Patent Rules (SOR/96-423)

Regulations are current to 2016-11-21 and last amended on 2014-05-01. Previous Versions

 Any decision of the Commissioner under section 16 of the Act to refuse to recognize a person as a patent agent and any decision of the Commissioner under subsection 16(3) to remove the name of a person from the register of patent agents shall be without delay entered in the register of patent agents and published in the Canadian Patent Office Record and a copy shall be sent by registered mail to the person referred to in the decision.

  • SOR/2009-319, s. 4.
  •  (1) If the Commissioner makes a decision under section 16 of the Act that a person be refused recognition as a patent agent or makes a decision under subsection 16(3) to remove the name of a person from the register of patent agents, any correspondence respecting an application sent by the Commissioner or by the Patent Office to that person within the six-month period before the date of the decision and to which no reply has been made by that date is deemed not to have been sent to the applicant.

  • (2) An application filed by a person who has been refused recognition as a patent agent by the Commissioner or whose name has been removed from the register of patent agents or an application that includes an appointment of such a person as patent agent of the applicant or as associate patent agent shall be treated by the Commissioner as an application filed by the applicant or by the patent agent who appointed the associate patent agent.

  • SOR/2009-319, s. 4.

Appointment of Patent Agents

  •  (1) An applicant who is not an inventor shall appoint a patent agent to prosecute the application for the applicant.

  • (2) The appointment of a patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the applicant.

  • (3) The appointment of a patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the applicant or that patent agent.

  •  (1) Every patent agent who does not reside in Canada and who is appointed as the patent agent for an applicant in respect of an application shall appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

  • (2) Every patent agent who resides in Canada and who is appointed as the patent agent for an applicant in respect of an application may appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

  • (3) The appointment of an associate patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the patent agent who appointed the associate patent agent.

  • (4) The appointment of an associate patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the associate patent agent or the patent agent who appointed the associate patent agent.

 Any act by or in relation to a patent agent or an associate patent agent shall have the effect of an act by or in relation to the applicant.

 Where an applicant is not the inventor and no patent agent residing in Canada has been appointed or any such appointment has been revoked, the Commissioner shall by notice requisition either that the applicant appoint a patent agent residing in Canada or, where a non-resident patent agent has been appointed, that the non-resident patent agent appoint an associate patent agent, within the three-month period after the date of the notice.

 Where a patent agent withdraws from practice, any patent agent who is the successor to that patent agent and who has so established to the Commissioner, shall be considered to be the appointed patent agent until another patent agent is appointed, in respect of any application in which the patent agent who has withdrawn from practice has been appointed.

Time

 Except where other times are provided by the Act or these Rules, the time within which action must be taken by an applicant where the Commissioner, by notice, requisitions the applicant to take any action necessary for compliance with the Act or these Rules is the three-month period after the requisition is made.

  •  (1) Subject to subsection (2) and any other provision of these Rules, except in respect of Part V, the Commissioner is authorized to extend the time fixed by these Rules or by the Commissioner under the Act for doing anything, subject to both the extension being applied for and the fee set out in item 22 of Schedule II being paid before the expiry of that time, where the Commissioner is satisfied that the circumstances justify the extension.

  • (2) Where, for the purposes of paragraph 73(1)(a) of the Act, the Commissioner establishes a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is not authorized to extend the time for replying beyond six months after the requisition is made.

  • (3) Except in respect of Part V, if the appropriate fee under subsection 3(3), (5), (7), (8) or (9) in respect of a proceeding or service is either a small entity fee or a standard fee, and if, after the coming into force of this subsection, a person pays the small entity fee but the applicant or patentee later becomes aware that the standard fee should have been paid, the Commissioner is authorized to extend the time fixed by these Rules for payment of the appropriate fee if the Commissioner is satisfied that the circumstances justify the extension.

  • (4) An extension may be authorized under subsection (3) only if the following conditions are satisfied:

    • (a) the applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and the subject application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid;

    • (b) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee as set out in Schedule II to the Patent Rules as they read at the time the small entity fee was paid; and

    • (c) the applicant or patentee pays the fee set out in item 22 of Schedule II in respect of each fee that is the subject of an application for such an extension.

  • SOR/2007-90, s. 4.
  •  (1) If, after the coming into force of this subsection, an applicant fails to comply with a notice of allowance requisitioning payment of the applicable final fee set out in paragraph 6(a) of Schedule II only because they paid in error the small entity fee instead of the standard fee referred to in paragraph 3(4)(b), the Commissioner is authorized to extend the 12-month period prescribed by section 98 or 152 to make a request for reinstatement in respect of that failure if the Commissioner is satisfied that the circumstances justify the extension.

  • (2) An extension may be authorized under subsection (1) only if the following conditions are satisfied:

    • (a) the applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and the subject application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid; and

    • (b) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee as set out in subparagraph 6(a)(i) of Schedule II to the Patent Rules as they read at the time the small entity fee was paid.

  • SOR/2007-90, s. 5.

 For greater certainty, if a time is fixed for doing anything by a provision of these Rules, the time fixed for doing that thing is the time that is fixed by that provision as extended by the Commissioner under section 26 or 26.1.

  • SOR/2007-90, s. 5.

 Except in respect of Part V, the Commissioner is authorized to extend the time fixed by subsection 18(2) of the Act if the fee set out in item 22 of Schedule II has been paid and the Commissioner is satisfied that the circumstances justify the extension.

  • SOR/2007-90, s. 6.

Filing Date

  •  (1) The documents, information and fees prescribed for the purposes of subsection 28(1) of the Act are

    • (a) if paragraphs (b) and (c) do not apply and one or more of the following has been received by the Commissioner on or after June 2, 2007,

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

      • (ii) the applicant’s name,

      • (iii) the applicant’s address or that of their patent agent,

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

      • (v) either

        • (A) a small entity declaration in accordance with section 3.01 and the small entity fee set out in item 1 of Schedule II as it read at the time of receipt, or

        • (B) the standard fee set out in that item;

    • (b) if one or more of the following has been received by the Commissioner on or after October 1, 1996 and all of the following have been received before June 2, 2007,

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

      • (ii) the applicant’s name,

      • (iii) the applicant’s address or that of their patent agent,

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

      • (v) the fee set out in item 1 of Schedule II as it read at the time of receipt;

    • (c) if all of the following have been received by the Commissioner before October 1, 1996,

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

      • (ii) a specification, including claims,

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

      • (iv) an abstract of the description, which may be inserted at the beginning of the specification, and

      • (v) the fee set out in item 1 of Schedule II as it read at the time of receipt.

  • (2) Subject to subsection 36(4) of the Act as it read immediately before October 1, 1989, the filing date of an application in Canada filed before October 1, 1989 is the date on which the fee for filing it has been paid and the following documents relating to it have been filed:

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

    • (b) a specification, including claims;

    • (c) any drawing referred to in the specification; and

    • (d) an abstract of the description, which may be inserted at the beginning of the specification.

  • SOR/2009-319, s. 5.
 
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