Patent Rules (SOR/96-423)

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Regulations are current to 2018-07-05 and last amended on 2018-06-25. Previous Versions

  •  (1) Subject to section 3.02, a small entity declaration

    • (a) shall be filed with the Commissioner by the authorized correspondent, in the case of an application, or by the patentee, in the case of a patent;

    • (b) may be filed as part of the petition or as a separate document;

    • (c) shall, if not filed as part of the petition, identify the application or patent to which it relates;

    • (d) shall contain a statement to the effect that the applicant or patentee believes that in accordance with subsection (2) they are entitled to pay fees at the small entity level in respect of that application or patent;

    • (e) shall be signed by the applicant or patentee or by a patent agent appointed by the applicant or patentee; and

    • (f) shall indicate the name of the applicant or patentee and, if applicable, the name of the patent agent signing the declaration.

  • (2) An applicant or patentee may pay fees at the small entity level in respect of an application or patent if

    • (a) in respect of an application other than a PCT national phase application or a patent issued on the basis of such an application, on the filing date of the application the applicant originally identified in the petition is a small entity in respect of the invention to which the application or patent relates; and

    • (b) in respect of a PCT national phase application or a patent issued on the basis of such an application, on the date when the requirements of subsection 58(1) and, if applicable, subsection 58(2) are complied with, the applicant who complies with those requirements is a small entity in respect of the invention to which the application or patent relates.

  • (3) For the purposes of subsection (2), small entity, in respect of an invention, means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that

    • (a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or

    • (b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.

  • (4) For greater certainty, for the purposes of this section,

    • (a) a divisional application is considered to have the same filing date as the original application;

    • (b) a small entity declaration filed in respect of an original application on a date that is on or before the actual date of filing of a divisional application shall be considered to have also been filed on that date in respect of the divisional application; and

    • (c) a reissued patent is considered to be issued on the basis of the original application.

  • SOR/2007-90, s. 2.
  •  (1) A small entity declaration by a person, other than the patentee, requesting re-examination shall

    • (a) contain a statement to the effect that the person believes that, at the time of the request for re-examination, they are a small entity;

    • (b) be signed by the person or by a patent agent appointed by that person; and

    • (c) indicate the name of the person and, if applicable, the name of the patent agent signing the declaration.

  • (2) For the purposes of subsection (1), small entity means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees.

  • SOR/2007-90, s. 2.
  •  (1) Subject to subsection 6(1), if, before the expiry of a time limit for paying a fee set out in Schedule II, the Commissioner receives a communication in accordance with which a clear but unsuccessful attempt is made to pay the fee, the fee shall be considered to have been paid before the expiry of the time limit if

    • (a) the amount of the fee that was missing is paid before the expiry of the time limit;

    • (b) if a notice is sent in accordance with subsection (2), the amount of the fee that was missing, together with the late payment fee set out in item 22.1 of Schedule II, are paid before the expiry of the two-month period after the date of the notice; or

    • (c) if a notice is not sent, the amount of the fee that was missing, together with the late payment fee set out in item 22.1 of Schedule II, are paid before the expiry of the two-month period after the day on which the communication was received by the Commissioner.

  • (2) Subject to subsection 6(1) and unless the person making the communication did not provide information that would allow them to be contacted, if the Commissioner has received a communication in the circumstances referred to in subsection (1), the Commissioner shall, by notice to the person who made the communication, request payment of the amount of the fee that was missing together, if applicable, with the late payment fee referred to in subsection (1).

  • (3) Subsections (1) and (2) do not apply in respect of the fees set out in items 9 to 9.4 and 22.1 of Schedule II.

  • SOR/2003-208, s. 2.
  •  (1) The Commissioner shall, on request, refund fees in accordance with subsections (2) to (16).

  • (2) If an application does not meet the requirements of section 28 of the Act entitling it to a filing date, the fee paid shall be refunded, less $25.

  • (3) Where an application is submitted to the Commissioner by mistake and the Commissioner is notified before the application has been assigned a number that the application is to be withdrawn, the fee paid on the withdrawn application shall be refunded, less $25.

  • (4) Where, through inadvertence, more than one application is filed for the same invention, by or on behalf of the same person, and where any one of such applications is withdrawn before examination, any fee paid on the withdrawn application shall be refunded, less one-half of the filing fee.

  • (5) Where the Commissioner sends a notice to the applicant pursuant to subsection 94(1) and the applicant does not comply with the requisition set out in that notice, any fee paid pursuant to that subsection shall be refunded, less $25.

  • (6) If a person pays a standard fee set out in an item of Schedule II, no refund shall be made solely for the reason that the appropriate fee is in fact the small entity fee set out in that item.

  • (7) Where a fee to register any document relating to a patent or an application is received and the document is not submitted, the fee paid shall be refunded.

  • (8) Where a request for the reinstatement of an abandoned application is received and the applicant does not comply with the requirements for reinstatement, any fee paid for reinstatement shall be refunded, less one-half of the reinstatement fee.

  • (9) Where a request for the reinstatement of an abandoned application is refused, any fee paid for reinstatement shall be refunded.

  • (10) A final fee referred to in subsection 30(1), (5), (6.2) or (6.3) shall be refunded if

    • (a) it is received during the prosecution of an application and the application is subsequently refused or abandoned;

    • (b) a request for its return is received before the start of technical preparations for issue; or

    • (c) it is submitted by a person who is not the authorized correspondent.

  • (11) The fee paid under subparagraph 12(b)(ii) shall be reimbursed if, within 30 days after receipt of notification from the Commissioner that a candidate has passed an equivalent paper of a previously administered examination, the candidate notifies the Commissioner in writing that they no longer intend to sit for the paper.

  • (12) When the fee received with a request for a copy of a document is insufficient and the request is cancelled, the fee paid shall be refunded.

  • (13) When an application referred to in section 68 of the Act and presented under subsection 65(1) of the Act is not advertised in the Canadian Patent Office Record, any fee paid for advertising the application shall be refunded.

  • (14) Subject to subsections (2) to (13) and (15), any fee paid by mistake for copies of a document that the Patent Office does not have or paid in excess of the fee prescribed shall be refunded.

  • (15) No refund shall be made if the amount of the refund amounts to less than $1 or if the refund results from the exchange on foreign currency.

  • (16) No refund shall be made unless the request is made before the expiry of three years after the day on which the payment was made.

  • SOR/2007-90, s. 3;
  • SOR/2009-319, s. 2;
  • SOR/2013-212, s. 2;
  • SOR/2013-231, s. 1.

Communications

  •  (1) Correspondence intended for the Commissioner or the Patent Office shall be addressed to the “Commissioner of Patents”.

  • (2) Correspondence addressed to the Commissioner may be physically delivered to the Patent Office during ordinary business hours of the Office and shall be considered to be received by the Commissioner on the day of the delivery.

  • (3) For the purposes of subsection (2), where correspondence addressed to the Commissioner is physically delivered to the Patent Office outside of its ordinary business hours, it shall be considered to have been delivered to the Office during ordinary business hours on the day when the Office is next open for business.

  • (4) Correspondence addressed to the Commissioner may be physically delivered to an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered, during ordinary business hours of that establishment, and

    • (a) where the delivery is made to the establishment on a day that the Patent Office is open for business, the correspondence shall be considered to be received by the Commissioner on that day; and

    • (b) where the delivery is made to the establishment on a day that the Patent Office is closed for business, the correspondence shall be considered to be received by the Commissioner on the day when the Office is next open for business.

  • (5) For the purposes of subsection (4), where correspondence addressed to the Commissioner is physically delivered to an establishment outside of ordinary business hours of the establishment, it shall be considered to have been delivered to that establishment during ordinary business hours on the day when the establishment is next open for business.

  • (6) Correspondence addressed to the Commissioner may be sent at any time by electronic or other means of transmission specified by the Commissioner in the Canadian Patent Office Record.

  • (7) For the purposes of subsection (6), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is open for business, it shall be considered to be received by the Commissioner on that day.

  • (8) For the purposes of subsection (6), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is closed for business, it shall be considered to be received by the Commissioner on the day when the Office is next open for business.

  • SOR/99-291, s. 2.
 
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