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Patent Rules (SOR/2019-251)

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Regulations are current to 2023-01-11 and last amended on 2022-10-03. Previous Versions

PART 1Rules of General Application (continued)

Communications (continued)

Marginal note:Communication sent — suspension, revocation or surrender

 Despite sections 34 and 35, if a patent agent’s licence is suspended, revoked or surrendered, any communication respecting a patent or an application for a patent that is sent by the Commissioner or the Patent Office to that patent agent is considered not to have been sent to the patentee or applicant if

  • (a) it is sent within four months before the date of the suspension, revocation or surrender and no reply is provided before that date; or

  • (b) it is sent on the date of the suspension, revocation or surrender.

Marginal note:Acknowledgment by Commissioner

 A written communication submitted to the Commissioner in respect of a filing under section 34.1 of the Act and a written communication submitted to the Commissioner before the granting of a patent with the stated or apparent intention of protesting against the granting of that patent must be acknowledged, but information must not be given as to the action taken unless the application for the patent is open to public inspection at the Patent Office.

Presentation of Documents to Commissioner or Patent Office

Marginal note:Manner of submission

  •  (1) Subject to subsection (2), documents submitted in paper form in connection with a patent and an application for a patent must

    • (a) be submitted on sheets of white paper that are free of creases and folds and that are 21.6 cm x 27.9 cm (8.5” x 11”) or 21 cm x 29.7 cm (A4 format);

    • (b) be submitted in a manner that permits direct reproduction by the Patent Office; and

    • (c) be free of interlineations, cancellations or corrections.

  • Marginal note:Exception

    (2) Certified copies of documents and documents concerning transfers referred to in section 49 of the Act may be submitted on sheets of paper that are not larger than 21.6 cm x 35.6 cm (8.5” x 14”).

Marginal note:Layout

  •  (1) Subject to subsection (2), the contents of each page of a document must be in an upright position.

  • Marginal note:Exception

    (2) If it aids in presentation, figures, tables and chemical or mathematical formulas may appear sideways.

Marginal note:Documents in English or French

  •  (1) All documents or information submitted or made available to the Commissioner or the Patent Office must be in English or French, except for

    • (a) a document submitted or made available under paragraph 67(2)(b) or 72(3)(a) or subsection 74(1);

    • (b) the specification and the drawings included in an application for a patent on its filing date that are contained in a document referred to in paragraph 71(d);

    • (c) a document submitted under paragraph 85(1)(b);

    • (d) a copy of an international application submitted under paragraph 154(1)(a);

    • (e) text matter contained in a sequence listing; or

    • (f) a document or information that is deemed to have been received by the Commissioner under section 156.

  • Marginal note:Translation — previously filed application for patent

    (2) If a copy of a previously filed application for a patent is submitted or made available under paragraph 67(2)(b) and all or part of that application is in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of the application or part of the application in question.

  • Marginal note:Translation — specification and drawings

    (3) If all or part of the text matter of the specification or the drawings that are contained in a document referred to in paragraph 71(d) that is submitted for the purposes of subsection 28(1) of the Act are in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of that text matter.

  • Marginal note:Sequence listing — English and French

    (3.1) If a sequence listing contains text matter that is both in English and in French, only the following version of the text matter is taken into account for the purpose of interpreting the scope of protection sought or obtained:

    • (a) if the sequence listing contains an indication that either English or French is the original language of that text matter, the version that is in that original language; and

    • (b) in any other case, the version that is in the same language as the claims.

  • Marginal note:Sequence listing — other language

    (3.2) Language-dependent free text that is contained in a sequence listing and that is in a language other than English or French is not taken into account for the purpose of interpreting the scope of protection sought or obtained.

  • Marginal note:Notice requiring translation

    (4) If an applicant does not submit a translation required by subsection (2) or (3), the Commissioner must by notice require the applicant to submit the translation to the Commissioner not later than two months after the date of the notice.

  • Marginal note:Translation replaces original

    (5) A translation submitted under subsection (2) or (3), or submitted after the notice referred to in subsection (4) is sent, replaces the text matter that was in a language other than English or French.

  • Marginal note:Restriction

    (6) A translation of all or part of the text matter in a specification or a drawing, submitted under subsection (2) or (3), or submitted after the notice referred to in subsection (4) is sent, must not contain any matter not reasonably to be inferred from the specification or the drawings contained in the application on its filing date.

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

    (7) Subsection 3(1) does not apply in respect of the time referred to in subsection (4).

Confidentiality

Marginal note:Information respecting application for patent

 Unless otherwise required by law, the Commissioner and the Patent Office must not provide any information in respect of an application for a patent that is not open to public inspection at the Patent Office to any person other than

  • (a) the applicant or, if there are joint applicants, any of the applicants;

  • (b) a patent agent appointed in respect of that application; or

  • (c) a person authorized by

    • (i) the applicant, if there is a single applicant,

    • (ii) the common representative, if there are joint applicants, or

    • (iii) a patent agent appointed in respect of that application.

Marginal note:Prescribed date — withdrawal of request for priority

 For the purposes of subsection 10(4) of the Act, if a request for priority is withdrawn with respect to a previously regularly filed application for a patent, the prescribed date is the earlier of

  • (a) the day on which a period of 16 months after the filing date of the previously regularly filed application expires, and

  • (b) if the request for priority is based on more than one previously regularly filed application, the day on which a period of 16 months after the earliest of the filing dates of those applications expires.

Marginal note:Prescribed date — withdrawn application

 For the purposes of subsection 10(5) of the Act, the prescribed date is the earlier of

  • (a) the day that is two months before the expiry date of the confidentiality period referred to in subsection 10(2) of the Act, and

  • (b) if applicable, the day on which the applicant submits their approval under subsection 10(2) of the Act for the application for a patent to be open to public inspection before the expiry of the confidentiality period.

 [Repealed, SOR/2021-131, s. 6]

 [Repealed, SOR/2021-131, s. 6]

 [Repealed, SOR/2021-131, s. 6]

 [Repealed, SOR/2021-131, s. 6]

 [Repealed, SOR/2021-131, s. 6]

 [Repealed, SOR/2021-131, s. 6]

 [Repealed, SOR/2021-131, s. 6]

Appointment of Common Representative

Marginal note:Power of joint applicants to appoint common representative

  •  (1) If, in respect of an application for a patent, there are joint applicants, one applicant may be appointed by the other applicants as their common representative.

  • Marginal note:Power of joint patentees to appoint common representative

    (2) If, in respect of a patent, there are joint patentees, one patentee may be appointed by the other patentees as their common representative.

  • Marginal note:Manner of appointment

    (3) The appointment of a common representative must be made by one of the following methods:

    • (a) in respect of a patent or an application for a patent, in a notice to that effect that is signed by the other applicants or patentees and submitted to the Commissioner;

    • (b) in respect of an application for a patent — other than a divisional application or an international application — that includes a petition on the filing date, in that petition; and

    • (c) in respect of a PCT national phase application, in a notice to that effect that is submitted to the Commissioner on or before the national phase entry date of that application.

  • Marginal note:Common representative by default — application for patent

    (4) Subject to subsections (6), (9) and (11), in respect of an application for a patent — other than a divisional application — in relation to which there are joint applicants and no common representative is appointed under subsection (3), the following person is deemed to be appointed as the common representative:

    • (a) in respect of an application for a patent, other than a PCT national phase application,

      • (i) in the case where the application included a petition on the filing date, the first person named as an applicant in that petition,

      • (ii) in the case where, on the filing date, the application did not include a petition but did include a single other document naming the joint applicants, the joint applicant whose name appears first in that document, and

      • (iii) in any other case, the joint applicant whose name appears first when listed in alphabetical order on the filing date; and

    • (b) in respect of a PCT national phase application,

      • (i) if joint applicants are named in the corresponding request under Article 4 of the Patent Cooperation Treaty, if more than one applicant complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2), and if the first person named as an applicant in that request is one of those applicants, the first person named as an applicant in that request, and

      • (ii) in any other case, the joint applicant who complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2), and whose name appears first when listed in alphabetical order.

  • Marginal note:Common representative by default — divisional application

    (5) Subject to subsections (6), (9) and (11), in respect of a divisional application, in relation to which there are joint applicants and no common representative is appointed under paragraph (3)(a), the following person is deemed to be appointed as the common representative:

    • (a) if, at the end of the day on the presentation date of the divisional application, the person who was the common representative in respect of the original application was an applicant of the divisional application, that person; and

    • (b) in any other case, the first person named as an applicant in the petition contained in the divisional application on its presentation date.

  • Marginal note:Common representative by default — correction or decision

    (6) Subject to subsections (9) and (11), in respect of an application for a patent in relation to which there are joint applicants and no common representative is appointed under subsection (3), if a correction has been made with respect to the naming of applicants under section 104 or subsection 154(6) and the correction has changed the identity of the applicants, or if a decision is made by the Commissioner under subsection 31(2), (3) or (4) of the Act, other than a decision refusing an application under one of those subsections, the joint applicant whose name appears first when listed in alphabetical order after that correction or decision — or if there is more than one correction or decision, or both a correction and a decision, after the most recent of those corrections or decisions — is deemed to be appointed as the common representative.

  • Marginal note:Common representative by default — patent

    (7) Subject to subsections (9) and (11), in respect of a patent — other than a reissued patent — in relation to which there are joint patentees and no common representative is appointed under paragraph (3)(a), the person who, immediately before the patent was granted, was the common representative in respect of the application on the basis of which the patent was granted, is deemed to be appointed as the common representative in respect of the patent.

  • Marginal note:Common representative by default — reissued patent

    (8) Subject to subsections (9) and (11), in respect of a reissued patent, in relation to which there are joint patentees and no common representative is appointed under paragraph (3)(a), the person who was the common representative in respect of the original patent immediately before the patent was reissued is deemed to be appointed as the common representative in respect of the reissued patent.

  • Marginal note:Common representative by default — transfer of rights of single applicant or patentee

    (9) Subject to subsection (11), in the case where, under section 49 of the Act, the Commissioner, on or after the applicable date referred to in subsection (10), recorded the transfer of all or part of the rights of an applicant in an application for a patent or all or part of the rights of a patentee in a patent, as set out in the records of the Patent Office immediately before the transfer is recorded, that applicant was the only applicant of the application immediately before the transfer was recorded, or that patentee was the only patentee of the patent immediately before the transfer was recorded, no other person has been a single applicant of that application or a single patentee of that patent since that transfer was recorded and no common representative has been appointed under subsection (3) in respect of that application or that patent, the following person is deemed to be appointed as the common representative in respect of that patent or application:

    • (a) if, immediately after the transfer is recorded, the person who transferred those rights is still an applicant of the application or a patentee of the patent, that person; and

    • (b) if, immediately after the transfer is recorded, the person who transferred those rights is no longer an applicant of the application or a patentee of the patent, the transferee whose name appears first in the request to record the transfer.

  • Marginal note:Applicable date

    (10) For the purposes of subsection (9), the applicable date is

    • (a) in respect of an application for a patent, other than a PCT national phase application or a divisional application, the filing date of the application;

    • (b) in respect of a PCT national phase application, the national phase entry date;

    • (c) in respect of a divisional application, the presentation date of the application;

    • (d) despite paragraphs (a) to (c), in respect of an application in relation to which one or more corrections or decisions referred to in subsection (6) have been made, the date of that correction or decision or, if there is more than one correction or decision, or both a correction and a decision, the date of the most recent of those corrections or decisions;

    • (e) in respect of a patent, other than a reissued patent, the date on which the patent was granted; and

    • (f) in respect of a reissued patent, the date on which the patent was reissued.

  • Marginal note:Common representative by default — transfer of rights of common representative

    (11) If, under section 49 of the Act, the Commissioner records the transfer of all of the rights of a common representative in a patent or an application for a patent, as set out in the records of the Patent Office immediately before the transfer is recorded, and, immediately after the transfer is recorded, there is still more than one applicant for the patent or more than one patentee for the patent but no other common representative is appointed under paragraph (3)(a), the following person is deemed to be appointed as the common representative in respect of that patent or application:

    • (a) if the rights of the common representative are transferred to a single person, that person; and

    • (b) if the rights of the common representative are transferred to more than one person, the transferee whose name appears first in the request to record the transfer.

  • Marginal note:Revocation of appointment

    (12) An appointment of a common representative, including a deemed appointment, is revoked by the subsequent appointment of another common representative under paragraph (3)(a) or subsection (11).

 
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