Patent Rules (SOR/96-423)

Regulations are current to 2016-02-03 and last amended on 2014-05-01. Previous Versions

Amendments

 An application that has been rejected by an examiner in accordance with subsection 30(3) shall not be amended after the expiry of the time under subsection 30(4) for responding to the examiner’s requisition except

  • (a) if a notice of allowance is sent under subsection 30(5), (6.2) or (6.3);

  • (b) if the Commissioner has notified the applicant that the amendment is necessary for compliance with the Act and these Rules;

  • (c) if the application is abandoned under paragraph 73(1)(f) of the Act and reinstated; or

  • (d) by order of the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada.

  • SOR/2013-212, s. 4.

 Except as otherwise provided by these Rules, after a notice of allowance is sent under subsection 30(1), (5), (6.2) or (6.3)

  • (a) an application shall not be amended, other than to correct a clerical error that is obvious on the face of the application, unless the fee set out in item 5 of Schedule II is paid; and

  • (b) an application shall not be amended in a way that would necessitate a further search by the examiner in respect of the application or that would make the application not comply with the Act or these Rules.

  • SOR/2013-212, s. 4.
  •  (1) Except as otherwise provided by these Rules, an application shall not be amended after payment of the final fee referred to in subsection 30(1), (5), (6.2) or (6.3).

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

    • (a) subsection (1) does not apply; and

    • (b) an application shall not be amended after a new notice of allowance is sent under subsection 30(1), (5), (6.2) or (6.3).

  • SOR/2007-90, s. 8;
  • SOR/2013-212, s. 5.

 Amendments to an application shall be made by inserting new pages in place of the pages altered by the amendments and shall be accompanied by a statement explaining their nature and purpose.

 Clerical errors in any document relating to an application, other than a specification, a drawing or a document effecting a transfer or a change of name, which are due to the fact that something other than what was obviously intended was written, may be corrected by the applicant.

Unity of Invention

 For the purposes of section 36 of the Act or of the Act as it read immediately before October 1, 1989, an application does not claim more than one invention if the subject-matters defined by the claims are so linked as to form a single general inventive concept.

Inventors and Entitlement

  •  (1) If the applicant is the inventor, the application must contain a statement to that effect.

  • (2) If the applicant is not the inventor, the application must contain a statement indicating the name and address of the inventor and,

    • (a) in respect of an application other than a PCT national phase application, a declaration that the applicant is the legal representative of the inventor; and

    • (b) in respect of a PCT national phase application, either

      • (i) a declaration that the applicant is the legal representative of the inventor, or

      • (ii) a declaration as to the applicant’s entitlement, as at the filing date, to apply for and be granted a patent, in accordance with Rule 4.17 of the Regulations under the PCT.

  • (3) A statement or declaration required by subsection (1) or (2) shall be included in the petition or be submitted in a separate document.

  • (4) If an application does not comply with the requirements of subsections (1) to (3), the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those requirements before the later of the expiry of the 3-month period after the date of the notice and the expiry of the 12-month period after the filing date of the application.

  • SOR/2009-319, s. 6.

Transfers and Changes of Name

 No transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the currently recognized owner to the new owner has been registered in the Patent Office in respect of that patent or application.

 No change in the name of the owner of a patent or an application shall be recognized by the Commissioner unless evidence of the change in the name of the owner, by way of affidavit, statutory declaration or a copy of a document effecting the change, has been registered in the Patent Office in respect of that patent or application.

 Registration of a transfer shall not of itself operate as a revocation of an appointment of a patent agent or as an appointment of a representative.

 A patent shall not be granted to a transferee of an application unless the request for registration of the transfer is filed on or before the date on which the final fee is paid in accordance with subsection 30(1), (5), (6.2) or (6.3) or, if the final fee is refunded, on or before the date on which the final fee is paid again.

  • SOR/2013-212, s. 6.

Registration of Documents

 Subject to sections 49 and 50 of the Act, the Commissioner shall, upon request and on payment of the fee set out in item 21 of Schedule II, register in the Patent Office any document relating to a patent or an application.

Reissue

 An application for reissue pursuant to section 47 of the Act shall follow the form and the instructions for its completion set out in Form 1 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

Disclaimer

 A disclaimer pursuant to section 48 of the Act or of the Act as it read immediately before October 1, 1989 shall follow the form and the instructions for its completion set out in Form 2 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

Re-Examination

 Except when made by the patentee or when filed in electronic form, a request under section 48.1 of the Act for a re-examination of any claim of a patent, and the prior art, shall be filed in duplicate.

  • SOR/2013-212, s. 7.

 New claims proposed by a patentee under subsection 48.3(2) of the Act shall be numbered consecutively beginning with the number immediately following the number of the last claim in the patent.

  • SOR/2013-212, s. 7.

Secret Applications and Patents

 Where the Minister of National Defence gives a certificate in accordance with subsection 20(7) of the Act in relation to an application, all entries in any way concerning the application that may appear in any ordinary register maintained in the Patent Office are wholly obliterated, and no further entry concerning the application or any patent granted on the basis of the application shall be made in any such register until that Minister waives the benefits of that section with respect to such application or patent.

 Where the Governor in Council orders under subsection 20(17) of the Act that an invention described in an application shall be treated for the purposes of section 20 of the Act as if it had been assigned or agreed to be assigned to the Minister of National Defence, the Commissioner shall, as soon as the Commissioner is informed of the order, notify the applicant by registered mail.

 The Commissioner shall permit any public servant authorized in writing by the Minister of National Defence, or any officer of Her Majesty’s Canadian Forces authorized in writing by the Minister of National Defence, to inspect any pending application that relates to any instrument or munition of war and to obtain a copy of any such application.

Abuse of Rights under Patents

  •  (1) In this section, application means an application referred to in section 68 of the Act presented to the Commissioner under subsection 65(1) of the Act.

  • (2) Every application shall be accompanied by the fee set out in item 16 of Schedule II.

  • (3) For the purposes of subsection 69(1) of the Act, the prescribed time is the four-month period after

    • (a) the date on which the person or the patentee has been served with copies of the application and declarations referred to in subsection 68(1) of the Act; or

    • (b) where the person or the patentee has not been so served, the later of the date on which the application is advertised in the Canada Gazette and the date on which the application is advertised in the Canadian Patent Office Record.

PART IIPatent Cooperation Treaty

Definition

 In this Part, priority date has the same meaning as in Article 2(xi) of the Patent Cooperation Treaty. (date de priorité)

Application of Treaty

 Subject to subsection 58(8), the provisions of the Patent Cooperation Treaty and the Regulations under the PCT shall apply in respect of

  • (a) an international application filed with the Commissioner;

  • (b) an international application in which Canada is designated in accordance with the Patent Cooperation Treaty; and

  • (c) an international application in which Canada is designated and elected in accordance with the Patent Cooperation Treaty.

  • SOR/99-291, s. 3.
 
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