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Patent Rules (SOR/2019-251)

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Regulations are current to 2020-06-17 and last amended on 2019-10-30. Previous Versions

PART 1Rules of General Application (continued)

Request for Priority (continued)

Marginal note:Withdrawal of request for priority

  •  (1) For the purposes of subsection 28.4(3) of the Act, a request for priority may be withdrawn by filing a request to that effect with the Commissioner.

  • Marginal note:Effective date

    (2) The effective date of the withdrawal of a request for priority is the date on which the request is received by the Commissioner.

Marginal note:Notice to submit translation

  •  (1) If a previously regularly filed application for a patent in respect of which a request for priority in respect of a pending application for a patent is based is partly or entirely in a language other than English or French and if, for the purposes of examining the pending application, an examiner takes into account the previously regularly filed application, the examiner may by notice require the applicant of the pending application to submit to the Commissioner an English or French translation of the whole or a specified part of the previously regularly filed application not later than four months after the date of the notice.

  • Marginal note:Translation not accurate

    (2) If the examiner has reasonable grounds to believe that a translation submitted under subsection (1) is not accurate, the examiner may by notice require the applicant of the pending application for a patent to submit to the Commissioner not later than four months after the date of the notice either

    • (a) a statement by the translator that, to the best of the translator’s knowledge, the translation is accurate; or

    • (b) a new English or French translation, as applicable, together with a statement by the translator that, to the best of the translator’s knowledge, the new translation is accurate.

  • Marginal note:Request for priority considered withdrawn

    (3) If the applicant of the pending application for a patent does not comply with a notice under subsection (1) or (2) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in subsection (1) or (2), as applicable, in respect of that previously regularly filed application.

Restoration of Right of Priority

Marginal note:Prescribed time

  •  (1) For the purposes of paragraph 28.4(6)(b) of the Act,

    • (a) in respect of a pending application, or a co-pending application, that is not a PCT national phase application, the applicant must meet the conditions set out in subparagraphs 28.4(6)(b)(i) to (iii) of the Act not later than two months after the filing date of the pending application or the co-pending application, as the case may be; and

    • (b) in respect of a pending application, or a co-pending application, that is a PCT national phase application,

      • (i) the applicant must meet the conditions referred to in subparagraphs 28.4(6)(b)(i) and (ii) of the Act not later than one month after the national phase entry date of that application, and

      • (ii) the applicant must meet the condition referred to in subparagraph 28.4(6)(b)(iii) of the Act before the earlier of

        • (A) the end of the time prescribed by subsection 73(1), and

        • (B) the end of one month after the national phase entry date of that application.

  • Marginal note:Prescribed Requirements

    (2) For the purposes of subparagraph 28.4(6)(b)(iii) of the Act, the prescribed requirements are that the applicant

    • (a) must make a request for priority in the petition or in a document other than the abstract, the specification or the drawings; and

    • (b) must submit to the Commissioner the filing date and the name of the country or office of filing of the previously regularly filed application for a patent.

  • Marginal note:Non-application of subsection 3(1)

    (3) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

Marginal note:Divisional application — within 12 months

 Paragraph 28.4(6)(b) of the Act does not apply in respect of a divisional application, in relation to a previously regularly filed application, if the filing date of the original application is deemed under subsection 28.4(6) of the Act to be within 12 months after the filing date of that previously regularly filed application for a patent.

Request for Examination

Marginal note:Contents of request

 A request for examination of an application for a patent, referred to in subsection 35(1) of the Act, must contain

  • (a) the name and postal address of the person making the request;

  • (b) the name of the applicant, if the person making the request is not the applicant; and

  • (c) the application number or other information sufficient to identify the application.

Marginal note:Examination fee

  •  (1) For the purposes of subsection 35(1) of the Act, the prescribed fee for an application for a patent to be examined is

    • (a) the applicable small entity fee set out in item 10 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)

      • (i) within the applicable time prescribed by section 81, or

      • (ii) if a notice is required to be sent under paragraph 35(3)(b) of the Act, before the notice is sent or, if the notice has been sent, before the end of two months after the date of the notice; and

    • (b) in any other case, the applicable standard fee set out in that item.

  • Marginal note:Non-application of subsection 3(1)

    (2) Subsection 3(1) does not apply in respect of the times prescribed by subsection (1).

Marginal note:Prescribed time — subsection 35(2) of Act

  •  (1) For the purposes of subsection 35(2) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before

    • (a) in respect of an application for a patent other than a divisional application, the end of a period of four years after the filing date of the application; and

    • (b) in respect of a divisional application, the later of

      • (i) the end of the time that is applicable under this subsection in respect of the original application, and

      • (ii) the end of a period of three months after the presentation date of the divisional application.

  • Marginal note:Non-application of subsection 3(1)

    (2) Subsection 3(1) does not apply in respect of the times prescribed by subsection (1).

Marginal note:Late fee

 For the purposes of subsection 35(3) of the Act, the prescribed late fee is the fee set out in item 11 of Schedule 2.

Marginal note:Prescribed time — subsection 35(5) and paragraph 73(1)(e) of Act

  •  (1) For the purposes of subsection 35(5) and paragraph 73(1)(e) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before the end of a period of three months after the date of the notice referred to in that subsection or that paragraph.

  • Marginal note:Non-application of subsection 3(1)

    (2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

Examination

Marginal note:Advancing examination

  •  (1) In respect of an application for a patent that is open to public inspection at the Patent Office, the Commissioner must advance out of its routine order the examination of the application on the request of

    • (a) any person, if they pay the fee set out in item 12 of Schedule 2 and file with the Commissioner a statement indicating that failure to advance the examination of the application is likely to prejudice that person’s rights; or

    • (b) the applicant, if the applicant files with the Commissioner a statement indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources.

  • Marginal note:Exception

    (2) In respect of a request made under subsection (1) by an applicant, the Commissioner must not advance the examination of the application for a patent out of its routine order or, if the examination is advanced, must return it to its routine order if

    • (a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application; or

    • (b) the application is or was deemed to be abandoned.

 
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