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Patent Rules (SOR/2019-251)

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Regulations are current to 2020-11-17 and last amended on 2019-10-30. Previous Versions

PART 3Transitional Provisions (continued)

DIVISION 2Rules in Respect of Category 1 Applications (continued)

Marginal note:Application of certain provisions of former Rules

  •  (1) Subject to subsection (3), sections 170, 171, 174, 175, 177, 181 and 183 to 186 of the former Rules continue to apply in respect of a category 1 application.

  • Marginal note:Application of section 32 of former Rules

    (2) Section 32 of the former Rules continues to apply in respect of a category 1 application for which a notice of allowance was sent before the coming-into-force date, other than such an application that is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, and is subsequently restored.

  • Marginal note:Photographs

    (3) Paragraphs 177(1)(a), (b), (e) and (h) of the former Rules do not apply in respect of photographs provided in respect of a category 1 application.

  • Marginal note:Application of section 179 of former Rules

    (4) Section 179 of the former Rules continues to apply in respect of a category 1 application, except that the reference to “the filing date and number of each application in a country other than Canada on which the applicant bases the claim” in that section is to be read as a reference to “the filing date and the name of the country of filing of each application that was filed in a country other than Canada on which the claim is based”.

Marginal note:Reference to “the Act”

 A reference in section 42 and subsection 86(13) to “the Act”, in relation to a category 1 application, is to be read as a reference to “the Act as it read immediately before October 1, 1989”.

Marginal note:Final fee

 With respect to a category 1 application,

  • (a) the reference to “the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice” in subsections 86(1), (6), (10) and (12) is to be read as a reference to “the final fee set out in paragraph 6(b) of Schedule II to the former Rules within six months after the date of the notice”; and

  • (b) the reference to “the final fee set out in item 13 of Schedule 2”, “the small entity fee set out in that item ” and “the standard fee set out in that item” in subsection 87(1) is to be read as a reference to “the final fee set out in paragraph 6(b) of Schedule II to the former Rules”, “the small entity fee set out in paragraph 6(b) of Schedule II to the former Rules” and “the standard fee set out in paragraph 6(b) of Schedule II to the former Rules”, respectively.

Marginal note:Rejection for defects

  •  (1) If an applicant of a category 1 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 1 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, if 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 must require the payment of the final fee set out in paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of that notice.

  • Marginal note:Rejection not withdrawn after final action

    (3) If an applicant of a category 1 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 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 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

    • (b) if the application is deemed to be abandoned under subsection 30(1) of the Act, as it read immediately before October 1, 1989, for the failure of the applicant to prosecute the application following the 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 30(2) of the Act, as it read immediately before October 1, 1989, are met in respect of that abandonment.

  • Marginal note:Notice — application found allowable after amendments

    (5) If the applicant of a category 1 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of 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 the application has been found to be allowable and require the payment of the final fee set out in paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of the 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

 If a category 1 application is rejected by an examiner under subsection 172(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 172(4) of these Rules, unless

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

  • (b) the amendments made 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:Reference

 The reference to “may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application” in paragraph 91(a) is to be read, in relation to a category 1 application, as a reference to “results from an amendment to the specification or drawings that is not prohibited by section 181 of the former Rules”.

Marginal note:Reference to subsection 28.4(2) of Act and paragraph 93(1)(b) of these Rules

 The reference to “subsection 28.4(2) of the Act” in paragraph 92(c) and the reference to “paragraph 93(1)(b)” in paragraph 92(f), in relation to a category 1 application, are to be read as a reference to “section 179 of the former Rules” and “subsection 184(3) of the former Rules”, respectively.

Marginal note:Additional fee for restoration of application

 The additional fee to be paid for the restoration of a category 1 application that was forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, is $200.

DIVISION 3Rules in Respect of Category 2 Applications

Marginal note:Non-application of certain provisions of these Rules

  •  (1) Sections 17, 18, 47 to 51, 55, 56, 58 to 63, 73 and 74, subsections 81(1) and 84(2), sections 93 to 96, subsections 97(2) and (3), section 98, subsection 103(2) and sections 104 and 132 do not apply in respect of a category 2 application.

  • Marginal note:Application of section 100

    (2) Section 100 applies in respect of a category 2 application only if a notice of allowance is sent on or after the coming-into-force date.

  • Marginal note:Non-application of subsection 103(1)

    (3) Subsection 103(1) does not apply in respect of a category 2 application that has a presentation date before the coming-into-force date.

Marginal note:Application of certain provisions of former Rules

  •  (1) Subject to subsection (4), sections 66 and 134, subsections 135(1) and (3) to (5) and sections 138, 139, 141, 145, 146, 159 to 162 and 164 to 166 of the former Rules continue to apply in respect of a category 2 application.

  • Marginal note:Application of section 26.1 of former Rules

    (2) Section 26.1 of the former Rules continues to apply in respect of the time prescribed by section 152 of the former Rules in respect of a category 2 application.

  • Marginal note:Application of section 32 of former Rules

    (3) Section 32 of the former Rules continues to apply in respect of a category 2 application for which a notice of allowance was sent before the coming-into-force date, other than such an application that 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.

  • Marginal note:Photographs

    (4) Paragraphs 141(1)(a), (b), (e) and (h) of the former Rules do not apply in respect of photographs provided in respect of a category 2 application.

  • Marginal note:Application of section 152 of former Rules

    (5) If, under section 78.51 or 78.52 of the Act, section 73 of the Act, as it read immediately before the coming-into-force date, applies in respect of an abandonment of a category 2 application, section 152 of the former Rules continues to apply in respect of that abandonment.

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

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

 
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