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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 3Transitional Provisions (continued)

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

Marginal note:No amendment after rejection

 If a category 2 application is rejected by an examiner under subsection 184(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 184(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  • (a) a notice is sent to the applicant informing them that the rejection is withdrawn;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 that are specified 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:Documents and information — divisional application

  •  (1) For the purpose of paragraph 38.2(3.1)(b) of the Act, the prescribed documents and information in respect of a category 2 application that has a presentation date before the coming-into-force date are

    • (a) in the case of such an application that has a presentation date before October 1, 1996, the documents and information referred to in clauses 78.2(a)(ii)(A) to (D) of the Act;

    • (b) in the case of such an application that has a presentation date on or after October 1, 1996 but before June 2, 2007, the documents and information referred to in clauses 78.2(a)(iii)(A) to (D) of the Act; and

    • (c) in the case of such an application that has a presentation date on or after June 2, 2007 but before the coming-into-force date, 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 2 application is

    • (a) if all of the elements referred to in clauses 78.2(a)(ii)(A) to (E) of the Act were received by the Commissioner before October 1, 1996, 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)(iii)(A) to (E) of the Act was received by the Commissioner on or after October 1, 1996, and all of those elements 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;

    • (c) if paragraphs (a) and (b) do not apply and if 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 the coming-into-force date, the day on which they were received or, if they were received on different days, the latest of those days; and

    • (d) if paragraphs (a), (b) and (c) 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 least one of those elements was received by the Commissioner on or after the coming-into-force date, 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

 For the purposes of subsection 73(2) of the Act, a category 2 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 fails to 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; or

  • (d) 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) or 184(2) or (5).

DIVISION 4Rules in Respect of Category 3 Applications

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

  •  (1) Subsections 73(1) and (4), 81(1), 84(2) and 103(2) and section 132 do not apply in respect of a category 3 application.

  • Marginal note:Non-application of section 74

    (2) Section 74 does not apply in respect of a request for priority made in relation to a category 3 application before the coming-into-force date.

  • Marginal note:Application of section 100

    (3) Section 100 applies in respect of a category 3 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)

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

  • Marginal note:Non-application of section 104

    (5) Section 104 does not apply in relation to a category 3 application in respect of which an assignment was registered under subsection 49(2) of the Act, as it read immediately before the coming-into-force date.

Marginal note:Application of section 26.1 of former Rules

  •  (1) Section 26.1 of the former Rules continues to apply in respect of the time prescribed by section 98 of the former Rules in respect of a category 3 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 3 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:Application of section 66 of the former Rules

    (3) Section 66 of the former Rules continues to apply in relation to a category 3 application in respect of which the applicant, before the coming-into-force date, complied with the requirements of subsection 58(1) of the former Rules and, if applicable, with the requirements of subsection 58(2) of those Rules.

  • Marginal note:Application of section 98 of former Rules

    (4) 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 the abandonment of a category 3 application, section 98 of the former Rules continues to apply in respect of that abandonment.

Marginal note:Extension of time

 The Commissioner is authorized to extend, in respect of a category 3 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 199(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:Prescribed date — withdrawal of request for priority

 For the purposes of subsection 10(4) of the Act, if a request for priority that was made in respect of a category 3 application has been withdrawn with respect to a previously regularly filed application for a patent before the coming-into-force date, the prescribed date is, despite section 17, the later of

  • (a) the earlier of

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

    • (ii) 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, and

  • (b) if the Commissioner is able to stop the technical preparations to open the category 3 application to public inspection before the expiry of the confidentiality period referred to in subsection 10(2) of the Act, the day on which the Commissioner stops those preparations.

Marginal note:Prescribed date — withdrawn application

 If a category 3 application is withdrawn before the coming-into-force date, for the purposes of subsection 10(5) of the Act, the prescribed date is, despite section 18 of these Rules, the day that is two months before the expiry date of the confidentiality period referred to in subsection 10(2) of the Act or, if the Commissioner is able to stop the technical preparations to open the application to public inspection at a subsequent date preceding the expiry of that period, that subsequent date.

Marginal note:Exception to subsection 50(1)

 In respect of a category 3 application, the applicant may comply with the requirements of subsection 73(1) of the former Rules instead of the requirements of subsection 50(1) of these Rules.

Marginal note:Exception to section 58

 In respect of a category 3 application for which the filing date was before June 2, 2007, the applicant may comply with the requirements of sections 111 to 131 of the Patent Rules, as they read immediately before June 2, 2007, instead of the requirements of section 58 of these Rules.

Marginal note:Requirements for request for priority

  •  (1) For the purposes of subsection 28.4(2) of the Act, a request for priority in respect of a category 3 application must be made in the petition of that application or in a separate document, before the later of the end of

    • (a) a period 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request is based, and

    • (b) a period four months after the filing date of the category 3 application.

  • Marginal note:Time prescribed by subsection 73(1)

    (2) With respect to a request for priority made in relation to a category 3 application, the reference to “the time prescribed by subsection (1)” in subsections 73(2) and (6) is to be read as a reference to “the time prescribed by subsection 195(1)”.

  • Marginal note:Correction — error in filing date

    (3) An error in a filing date submitted under subsection 28.4(2) of the Act in relation to a request for priority in respect of a category 3 application may be corrected on request submitted before the earliest of

    • (a) the end of the period referred to in subsection (1), as determined using the corrected filing date,

    • (b) the end of the period referred to in subsection (1), as determined using the uncorrected filing date, and

    • (c) if applicable, the day on which the applicant submits their approval, under subsection 10(2) of the Act, for the category 3 application to be open to public inspection before the expiry of the confidentiality period, unless that approval is withdrawn in time to permit the Commissioner to stop the technical preparations to open the application to public inspection.

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

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

 
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