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Patent Rules (SOR/2019-251)

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Regulations are current to 2020-09-09 and last amended on 2019-10-30. Previous Versions

PART 1Rules of General Application (continued)

Appointment of Patent Agents

Marginal note:Power to appoint patent agent

  •  (1) An applicant for a patent, a patentee or other person may appoint a patent agent to represent them in any business before the Patent Office.

  • Marginal note:Mandatory appointment of patent agent

    (2) An applicant for a patent must appoint a patent agent to represent them before the Patent Office in respect of their application for a patent if

    • (a) the application is filed by a person other than the inventor;

    • (b) there is more than one inventor and the application is not filed jointly by all of the inventors; or

    • (c) a transfer, in whole or in part, of the application has been recorded by the Commissioner under section 49 of the Act.

  • Marginal note:Manner of appointment by applicant or patentee

    (3) The appointment of a patent agent by an applicant for a patent or a patentee 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 submitted to the Commissioner and signed by

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

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

    • (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;

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

    • (d) in respect of a divisional application, in the petition included in the application on its presentation date.

  • Marginal note:Manner of appointment by another person

    (4) The appointment of a patent agent, other than an associate patent agent, by a person other than an applicant for a patent or a patentee must be made in a notice to that effect that is signed by that person and submitted to the Commissioner.

  • Marginal note:Consent to appointment

    (5) If a person, other than a patent agent, submits to the Commissioner a document appointing a patent agent, other than an associate patent agent, the appointment is not effective until evidence of the consent to that appointment by the patent agent who is being appointed is submitted to the Commissioner.

  • Marginal note:Patent agent by default — patent

    (6) If a person appoints a patent agent to represent them before the Patent Office in respect of an application for a patent, the person is deemed, unless the appointment document indicates otherwise, to have also appointed the patent agent to represent them before the Patent Office in respect of any patent granted on the basis of that application.

  • Marginal note:Revocation — appointment by applicant or patentee

    (7) The appointment, including a deemed appointment, of a patent agent in respect of any business before the Patent Office by an applicant for a patent or a patentee is revoked if

    • (a) a notice to that effect is submitted to the Commissioner and signed by the patent agent or by

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

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

    • (b) the Commissioner refuses, under section 16 of the Act, to recognize the patent agent as a patent agent either generally or in respect of that business; or

    • (c) the Commissioner, under subsection 23(2), removes the name of the patent agent from the register of patent agents.

  • Marginal note:Revocation — appointment by another person

    (8) The appointment, including a deemed appointment, of a patent agent, other than an associate patent agent, in respect of any business before the Patent Office by a person other than an applicant for a patent or a patentee is revoked if

    • (a) a notice to that effect, signed by the patent agent or that person, is submitted to the Commissioner;

    • (b) the Commissioner refuses under section 16 of the Act to recognize the patent agent as a patent agent either generally or in respect of that business; or

    • (c) the Commissioner, under subsection 23(2), removes the name of the patent agent from the register of patent agents.

Marginal note:Power to appoint associate patent agent

  •  (1) A patent agent appointed by an applicant for a patent, a patentee or other person to represent them in any business before the Patent Office may appoint a patent agent who resides in Canada as an associate patent agent in respect of that business.

  • Marginal note:Mandatory appointment of associate patent agent

    (2) A patent agent who does not reside in Canada and is appointed as the patent agent by an applicant for a patent, a patentee or other person to represent them in any business before the Patent Office, must appoint a patent agent who resides in Canada as an associate patent agent in respect of that business.

  • Marginal note:Manner of appointment

    (3) The appointment of an associate patent agent 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 patent agent appointing the associate patent agent 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 if the petition is submitted by a patent agent;

    • (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner by a patent agent on or before the national phase entry date of that application; and

    • (d) in respect of a divisional application, in the petition included in the application on its presentation date if the petition is submitted by a patent agent.

  • Marginal note:Associate patent agent by default — patents

    (4) If a patent agent appoints an associate patent agent in respect of an application for a patent, the patent agent is deemed, unless the appointment document indicates otherwise, to have also appointed the associate agent in respect of any patent granted on the basis of the application.

  • Marginal note:Revocation of appointment of associate patent agent

    (5) The appointment, including a deemed appointment, of an associate patent agent in respect of any business before the Patent Office is revoked if

    • (a) a notice to that effect, signed by the associate patent agent or the patent agent who appointed the associate patent agent, is submitted to the Commissioner;

    • (b) the appointment of the patent agent who appointed the associate patent agent is revoked in respect of that business;

    • (c) the Commissioner refuses, under section 16 of the Act, to recognize the associate patent agent as a patent agent, either generally or in respect of that business; or

    • (d) the Commissioner, under subsection 23(2), removes the name of the associate patent agent from the register of patent agents.

Marginal note:Address

 The patent agent’s postal address must be included in the document appointing the patent agent.

Marginal note:Patent agent by default — transfer

 If the Commissioner records the transfer of a patent or an application for a patent under section 49 of the Act for which a patent agent, other than an associate patent agent, is appointed to represent the applicant or patentee before the Patent Office in respect of that patent or application, the transferee is deemed, unless otherwise indicated in the request to record the transfer, to have appointed the patent agent to represent them in respect of the patent or the application, as applicable.

Marginal note:Notice requiring appointment of patent agent

  •  (1) If an applicant for a patent is required under subsection 27(2) to appoint a patent agent but no patent agent is appointed, the Commissioner must by notice to the applicant require that, not later than three months after the date of the notice, the applicant appoint either a patent agent who resides in Canada or a non-resident patent agent who, in turn, not later than the same three months, must appoint an associate patent agent.

  • Marginal note:Notice requiring appointment of Canadian resident

    (2) If an applicant for a patent is required under subsection 27(2) to appoint a patent agent and the applicant appoints a patent agent who does not reside in Canada but, contrary to subsection 28(2), no associate patent agent is appointed, the Commissioner must by notice to the non-resident patent agent require that, not later than three months after the date of the notice, either

    • (a) the non-resident patent agent appoint an associate patent agent, or

    • (b) the applicant appoint either a patent agent who resides in Canada or a different non-resident patent agent who, in turn, must appoint an associate patent agent not later than the same three months.

  • Marginal note:Exception

    (3) Subsection (2) does not apply during the three-month period referred to in subsection (1).

 
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