Patent Rules (SOR/96-423)

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

  •  (1) Except as provided by the Act or these Rules, for the purpose of prosecuting or maintaining an application the Commissioner shall only communicate with, and shall only have regard to communications from, the authorized correspondent.

  • (2) For the purpose of appointing, in respect of an application, a patent agent or an associate patent agent or of revoking the appointment of a patent agent or an associate patent agent, the Commissioner shall have regard to communications from any of the applicant, the patent agent and the associate patent agent.

  • (3) Interviews with members of the Patent Office staff in respect of an application may be held during the business hours of the Patent Office by

    • (a) the authorized correspondent;

    • (b) the applicant, with the permission of the authorized correspondent; or

    • (c) an appointed non-resident patent agent, with the permission of the associate patent agent.

 Communications addressed to the Commissioner in relation to an application shall include

  • (a) the name of the applicant or inventor;

  • (b) the application number, if one has been assigned by the Patent Office; and

  • (c) the title of the invention.

  •  (1) Subject to subsection (2), communications addressed to the Commissioner in relation to an application or a patent shall relate to one application or patent only.

  • (2) Subsection (1) does not apply in respect of communications relating to

    • (a) a transfer, a licence or a security interest;

    • (b) a change in the name or address of an applicant, a patentee, a patent agent, an associate patent agent or a representative for service; or

    • (c) fees to maintain an application in effect or to maintain the rights accorded by a patent.

 An authorized correspondent shall provide the Commissioner with its complete address and any communication sent by the Commissioner or by the Patent Office to the authorized correspondent at that address shall be considered to be sent on the date that it bears.

 Communications addressed to the Commissioner pursuant to section 34.1 of the Act and communications addressed to the Commissioner with the stated or apparent intention of protesting against the granting of a patent shall be acknowledged, but, subject to section 10 of the Act or of the Act as it read immediately before October 1, 1989, no information shall be given as to the action taken.

 Except as provided by section 11 of the Act, the Commissioner and the Patent Office shall not provide any information respecting an application that is not open to public inspection to any person other than the authorized correspondent, the applicant or a person authorized by the authorized correspondent or the applicant to receive the information.

Entry of Patent Agents on Register of Patent Agents

 A person is eligible to sit for the qualifying examination for patent agents if the person,

  • (a) on the first day of the examination, resides in Canada and

    • (i) has been employed for at least 24 months on the examining staff of the Patent Office,

    • (ii) has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, or

    • (iii) has worked in the area of patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, at least 12 of which were worked in Canada and the rest of which were worked in a country other than Canada where the person was registered as a patent agent in good standing with a patent office of that country; and

  • (b) within two months after the day on which the notice referred to in subsection 14(2) was published,

    • (i) notifies the Commissioner in writing of their intention to sit for the examination,

    • (ii) pays the fee set out in item 34 of Schedule II, and

    • (iii) furnishes the Commissioner with evidence establishing that they meet the requirements set out in paragraph (a).

  • SOR/2013-231, s. 2.
  •  (1) An Examining Board is hereby established for the purpose of preparing, administering and marking the qualifying examination for patent agents referred to in section 14.

  • (2) The members of the Examining Board shall be appointed by the Commissioner, and the chairperson and at least three other members shall be employees of the Patent Office and at least five members shall be patent agents nominated by the Intellectual Property Institute of Canada.

  • SOR/2003-208, s. 3.
  •  (1) The Examining Board shall administer a qualifying examination for patent agents at least once a year.

  • (2) The Commissioner shall publish on the web site of the Canadian Intellectual Property Office a notice that specifies the date of the next qualifying examination and that indicates that any person who intends to sit for the examination shall comply with the requirements set out in paragraph 12(b).

  • (3) The Commissioner shall designate the place or places where the qualifying examination is to be held and shall notify, at least two weeks before the first day of the examination, every person who has met the requirements set out in section 12.

  • SOR/2013-231, s. 3.

 The Commissioner shall, on written request and payment of the fee set out in item 33 of Schedule II, enter on the register of patent agents the name of

  • (a) any resident of Canada who has passed the qualifying examination for patent agents;

  • (b) any resident of a country other than Canada who is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

  • (c) any firm, if the name of at least one member of the firm is entered on the register.

  • SOR/2013-231, s. 4.
  •  (1) During the period beginning on January 1 and ending on March 31 in every year

    • (a) every person who is a resident of Canada and whose name is entered on the register of patent agents shall pay the fee set out in item 35 of Schedule II in order to maintain the person’s name on the register;

    • (b) every person who is a resident of another country and whose name is entered on the register of patent agents shall, in order to maintain the person’s name on the register, file a statement, signed by the person, indicating the person’s country of residence and stating that the person is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

    • (c) every firm whose name is entered on the register of patent agents shall, in order to maintain its name on the register, file a statement indicating each member of the firm whose name is entered on the register, signed by a duly authorized member of the firm whose own name is entered on the register.

  • (2) [Repealed, SOR/2013-231, s. 5]

  • (3) The Commissioner shall remove from the register of patent agents the name of any patent agent who

    • (a) fails to comply with subsection (1); or

    • (b) no longer meets the requirements under which the name of the patent agent was entered on the register unless the patent agent is a person referred to in paragraph 15(a) or (b) or a firm referred to in paragraph 15(c).

  • (4) [Repealed, SOR/2009-319, s. 3]

  • SOR/2009-319, s. 3;
  • SOR/2013-231, s. 5.

 Where the name of a patent agent has been removed from the register of patent agents pursuant to subsection 16(3), it may be reinstated on the register if the patent agent

  • (a) applies to the Commissioner, in writing, for reinstatement within the one-year period after the date on which the name of the patent agent was removed from the register; and

  • (b) either

    • (i) is a person referred to in paragraph 15(a) and pays the fees set out in items 35 and 36 of Schedule II,

    • (ii) is a person referred to in paragraph 15(b) and files the statement referred to in paragraph 16(1)(b), or

    • (iii) is a firm referred to in paragraph 15(c) and files the statement referred to in paragraph 16(1)(c).

  • (c) and (d) [Repealed, SOR/2013-231, s. 6]

  • SOR/2013-231, s. 6.
 
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