Patent Rules (SOR/2019-251)

Marginal note:Exception to subsection 84(1)

198 If a request is made by an applicant under subsection 84(1) in relation to a category 3 application, the Commissioner must not, despite that subsection, advance the examination of that application out of its routine order or, if the examination has been 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;

• (b) after April 30, 2011, the Commissioner has, under subsection 26(1) of the former Rules, extended the time fixed for doing anything in respect of the application;

• (c) after April 30, 2011, the application is or was deemed to be abandoned under

  • (i) subsection 73(1) of the Act, or

  • (ii) subsection 73(1) of the Act, as it read immediately before October 30, 2019; or

• (d) on or after October 30, 2019, the application is or was deemed to be abandoned under subsection 73(2) of the Act.

Marginal note:Exception to subsection 86(16)

198.1 In subsection 86(16), the reference to paragraph 132(1)(g), in relation to a category 3 application, is to be read as a reference to paragraph 203(1)(e).

Marginal note:Rejection for defects

• 199 (1) If an applicant of a category 3 application replies in good faith to a requisition made under subsection 30(2) of the former Rules on or before the date set out in subsection (4) of this section but the examiner, after receiving the reply, has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of any of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.

• Marginal note:Notice — application found allowable after final action

  (2) If an applicant of a category 3 application replies in good faith to a requisition made under subsection 30(4) of the former Rules, on or before the date set out in subsection (4) of this section, and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules and if the Commissioner has not sent a notice of allowance under subsection 30(5) of the former Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of notice sent under this subsection.

• Marginal note:Rejection not withdrawn after final action

  (3) If an applicant of a category 3 application replies in good faith to a requisition made under subsection 30(4) of the former Rules on or before the date set out in subsection (4) of this section but the examiner, after that date, still has reasonable grounds to believe that the application does not comply with the Act or these Rules,

  • (a) if a notice was not sent under paragraph 30(6)(a) of the former Rules, the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;

  • (b) any amendments made to that application during the period beginning on the date of the final action notice and ending on the date set out in subsection (4) of this section are considered never to have been made; and

  • (c) the application must be reviewed by the Commissioner.

• Marginal note:Date

  (4) For the purposes of subsections (1) to (3), the date is the later of

  • (a) the earlier of

    • (i) the day that is six months after the date of the requisition referred to in subsection 30(2) or (4) of the former Rules, as applicable, and

    • (ii) the last day of the period determined by the Commissioner, if any, under paragraph 73(1)(a) of the Act, as it read immediately before October 30, 2019, and

  • (b) if the category 3 application is deemed to be abandoned under paragraph 73(1)(a) of the Act, as it read immediately before October 30, 2019, for failure to reply in good faith to a requisition made under subsection 30(2) or (4) of the former Rules, as applicable, the day on which the conditions for reinstatement set out in subsection 73(3) of the Act, as it read immediately before October 30, 2019, are met in respect of that abandonment.

• Marginal note:Notice — application found allowable after amendments

  (5) If the applicant of a category 3 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of specific amendments that have to be made and if a notice of allowance was not sent under that subsection, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of notice sent under this subsection.

• Marginal note:Non-application of paragraph (3)(b)

  (6) Paragraph (3)(b) does not apply in respect of an application for a patent that, before December 29, 2013, was rejected by an examiner under subsection 30(3) of the former Rules unless the rejection has been withdrawn.

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

  (7) Subsection 3(1) does not apply in respect of the time referred to in subsection (2) or (5).

Marginal note:No amendment after rejection

200 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

• 201 (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

• 202 (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 October 30, 2019 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 October 30, 2019, 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 October 30, 2019, 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 October 30, 2019, 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

• 203 (1) 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;

  • (c.1) the applicant does not make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3);

  • (d) a notice of allowance is sent under subsection 86(1), (6), (10) or (12) or 199(2) or (5) and the applicant does not pay the final fee set out in item 14 of Schedule 2 within the time referred to in the applicable subsection;

  • (e) the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner sent under subsection 86(1.1) and pay the final fee set out in item 14 of Schedule 2 within the time referred to in that subsection; or

  • (f) the applicant does not comply with a notice of the Commissioner referred to in subsection 155.5(6) within the time referred to in that subsection.

• Marginal note:Exception

  (2) Paragraphs (1)(d) and (e) do not apply in respect of a notice of allowance or a conditional notice of allowance that is set aside in accordance with subsection 85.1(4).

Marginal note:Refund of final fee

204 If a category 3 application is deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before October 30, 2019, 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), (1.1), (6), (10) and (12), the Commissioner must not require payment of that fee in any notice of allowance or conditional 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)

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

• (3) [Repealed, SOR/2022-120, s. 44]

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

206 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 October 30, 2019.