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Patent Act (R.S.C., 1985, c. P-4)

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Act current to 2019-11-19 and last amended on 2019-10-30. Previous Versions

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

Marginal note:Appeals

  •  (1) Any decision of a re-examination board set out in a certificate issued under subsection 48.4(1) is subject to appeal by the patentee to the Federal Court.

  • Marginal note:Limitation

    (2) No appeal may be taken under subsection (1) after three months from the date a copy of the certificate is sent by registered mail to the patentee.

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

Transfers

Marginal note:Patent, application and right or interest in invention

  •  (1) A patent, an application for a patent, and the right or interest in an invention are transferable, in whole or in part.

  • Marginal note:Recording of transfer of application

    (2) The Commissioner shall, subject to the regulations, record the transfer of an application for a patent on the request of the applicant or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the application.

  • Marginal note:Recording of transfer of patent

    (3) The Commissioner shall, subject to the regulations, record the transfer of a patent on the request of the patentee or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the patent.

  • Marginal note:Transfer void

    (4) A transfer of a patent that has not been recorded is void against a subsequent transferee if the transfer to the subsequent transferee has been recorded.

  • Marginal note:Removal of recording

    (5) The Commissioner shall remove the recording of the transfer of an application for a patent or the transfer of a patent on receipt of evidence satisfactory to the Commissioner that the transfer should not have been recorded.

  • Marginal note:Limitation

    (6) The Commissioner is not authorized to remove the recording of a transfer of a patent for the reason only that the transferor had previously transferred the patent to another person.

  • R.S., 1985, c. P-4, s. 49
  • R.S., 1985, c. 33 (3rd Supp.), s. 19
  • 2014, c. 39, s. 134

 [Repealed, 2014, c. 39, s. 134]

 [Repealed, 2014, c. 39, s. 134]

Marginal note:Jurisdiction of Federal Court

 The Federal Court has jurisdiction, on the application of the Commissioner or of any person interested, to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.

  • R.S., c. P-4, s. 54
  • R.S., c. 10(2nd Supp.), s. 64

Standard-Essential Patents

Marginal note:Subsequent patentee or holder bound

  •  (1) A licensing commitment in respect of a standard-essential patent that binds the patentee, binds any subsequent patentee and any holder of any certificate of supplementary protection that sets out that patent.

  • Marginal note:Subsequent holder bound

    (2) If a certificate of supplementary protection sets out a standard-essential patent, a licensing commitment that binds the holder of that certificate of supplementary protection, binds any subsequent holder of the certificate of supplementary protection.

  • Marginal note:Application

    (3) Subsections (1) and (2) apply despite any other Act of Parliament and any decision or order made under such an Act.

  • 2018, c. 27, s. 190
 
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