Government of Canada / Gouvernement du Canada
Symbol of the Government of Canada

Search

Patent Rules (SOR/2019-251)

Full Document:  

Regulations are current to 2020-07-28 and last amended on 2019-10-30. Previous Versions

PART 3Transitional Provisions (continued)

DIVISION 3Rules in Respect of Category 2 Applications (continued)

Marginal note:Extension of time

 The Commissioner is authorized to extend, in respect of a category 2 application, the time referred to in the former Rules for payment of the fee referred to in subsection 3(3), (5) or (7) of the former Rules or the time referred to in subsection 184(2) or (5) of these Rules for the payment of the final fee — 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) of these Rules are met.

Marginal note:Requirements for request for priority

  •  (1) Subject to subsection (4), for the purposes of subsection 28.4(2) of the Act, a request for priority in respect of a category 2 application must be made in the petition of that application, or in a separate document, before the end of a period of six months after the filing date of the application.

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

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

  • Marginal note:Time to submit information

    (3) Subject to subsection (4), the information required under subsection 28.4(2) of the Act in respect of an application for a patent, on the basis of which a request for priority has been made in relation to a category 2 application, must be submitted to the Commissioner within the time referred to in subsection (1).

  • Marginal note:Exception

    (4) In the case of a request for priority made in respect of a category 2 application that is a PCT national phase application, the applicant, instead of complying with the requirements of subsections (1) and (3), may comply with the requirements of Rule 4.10 of the Regulations under the PCT, as they read immediately before July 1, 1998.

Marginal note:Notice requiring application to be made accessible

  •  (1) If, for the purpose of examining a pending category 2 application in respect of which a request for priority was made before the coming-into-force date, the examiner takes into account a previously regularly filed application for a patent — other than such an application that was filed in Canada — on which the request for priority is based, the examiner may by notice require the applicant of the pending application to do one of the following, not later than four months after the date of the notice:

    • (a) to submit to the Commissioner a copy of that previously regularly filed application, certified by the patent office where it was filed, as well as a certificate from that office indicating the filing date; or

    • (b) to make a copy of that previously regularly filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose, and inform the Commissioner that it is so available.

  • Marginal note:Request for priority considered withdrawn

    (2) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than four months after the date of the notice referred to in subsection (1), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless

    • (a) a request is made to the patent office where the previously regularly filed application was filed to provide the copy and certificate referred to in paragraph (1)(a); and

    • (b) the applicant submits to the Commissioner a request that the Commissioner restore the right of priority on the basis of that previously regularly filed application and a statement indicating the patent office to which the request referred to in paragraph (a) was made and the date of that request.

  • Marginal note:Applicant considered to comply

    (3) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a previously regularly filed application for a patent, the applicant is considered to have complied with subsection (1) in respect of that application.

  • Marginal note:Submission of copy and certificate

    (4) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a previously regularly filed application for a patent and if the patent office where that application was filed provides the copy and certificate referred to in paragraph (1)(a), the applicant or the patentee, as applicable, must submit the copy and certificate to the Commissioner not later than three months after the day on which they were provided.

  • Marginal note:Request for priority considered withdrawn

    (5) If the applicant or patentee fails to comply with subsection (4) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in that subsection in respect of that application.

Marginal note:Prescribed time — subsection 35(2) of Act

  •  (1) For the purposes of subsection 35(2) of the Act, in respect of a category 2 application that is a divisional application, the prescribed time for making a request for examination and for paying the fee is not later than three months after the presentation date of the divisional application or, if the presentation date precedes the coming-into-force date, not later than six months after the presentation date of the divisional application.

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

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

Marginal note:Exception to subsection 84(1)

 If a request is made by an applicant under subsection 84(1) in relation to a category 2 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 the coming-into-force date; or

  • (d) on or after the coming-into-force date, the application is or was deemed to be abandoned under subsection 73(2) of the Act.

Marginal note:Rejection for defects

  •  (1) If an applicant of a category 2 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 2 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 require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice sent under this subsection.

  • Marginal note:Rejection not withdrawn after final action

    (3) If an applicant of a category 2 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, 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 the coming-into-force date, and

    • (b) if the category 2 application is deemed to be abandoned under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, for failure to reply in good faith to 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 73(3) of the Act, as it read immediately before the coming-into-force date, are met in respect of that abandonment.

  • Marginal note:Notice — application found allowable after amendments

    (5) If the applicant of a category 2 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 that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 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).

 
Date modified: