regularly filed application, or, where the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date preceding the expiry of the confidentiality period referred to in subsection 10(2) of the Act, that subsequent date.

 For the purposes of subsection 10(5) of the Act, the prescribed date is the day that is two months before the date of expiry of the confidentiality period referred to in subsection 10(2) of the Act or, if the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date before the expiry of the confidentiality period, that subsequent date.

  • SOR/2009-319, s. 16.

 [Repealed, SOR/2009-319, s. 17]

Deemed Abandonment

  •  (1) Where an application other than a PCT national phase application did not, on the filing date of the application, contain the information and documents listed below, the application shall, for the purposes of section 73(2) of the Act, be deemed to be abandoned if, after the expiry of the twelve-month period after the filing date, the applicant has not paid the fee set out in item 2 of Schedule II and filed the following information and documents:

    • (a) an abstract;

    • (b) an appointment of a patent agent, where required by section 20; and

    • (c) an appointment of an associate patent agent, where required by section 21.

    • (d) [Repealed, SOR/2017-167, s. 3]

  • (2) Subsection 26(1) does not apply in respect of the time set out in subsection (1).

  • SOR/2007-90, s. 38;
  • SOR/2017-167, s. 3.

Requests for Examination

 For the purposes of subsection 35(1) of the Act, a request for examination of an application shall contain the following information:

  • (a) the name and address of the person making the request;

  • (b) if the person making the request is not the applicant, the name of the applicant; and

  • (c) information, such as the application number, sufficient to identify the application.

  •  (1) Subject to subsection (2), for the purposes of paragraph 73(1)(d) of the Act, a request for the examination of an application shall be made and the fee set out in item 3 of Schedule II shall be paid before the expiry of the seven-year period after the filing date of the application.

  • (2) A request for the examination of a divisional application shall be made and the fee set out in item 3 of Schedule II shall be paid before the expiry of the later of

    • (a) the seven-year period after the filing date of the original application; and

    • (b) the six-month period after the date on which the divisional application is actually filed in accordance with subsections 36(2) or (2.1) of the Act.

  • (3) Subsection 26(1) does not apply in respect of the times prescribed in subsections (1) and (2).

  • SOR/2007-90, s. 38.

Abandonment and Reinstatement

 For the purposes of subsection 73(2) of the Act, an application is deemed to be abandoned if the applicant does not reply in good faith to any requisition of the Commissioner referred to in section 23 or 25 within the time provided in that section.

  • SOR/99-291, s. 15.
  •  (1) For an application deemed to be abandoned under section 73 of the Act to be reinstated, the applicant must, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 151, make a request for reinstatement to the Commissioner, take the action that should have been taken in order to avoid the abandonment and pay the fee set out in item 7 of Schedule II, before the expiry of the 12-month period after the date on which the application is deemed to be abandoned as a result of that failure.

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

    • (a) pay the applicable standard fee, or

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

  • SOR/2007-90, s. 26.
  •  (1) Where, before October 1, 1996, an application was forfeited pursuant to subsection 73(1) of the Act as it read immediately before that date and was not restored, the application is deemed to have been abandoned pursuant to paragraph 73(1)(f) of the Act on the same date as the forfeiture and may be reinstated in accordance with subsection 73(3) of the Act.

  • (2) Subject to subsection (3), where, before October 1, 1996, an application was deemed to have been abandoned pursuant to the Act or the Patent Rules as they read before that date and was not reinstated, the application is deemed to have been abandoned pursuant to subsection 73(2) of the Act on the same date as the earlier deemed abandonment and may be reinstated in accordance with subsection 73(3) of the Act.

  • (3) Where an application was, before April 1, 1996, deemed to have been abandoned pursuant to subsection 27.1(2) of the Act as it read immediately before that date, the application may not be reinstated in accordance with subsection 73(3) of the Act.

  • (4) Subsection 16(4) of the Patent Cooperation Treaty Regulations as they read immediately before October 1, 1996 applies to an international application that was, before that date, deemed to be abandoned pursuant to subsection 16(3) of those Regulations.

Maintenance Fees

  •  (1) For the purposes of subsection 27.1(1) and paragraph 73(1)(c) of the Act, the applicable fee to maintain an application in effect, set out in item 30 of Schedule II, shall be paid in respect of the periods set out in that item before the expiry of the times provided in that item.

  • (2) Where a divisional application is filed, any fee set out in item 30 of Schedule II, that would have been payable pursuant to subsection 27.1(1) of the Act had the divisional application been filed on the filing date of the original application, shall be paid when the divisional application is actually filed in accordance with subsection 36(2) or (2.1) of the Act.

  •  (1) Subject to subsections (2) and (3), for the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a patent, set out in item 31 of Schedule II, shall be paid in respect of the periods set out in that item before the expiry of the times, including periods of grace, provided in that item.

  • (2) In subsection (1), “patent” does not include a reissued patent.

  • (3) No fee to maintain the rights accorded by a patent shall be payable in respect of any period for which a fee to maintain the application for that patent was paid.

  •  (1) Subject to subsection (2), for the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a reissued patent, set out in item 31 of Schedule II, shall be paid in respect of the same periods and before the expiry of the same times as for the original patent.

  • (2) No fee to maintain the rights accorded by a reissued patent is payable in respect of any period for which a fee was paid to maintain the rights accorded by the original patent or to maintain the application for the original patent.

 Subsection 26(1) does not apply in respect of the times set out in sections 154, 155 and 156.

  • SOR/2007-90, s. 38.
  •  (1) Where, before October 1, 1996, a fee to maintain in effect an application or the rights accorded by a patent was paid under section 76.1 or 80.1 of the Patent Rules as they read immediately before that date for a one-year period commencing immediately after a particular anniversary, for the purposes of section 154, 155 or 156, that fee shall be considered to have been paid for the one-year period commencing immediately after the subsequent anniversary.

  • (2) In subsection (1), anniversary means the anniversary of the date of filing of the application.

Deposits of Biological Material

 For the purposes of subsection 38.1(1) of the Act, where a specification in an application filed in Canada, or in a patent issued on the basis of such an application, refers to a deposit of biological material, the deposit shall be considered to be in accordance with these regulations if sections 160 to 162 are complied with.

  •  (1) Subject to subsection (2), the deposit of the biological material shall be made by the applicant with an international depositary authority on or before the filing date of the application.

  • (2) The deposit with an international depositary authority may be made by the applicant after the filing date of the application provided that

    • (a) a deposit was made by the applicant in a depositary other than an international depositary authority on or before the filing date of the application in a manner so that, after the application is open to public inspection under section 10 of the Act, samples of the deposit are made available to the public;

    • (b) the applicant informs the Commissioner of the name of the depositary referred to in paragraph (a) and the date of making of the deposit before the application is open to public inspection under section 10 of the Act or on or before January 1, 1998, whichever is the later; and

    • (c) the deposit with the international depositary authority is made on or before October 1, 1997.

  • (3) The applicant must inform the Commissioner of the name of the international depositary authority, the date of the original deposit with the international depository authority and the accession number given by the international depositary authority to the deposit, before the application is open to public inspection under section 10 of the Act or on or before January 1, 1998, whichever is the later.

  • (4) The applicant may, before the application is open to public inspection under section 10 of the Act or on or before January 1, 1998, whichever is the later, file a notice with the Commissioner stating the applicant’s wish that, until either a patent has issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn, the Commissioner only authorize the furnishing of a sample of the deposited biological material to an independent expert nominated by the Commissioner in accordance with section 165.

  • (5) Subsection 26(1) does not apply to the times set out in this section.

  • SOR/2007-90, s. 38.
 
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