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Patent Rules (SOR/2019-251)

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Regulations are current to 2020-03-05 and last amended on 2019-10-30. Previous Versions

PART 1Rules of General Application (continued)

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 who resides in Canada; 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 who resides in Canada.

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 For the purposes of subsection 10(4) of the Act, if a request for priority is withdrawn with respect to a previously regularly filed application for a patent, the prescribed date is the earlier of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Marginal note:Prescribed date — withdrawn application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

Register of Patent Agents

Marginal note:Eligibility for qualifying examination

 A person is eligible to sit for a paper of the qualifying examination for patent agents if the person meets the following requirements:

  • (a) on the day of that paper, the person resides in Canada and

    • (i) has been employed for at least 24 months on the examining staff of the Patent Office,

    • (ii) has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, or

    • (iii) has worked in the area of patent law and practice, including the preparation and prosecution of applications for a patent, for at least 24 months, at least 12 of which were worked in Canada and the rest of which were worked in another country where the person was authorized to act as a patent agent under the law of that country; and

  • (b) not later than two months after the day on which the notice referred to in subsection 21(2) is published, the person

    • (i) notifies the Commissioner in writing of their intention to sit for that paper,

    • (ii) pays the fee set out in item 2 of Schedule 2 for that paper, and

    • (iii) furnishes the Commissioner with a statement indicating that they will meet the requirements set out in paragraph (a), along with supporting justifications.

Marginal note:Establishment of Examining Board

  •  (1) An Examining Board is established for the purposes of preparing, administering and marking a qualifying examination for patent agents.

  • Marginal note:Membership

    (2) The Commissioner must appoint the members of the Board. The chairperson and at least three other members must be employees of the Patent Office and at least five other members must be patent agents nominated by the Intellectual Property Institute of Canada.

Marginal note:Frequency of qualifying examination

  •  (1) The Examining Board must administer a qualifying examination for patent agents at least once a year.

  • Marginal note:Notice of dates of qualifying examination

    (2) The Commissioner must publish on the website of the Canadian Intellectual Property Office a notice that specifies the dates of the next qualifying examination and indicates that a person must meet the requirements set out in section 19 in order to be eligible to sit for one or more papers of the examination.

  • Marginal note:Designation of place of qualifying examination

    (3) The Commissioner must designate the place or places where the qualifying examination is to be held and must, at least 14 days before the first day of the examination, notify every person who meets the requirements set out in paragraph 19(b) of the designated place or places.

Marginal note:Entry on register

 The Commissioner must, on written request and payment of the fee set out in item 3 of Schedule 2, enter on the register of patent agents kept under section 15 of the Act the name of

  • (a) every resident of Canada who has passed the qualifying examination for patent agents;

  • (b) every resident of a country other than Canada who is authorized to act as a patent agent under the law of that country; and

  • (c) every firm with at least one member who has their name entered on the register.

Marginal note:Maintaining name on register

  •  (1) During the period beginning on January 1 and ending on March 31 of each year

    • (a) a resident of Canada whose name is entered on the register of patent agents must, in order to maintain their name on the register, pay the fee set out in item 4 of Schedule 2;

    • (b) a resident of a country other than Canada whose name is entered on the register of patent agents must, in order to maintain their name on the register, file a statement signed by them setting out their country of residence and declaring that they are authorized to act as a patent agent under the law of that country; and

    • (c) a firm whose name is entered on the register of patent agents must, in order to maintain its name on the register, file a statement, signed by one of its members whose name is on the register, that indicates all of the members of the firm whose names are on the register.

  • Marginal note:Removal from register

    (2) The Commissioner must remove from the register of patent agents the name of any patent agent who

    • (a) fails to comply with subsection (1); or

    • (b) is not a person referred to in paragraph 22(a) or (b) or a firm referred to in paragraph 22(c).

  • Marginal note:Notice of removal

    (3) If the Commissioner removes the name of a patent agent from the register of patent agents under subsection (2), the Commissioner must notify them of the decision and publish the decision on the website of the Canadian Intellectual Property Office.

Marginal note:Reinstatement

 If the name of a patent agent has been removed from the register of patent agents under subsection 23(2), it may be reinstated on the register if the patent agent

  • (a) applies in writing to the Commissioner for reinstatement not later than one year after the day on which their name was removed from the register; and

  • (b) is, as the case may be,

    • (i) a person referred to in paragraph 22(a) and pays the fees set out in items 4 and 5 of Schedule 2,

    • (ii) a person referred to in paragraph 22(b) and files the statement referred to in paragraph 23(1)(b), or

    • (iii) a firm referred to in paragraph 22(c) and files the statement referred to in paragraph 23(1)(c).

Marginal note:Amendment of register

 If the Commissioner refuses to recognize a person as a patent agent under section 16 of the Act, the Commissioner must amend the register accordingly and notify that person of the decision and must publish the decision on the website of the Canadian Intellectual Property Office.

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 to the name of a joint applicant under section 104 or subsection 154(6) and the correction has changed the identity of that joint applicant, 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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