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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)

Re-examination (continued)

Marginal note:Numbering of claims

 An amended claim or a new claim proposed by a patentee under subsection 48.3(2) of the Act must be numbered consecutively in Arabic numerals, beginning with the number immediately following the number of the last claim in the patent.

Registration of Documents and Recording of Transfers

Marginal note:Related documents

 The Commissioner must, on the receipt of a request and the fee set out in item 33 of Schedule 2, register in the Patent Office a document relating to a patent or an application for a patent.

Marginal note:Name change

 If an applicant for a patent or a patentee changes their name, the Commissioner must, on the receipt of a request from that applicant or patentee and the fee set out in item 34 of Schedule 2, record that name change.

Marginal note:Request to record transfer

 A request to record a transfer under section 49 of the Act must contain the name and postal address of the transferee and be accompanied by the fee set out in item 35 of Schedule 2.

Marginal note:Condition for recording transfer of application

 The Commissioner must not record the transfer of an application for a patent under subsection 49(2) of the Act if the request to record the transfer is submitted after the day on which the final fee set out in item 13 of Schedule 2 is paid or, if the final fee is refunded, after the day on which the final fee is paid again.

Third party Rights

Marginal note:Period

 For the purposes of subsections 55.11(2), (3), (7) and (9) of the Act, the prescribed periods are

  • (a) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11(1)(a)(i) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 27.1(1) of the Act was due under that subsection but was not paid, without taking into account subsection 27.1(3) of the Act, and ending

    • (i) if the Commissioner, under paragraph 27.1(2)(b) of the Act, sent a notice to the applicant because of that omission, and if the application is deemed to be abandoned under paragraph 73(1)(c) of the Act because the prescribed fee and the late fee referred to in that notice were not paid within the time referred to in that paragraph, on the earlier of

      • (A) the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment, and

      • (B) the day on which the patent was granted, or

    • (ii) if the application was not deemed to be abandoned under paragraph 73(1)(c) of the Act for the reason referred to in subparagraph (i), on the earlier of

      • (A) the day on which that prescribed fee and the late fee referred to in subsection 27.1(2) of the Act were paid — or, if they were paid on different days, the later of those days — without taking into account subsection 27.1(3) of the Act, and

      • (B) the day on which the patent was granted;

  • (b) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11(1)(a)(ii) of the Act, the period beginning six months after the end of the prescribed time referred to in subsection 35(2) of the Act and ending

    • (i) if the application was deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of

      • (A) the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment, and

      • (B) the day on which the patent was granted, or

    • (ii) if the application was not deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of

      • (A) the day on which the request referred to in subsection 35(3) of the Act was made and the prescribed fee and late fee referred to in that subsection were paid — or, if the request was made on a different day than the day on which those fees were paid, or those fees were paid on different days, the latest of those days — without taking into account subsection 35(4) of the Act, and

      • (B) the day on which the patent was granted;

  • (c) in the case of a patent that was granted on the basis of a divisional application referred to in paragraph 55.11(1)(b) of the Act, any period that applies under this section in respect of a patent granted on the basis of the original application, or that would apply to that patent if it were granted, but excluding any part of that period that is after the presentation date of the divisional application; and

  • (d) in the case of a patent referred to in paragraph 55.11(1)(c) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 46(1) of the Act was due under that subsection but was not paid, without taking into account subsection 46(3) of the Act, and ending

    • (i) if the Commissioner, under paragraph 46(2)(b) of the Act, sent a notice to the patentee because of that omission and if, without taking into account subsection 46(5) of the Act, the patent was deemed to have expired under subsection 46(4) of the Act because the prescribed fee and the late fee referred to in subsection 46(2) of the Act were not paid within the time referred to in subsection 46(4) of the Act, on the day on which subsection 46(4) of the Act is deemed never to have produced its effects under subsection 46(5) of the Act, or

    • (ii) if, without taking into account subsection 46(5) of the Act, the term limited for the duration of the patent is not deemed to have expired under subsection 46(4) of the Act for the reason referred to in subparagraph (i), on the day on which that prescribed fee and the late fee referred to in subsection 46(2) of the Act were paid — or, if they were paid on different days, the later of those days — without taking into account subsection 46(3) of the Act.

Abuse of Rights Under Patents

Marginal note:Application fee

  •  (1) A person who makes an application under section 65 or 127 of the Act must pay the fee set out in item 31 of Schedule 2.

  • Marginal note:Fee for advertisement

    (2) If the applicant requests advertisement of the application on the website of the Canadian Intellectual Property Office, they must pay the fee set out in item 32 of Schedule 2.

Marginal note:Time to deliver counter statement

  •  (1) For the purposes of subsection 69(1) of the Act, including that subsection as modified by section 128 of the Act, the prescribed time is four months after the latest of the following dates:

    • (a) in respect of a person that is served with copies of the application and the statutory declarations referred to in subsection 68(1) of the Act, the day on which that person is served or, if the copies of the application and the statutory declarations are served on that person on different days, the later of those days,

    • (b) the day on which the application is advertised in the Canada Gazette, and

    • (c) the day on which the application is advertised on the website of the Canadian Intellectual Property Office.

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

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

Abandonment and Reinstatement

Marginal note:Time to reply

  •  (1) For the purposes of paragraph 73(1)(a) of the Act, the prescribed time is four months after the date of the notice of the requisition made by the examiner.

  • Marginal note:Exception to subsection 3(1)

    (2) Subsection 3(1) does not authorize the Commissioner to extend the time prescribed by subsection (1) beyond six months after the date of the notice.

Marginal note:Application deemed abandoned

 For the purposes of subsection 73(2) of the Act, an application for a patent is deemed to be abandoned if

  • (a) the applicant does not comply with a notice of the Commissioner referred to in subsection 15(4) within the time referred to in that subsection;

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

  • (c) 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;

  • (d) 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

  • (e) 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).

Marginal note:Prescribed time — request for reinstatement

  •  (1) For the purposes of paragraph 73(3)(a) of the Act, in respect of a failure to take an action, the prescribed time is 12 months after the day on which the application for a patent is deemed, as a result of that failure, to be abandoned.

  • Marginal note:Request for reinstatement — multiple failures

    (2) A request for reinstatement may be made in respect of more than one failure to take an action, if the request is made before the end of the applicable prescribed time that is the first to end.

  • Marginal note:Failure to pay certain fees

    (3) If an application for a patent is deemed to be abandoned for failure to pay a fee referred to in subsection 68(1) or (2), 80(1) or 87(1), the action that should have been taken in order to avoid that abandonment and that the applicant must take before the end of the time prescribed by subsection (1) in order to reinstate the application is

    • (a) the payment of the applicable standard fee; or

    • (b) if the small entity status condition set out in subsection 44(2) is met, the filing of a small entity declaration in respect of the application in accordance with subsection 44(3) and the payment of the applicable small entity fee.

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

    (4) Subsection 3(1) does not apply to the time prescribed by subsection (1).

 
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