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Patent Act (R.S.C., 1985, c. P-4)

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Act current to 2019-07-01 and last amended on 2018-12-13. Previous Versions

Reissue of Patents

Marginal note:Issue of new or amended patents

  •  (1) Whenever any patent is deemed defective or inoperative by reason of insufficient description and specification, or by reason of the patentee’s claiming more or less than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, the Commissioner may, on the surrender of the patent within four years from its date and the payment of a further prescribed fee, cause a new patent, in accordance with an amended description and specification made by the patentee, to be issued to him for the same invention for the then unexpired term for which the original patent was granted.

  • Marginal note:Certificate of supplementary protection

    (1.1) Subsection (1) also applies in the case where the original patent is set out in a certificate of supplementary protection and the original patent’s term has expired, except that in that case the issuance of the new patent, whose term remains expired, is for the purpose of establishing the rights, privileges and liberties granted under the certificate.

  • Marginal note:Effect of new patent

    (2) The surrender referred to in subsection (1) takes effect only on the issue of the new patent, and the new patent and the amended description and specification have the same effect in law, on the trial of any action thereafter commenced for any cause subsequently accruing, as if the amended description and specification had been originally filed in their corrected form before the issue of the original patent, but, in so far as the claims of the original and reissued patents are identical, the surrender does not affect any action pending at the time of reissue or abate any cause of action then existing, and the reissued patent to the extent that its claims are identical with the original patent constitutes a continuation thereof and has effect continuously from the date of the original patent.

  • Marginal note:Separate patents for separate parts

    (3) The Commissioner may entertain separate applications and cause patents to be issued for distinct and separate parts of the invention patented, on payment of the fee for a reissue for each of the reissued patents.

  • R.S., 1985, c. P-4, s. 47
  • 2017, c. 6, s. 37

Disclaimers

Marginal note:Patentee may disclaim anything included in patent by mistake

  •  (1) Whenever, by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has

    • (a) made a specification too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor, or

    • (b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right,

    the patentee may, on payment of a prescribed fee, make a disclaimer of such parts as the patentee does not claim to hold by virtue of the patent or the assignment thereof.

  • Marginal note:Form and attestation of disclaimer

    (2) A disclaimer shall be filed in the prescribed form and manner.

  • (3) [Repealed, 1993, c. 15, s. 44]

  • Marginal note:Pending suits not affected

    (4) No disclaimer affects any action pending at the time when it is made, unless there is unreasonable neglect or delay in making it.

  • Marginal note:Death of patentee

    (5) In case of the death of an original patentee or of his having assigned the patent, a like right to disclaim vests in his legal representatives, any of whom may exercise it.

  • Marginal note:Effect of disclaimer

    (6) A patent shall, after disclaimer as provided in this section, be deemed to be valid for such material and substantial part of the invention, definitely distinguished from other parts thereof claimed without right, as is not disclaimed and is truly the invention of the disclaimant, and the disclaimant is entitled to maintain an action or suit in respect of that part accordingly.

  • R.S., 1985, c. P-4, s. 48
  • R.S., 1985, c. 33 (3rd Supp.), s. 17
  • 1993, c. 15, s. 44

Re-examination

Marginal note:Request for re-examination

  •  (1) Any person may request a re-examination of any claim of a patent by filing with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, and by paying a prescribed fee.

  • Marginal note:Pertinency of request

    (2) A request for re-examination under subsection (1) shall set forth the pertinency of the prior art and the manner of applying the prior art to the claim for which re-examination is requested.

  • Marginal note:Notice to patentee

    (3) Forthwith after receipt of a request for re-examination under subsection (1), the Commissioner shall send a copy of the request to the patentee of the patent in respect of which the request is made, unless the patentee is the person who made the request.

  • R.S., 1985, c. 33 (3rd Supp.), s. 18
  • 1993, c. 15, s. 45

Marginal note:Establishment of re-examination board

  •  (1) Forthwith after receipt of a request for re-examination under subsection 48.1(1), the Commissioner shall establish a re-examination board consisting of not fewer than three persons, at least two of whom shall be employees of the Patent Office, to which the request shall be referred for determination.

  • Marginal note:Determination to be made by board

    (2) A re-examination board shall, within three months following its establishment, determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request for re-examination.

  • Marginal note:Notice

    (3) Where a re-examination board has determined that a request for re-examination does not raise a substantial new question affecting the patentability of a claim of the patent concerned, the board shall so notify the person who filed the request and the decision of the board is final for all purposes and is not subject to appeal or to review by any court.

  • Marginal note:Idem

    (4) Where a re-examination board has determined that a request for re-examination raises a substantial new question affecting the patentability of a claim of the patent concerned, the board shall notify the patentee of the determination and the reasons therefor.

  • Marginal note:Filing of reply

    (5) A patentee who receives notice under subsection (4) may, within three months of the date of the notice, submit to the re-examination board a reply to the notice setting out submissions on the question of the patentability of the claim of the patent in respect of which the notice was given.

  • R.S., 1985, c. 33 (3rd Supp.), s. 18
  • 1993, c. 15, s. 46(F)

Marginal note:Re-examination proceeding

  •  (1) On receipt of a reply under subsection 48.2(5) or in the absence of any reply within three months after notice is given under subsection 48.2(4), a re-examination board shall forthwith cause a re-examination to be made of the claim of the patent in respect of which the request for re-examination was submitted.

  • Marginal note:Patentee may submit amendments

    (2) In any re-examination proceeding under subsection (1), the patentee may propose any amendment to the patent or any new claims in relation thereto but no proposed amendment or new claim enlarging the scope of a claim of the patent shall be permitted.

  • Marginal note:Time limitation

    (3) A re-examination proceeding in respect of a claim of a patent shall be completed within twelve months of the commencement of the proceedings under subsection (1).

  • R.S., 1985, c. 33 (3rd Supp.), s. 18

Marginal note:Certificate of board

  •  (1) On conclusion of a re-examination proceeding in respect of a claim of a patent, the re-examination board shall issue a certificate

    • (a) cancelling any claim of the patent determined to be unpatentable;

    • (b) confirming any claim of the patent determined to be patentable; or

    • (c) incorporating in the patent any proposed amended or new claim determined to be patentable.

  • Marginal note:Certificate attached to patent

    (2) A certificate issued in respect of a patent under subsection (1) shall be attached to the patent and made part thereof by reference, and a copy of the certificate shall be sent by registered mail to the patentee.

  • Marginal note:Effect of certificate

    (3) For the purposes of this Act, where a certificate issued in respect of a patent under subsection (1)

    • (a) cancels any claim but not all claims of the patent, the patent shall be deemed to have been issued, from the date of grant, in the corrected form;

    • (b) cancels all claims of the patent, the patent shall be deemed never to have been issued; or

    • (c) amends any claim of the patent or incorporates a new claim in the patent, the amended claim or new claim shall be effective, from the date of the certificate, for the unexpired term of the patent.

  • Marginal note:Appeals

    (4) Subsection (3) does not apply until the time for taking an appeal has expired under subsection 48.5(2) and, if an appeal is taken, subsection (3) applies only to the extent provided in the final judgment on the appeal.

  • R.S., 1985, c. 33 (3rd Supp.), s. 18
  • 1993, c. 15, s. 47
 
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