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Patent Rules (SOR/2019-251)

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Regulations are current to 2021-11-17 and last amended on 2021-06-28. Previous Versions

PART 3Transitional Provisions (continued)

DIVISION 4Rules in Respect of Category 3 Applications (continued)

Marginal note:No amendment after rejection

 If a category 3 application is rejected by an examiner under subsection 199(1) of these Rules or subsection 30(3) of the former Rules, the specification and the drawings contained in the application must not be amended after the date prescribed by subsection 199(4) of these Rules, unless

  • (a) a notice is sent to the applicant informing them that the rejection is withdrawn;

  • (b) the amendments are those required in a notice sent under subsection 86(11) of these Rules or subsection 30(6.3) of the former Rules; or

  • (c) the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendments to be made.

Marginal note:Request to furnish sample to independent expert

  •  (1) A notice referred to in subsection 104(4) of the former Rules that was filed in respect of a category 3 application is considered to be a request referred to in section 95 of these Rules.

  • Marginal note:Independent expert considered to be nominated

    (2) An independent expert who was nominated under subsection 109(1) of the former Rules is considered to be nominated under section 96 of these Rules.

Marginal note:Documents and information — divisional application

  •  (1) For the purposes of paragraph 38.2(3.1)(b) of the Act, the prescribed documents and information in respect of a category 3 application that has a presentation date before the coming-into-force date are

    • (a) in the case of such an application that has a presentation date before June 2, 2007, the documents and information referred to in clauses 78.2(a)(iii)(A) to (D) of the Act; and

    • (b) in the case of such an application that has a presentation date on or after June 2, 2007 but before the coming-into-force date, the documents and information referred to in clauses 78.2(a)(iv)(A) to (D) of the Act.

  • Marginal note:Presentation date

    (2) The presentation date of a category 3 application is

    • (a) if all of the elements referred to in clauses 78.2(a)(iii)(A) to (E) of the Act were received by the Commissioner before June 2, 2007, the day on which they were received or, if they were received on different days, the latest of those days;

    • (b) if paragraph (a) does not apply and if at least one of the elements referred to in clauses 78.2(a)(iv)(A) to (E) of the Act was received by the Commissioner on or after June 2, 2007 and all of those elements were received by the Commissioner before the coming-into-force date, the day on which they were received, or if they were received on different days, the latest of those days; and

    • (c) if paragraphs (a) and (b) do not apply and if all of the documents and information referred to in subsection 103(1) of these Rules were received by the Commissioner and at least one of those elements was received by the Commissioner on or after the coming-into-force date, the day on which they were received or, if they were received on different days, the latest of those days.

Marginal note:Application deemed abandoned

 For the purposes of subsection 73(2) of the Act, a category 3 application is deemed to be abandoned if

  • (a) a notice is sent under section 31 and the requirements are not complied with within the applicable time referred to in that section;

  • (b) the applicant does not reply in good faith to a request of the Commissioner for further drawings under subsection 27(5.2) of the Act not later than three months after the date of the request;

  • (c) the applicant does not reply in good faith to a notice of the Commissioner referred to in section 65 within the time referred to in that section; or

  • (d) the applicant does not pay the final fee set out in item 13 of Schedule 2 within the applicable time referred to in subsection 86(1), (6), (10) or (12) or 199(2) or (5).

Marginal note:Refund of final fee

 If a category 3 application is deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before the coming-into-force date, and is subsequently reinstated,

  • (a) the Commissioner must refund the final fee paid in respect of that application if a request for a refund of the fee is received not later than one month after the date of the reinstatement of the application; and

  • (b) if the final fee paid in respect of that application has not been refunded, despite subsections 86(1), (6), (10) and (12), the Commissioner must not require payment of that fee in any notice of allowance sent after the reinstatement of the application.

DIVISION 5Rules Applicable to Certain Patents

Marginal note:Non-application of subsections 97(2) and (3)

  •  (1) Subsections 97(2) and (3) do not apply in respect of a patent granted on the basis of a category 1 or category 2 application.

  • Marginal note:Application of subsections 187(2) and (3) of former Rules

    (2) Subsections 187(2) and (3) of the former Rules continue to apply in respect of a patent issued on the basis of a category 1 application, except that the reference to subsection (1) in subsection 187(2) is to be read as a reference to subsection 97(1) of these Rules.

  • Marginal note:Application of subsections 163(2) and (3) of former Rules

    (3) Subsections 163(2) and (3) of the former Rules continue to apply in respect of a patent issued on the basis of a category 2 application, except that the reference to subsection (1) in subsection 163(2) shall be read as a reference to subsection 97(1) of these Rules.

Marginal note:Application of certain provisions of former Rules to patents granted on basis of category 1 application

 Subsections 3(9) and 182(1) to (3) of the former Rules and item 32 of Schedule II to those Rules continue to apply in respect of the applicable fee payable to maintain the rights accorded by a patent granted on the basis of a category 1 application, if the time — not including the period of grace — referred to in that item for the payment of that fee ends before the coming-into-force date.

Marginal note:Application of certain provisions of former Rules to patents granted on basis of category 3 application

  •  (1) Subsection 3(8) and sections 100 and 101 of the former Rules and item 31 of Schedule II to those Rules continue to apply in respect of the applicable fee payable to maintain the rights accorded by a patent granted on the basis of a category 3 application, if the time — not including the period of grace — referred to in that item for the payment of that fee ends before the coming-into-force date.

  • Marginal note:Extension of time

    (2) The Commissioner is authorized to extend the time for payment of the fee referred to in subsection 3(8) of the former Rules in respect of a patent issued on the basis of a category 3 application — whether the time, including a period of grace, has expired or not — the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) of these Rules are met.

Marginal note:Maintenance fee — patent

 In respect of a patent granted on the basis of a category 1 application, the reference to “set out in item 25 of Schedule 2” in subsection 112(1) is to be read as a reference to “set out in item 1 of Schedule 3”.

Marginal note:Patent not invalid

  •  (1) A patent that was granted on the basis of an international application must not be declared invalid by reason only that a fee referred to in section 58 of the former Rules was not paid.

  • Marginal note:Exception

    (2) Subsection (1) does not apply in respect of a patent that was granted before the coming-into-force date or a reissued patent if the original patent was granted before that date.

DIVISION 6Other Rules

Marginal note:Exception — national phase entry date

  •  (1) For the purposes of these Rules, if the applicant of an international application for which the international filing date, as defined in section 141, precedes the coming-into-force date has, before the coming-into-force date, complied with the requirements of subsection 58(1) and, if applicable, subsection 58(2) of the former Rules, the national phase entry date in respect of that application is the date on which the applicant complied with those requirements, or, if the applicant complied with those requirements on different dates, the latest of those dates.

  • Marginal note:Fee considered paid

    (2) If the Commissioner has, under section 179 or 190 of these Rules or subsection 26(3) of the former Rules, extended the time for the payment of a fee referred to in subsection 3(5) or (7) of the former Rules, and the fee is paid before the end of the extended period, for the purposes of subsection (1), that fee is considered to have been paid on the day on which the amount of the small entity fee was paid.

  • Marginal note:Exception — national phase entry date

    (3) In these Rules, if the applicant of an international application for which the international filing date, as defined in section 141, precedes the coming-into-force date has, on or after the coming-into-force date, complied with the requirements of subparagraphs 154(3)(a)(ii) to (iv) and paragraph 154(3)(b), the national phase entry date in respect of that application is the date on which the applicant complied with those requirements, or, if the applicant complied with those requirements on different dates, the latest of those dates.

  • Marginal note:Small entity declaration

    (4) For the purpose of subsection (3), an applicant is not considered to have paid the fee referred to in clause 154(3)(a)(iii)(A) or 154(3)(b)(i)(A) or (ii)(A) until the small entity declaration has been filed.

Marginal note:Extension of period — section 208

 The Commissioner is authorized to extend the time for the payment of a fee referred to in subsection 112(1), as modified by section 208 — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) are met.

Marginal note:Extension of period established by Commissioner

 If, under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, the Commissioner established a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is authorized to extend that period for up to six months after the requisition was made — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee set out in item 1 of Schedule 2 is paid.

Marginal note:Extension of time fixed by former Rules

 If, before the coming-into-force date, a requisition referred to in section 23, 25, 37 or 94 of the former Rules was sent by notice by the Commissioner, the Commissioner is authorized to extend the time period to reply in good faith under that section to the requisition — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee referred to in item 1 of Schedule 2 to these Rules is paid.

 [Repealed, SOR/2021-131, s. 23]

Marginal note:Documents not in English or French

 Despite section 15, the Commissioner must have regard to any document or part of a document that is submitted or made available in a language other than English or French under subsection 181(1) or 196(1) of these Rules, or provided under subsection 29(1) or paragraph 58(1)(a) of the former Rules or filed under section 89, 143 or 180 of the former Rules, in a language other than English or French.

Marginal note:Patent agent deemed to be appointed

 If, before the coming-into-force date, a patent agent was appointed in the petition or in a notice to that effect signed by the applicant and submitted to the Commissioner, the appointment of the patent agent is deemed to have been made in accordance with section 27.

Marginal note:Associate patent agent deemed to be appointed

 If, before the coming-into-force date, an associate patent agent was appointed in the petition or in a notice that was signed by the patent agent who appointed the associate patent agent and submitted to the Commissioner, the appointment of the associate patent agent is deemed to have been made in accordance with section 28.

Marginal note:Representation — application preceding coming-into-force date

 In respect of an application preceding the coming-into-force date — other than a divisional application that has a presentation date on or after the coming-into-force date — for which there are joint applicants and in respect of which no common representative is appointed under paragraph 26(3)(a) or (c), in respect of which no correction or decision referred to in subsection 26(6) was made — other than a decision made before the coming-into-force date — and in respect of which subsection 26(9) does not apply,

  • (a) if, immediately before these Rules come into force, no patent agent residing in Canada is appointed

    • (i) subsections 26(4) to (6) do not apply, and

    • (ii) subject to subsection 26(11), the joint applicant who, immediately before these Rules come into force was the authorized correspondent under the former Rules, is deemed to be appointed as the common representative; and

  • (b) if, immediately before these Rules come into force, a patent agent residing in Canada is appointed,

    • (i) if the appointment of that patent agent has been revoked, the joint applicant whose name appears first when listed in alphabetical order at the time of the revocation is, subject to subsection 26(11), deemed to be appointed as the common representative, and

    • (ii) in any other case,

      • (A) subsections 26(4) to (6) and paragraph 27(7)(a) do not apply,

      • (B) any appointment of a patent agent by the applicants on or after the coming-into-force date may, despite subsection 27(3), be made only by a notice to that effect signed by all of the applicants and submitted to the Commissioner, and

      • (C) an appointment of a patent agent may be revoked by submitting to the Commissioner a notice to that effect signed by all of the applicants or by that patent agent.

Marginal note:Representation — patent granted before coming-into-force date

 In respect of a patent — other than a reissued patent — granted before the coming-into-force date for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

  • (a) if, immediately before the patent was granted, no patent agent residing in Canada was appointed in respect of the application on which the patent was based and if the joint applicant who, immediately before the patent was granted, was the authorized correspondent under the former Rules, is a patentee immediately before these Rules come into force,

    • (i) subsection 26(7) does not apply, and

    • (ii) subject to subsection 26(11), that applicant is deemed to be appointed as the common representative; and

  • (b) in any other case,

    • (i) subsection 26(7) and paragraph 27(7)(a) do not apply,

    • (ii) any appointment of a patent agent by the patentees on or after the coming-into-force date may, despite subsection 27(3), be made only by a notice to that effect signed by all of the patentees and submitted to the Commissioner, and

    • (iii) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Representation — patent reissued before coming-into-force date

 In respect of a patent that is reissued before the coming-into-force date for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

  • (a) if, immediately before the original patent was granted, no patent agent residing in Canada was appointed in respect of the application on which the original patent was based and if the joint applicant who, immediately before the original patent was granted, was the authorized correspondent under the former Rules, is a patentee of the reissued patent immediately before these Rules come into force,

    • (i) subsection 26(8) does not apply, and

    • (ii) subject to subsection 26(11), that applicant is deemed to be appointed as the common representative; and

  • (b) in any other case,

    • (i) subsection 26(8) and paragraph 27(7)(a) do not apply,

    • (ii) any appointment of a patent agent by the patentees on or after the coming-into-force date may, despite subsection 27(3), be made only by a notice to that effect signed by all of the patentees and submitted to the Commissioner, and

    • (iii) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

 
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