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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 1Rules of General Application (continued)

Appointment of Patent Agents (continued)

Marginal note:Successor patent agent

 If a patent agent withdraws from practice, a patent agent who is the successor to that patent agent and has demonstrated that fact to the Commissioner, is deemed to be the patent agent appointed under section 27 or 28, as applicable, in respect of any patent or application for a patent in respect of which the patent agent who has withdrawn from practice was appointed.

Representation

Marginal note:Effect of act by common representative

 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to a common representative, has the effect of an act done by or in relation to all of the applicants or patentees.

Marginal note:Effect of act by patent agent

 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to a patent agent, other than an associate patent agent, who resides in Canada and is appointed in respect of that application or patent, has the same effect as an act done by or in relation to the applicant for a patent, a patentee or other person who appointed the patent agent.

Marginal note:Effect of act by associate patent agent

 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to an associate patent agent appointed in respect of that application or patent, has the same effect as an act done by or in relation to the applicant for a patent, a patentee or other person who appointed the patent agent who appointed the associate patent agent.

Marginal note:Prosecuting or maintaining in effect application for patent

  •  (1) Subject to subsections (2) to (5), in any business before the Patent Office for the purpose of prosecuting or maintaining in effect an application for a patent,

    • (a) if, in respect of the application, a patent agent residing in Canada is appointed or if there is a requirement under subsection 27(2) to appoint a patent agent, the applicant must be represented by a patent agent who resides in Canada and is appointed in respect of that application; and

    • (b) in any other case,

      • (i) if there is a single applicant, they must represent themselves, and

      • (ii) if there are joint applicants, they must be represented by the common representative.

  • Marginal note:Exceptions

    (2) For the purposes of filing an application for a patent, paying a fee under subsection 27(2) or section 27.1 of the Act or paying the additional fee for late payment referred to in subsection 154(4) of these Rules, or complying with the requirements of subsection 154(1), (2) or (3) of these Rules,

    • (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and

    • (b) if there are joint applicants, they must be represented by one of the applicants or by a person authorized by one of the applicants.

  • Marginal note:Exceptions

    (3) For the purpose of submitting a request to record a transfer under subsection 49(2) of the Act,

    • (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and

    • (b) if there are joint applicants,

      • (i) in the case where the transfer is a transfer of the right or interest of a single joint applicant, the joint applicants must be represented by that joint applicant or by the common representative, or by a person authorized by that joint applicant or by the common representative, and

      • (ii) in any other case, the joint applicants must be represented by the common representative or by a person authorized by the common representative.

  • Marginal note:Exceptions

    (4) For the purposes of submitting a request to record a name change under section 125,

    • (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and

    • (b) if there are joint applicants, they must be represented by the common representative or by a person authorized by the common representative.

  • Marginal note:Exceptions

    (5) For the purposes of section 27.01 or 28.01 of the Act, for the purpose of paying a fee in respect of an application for a patent — other than a fee under subsection 27(2) or section 27.1 of the Act or a fee referred to in subsection 154(1), (2), (3) or (4) of these Rules — or for the purpose of taking any of the actions required by subparagraphs 73(3)(a)(i) to (iv) of the Act to reinstate an application for a patent deemed to be abandoned under paragraph 73(1)(c) of the Act,

    • (a) if there is a single applicant, they may represent themselves; and

    • (b) if there are joint applicants, they may be represented by the common representative.

Marginal note:Procedure relating to patent

  •  (1) Subject to subsection (2), in any business before the Patent Office for the purpose of a procedure relating to a patent,

    • (a) if there is a single patentee, they must represent themselves or be represented by any person authorized by them; and

    • (b) if there are joint patentees,

      • (i) for the purpose of paying a fee under section 46 of the Act, the patentees must be represented by one of the patentees or by a person authorized by one of the patentees,

      • (ii) for the purpose of submitting a request to record a transfer under subsection 49(3) of the Act,

        • (A) in the case where the transfer is a transfer of the right or interest of a single joint patentee, the joint patentees must be represented by that joint patentee or by the common representative, or by a person authorized by that joint patentee or by the common representative, and

        • (B) in any other case, the joint patentees must be represented by the common representative or a person authorized by the common representative, and

      • (iii) for any other purpose, the patentees must be represented by the common representative or by a person authorized by the common representative.

  • Marginal note:Reissue, disclaimer or participation in re-examination

    (2) In any business before the Patent Office for the purpose of reissuing a patent under section 47 of the Act, making a disclaimer under section 48 of the Act, filing a reply under subsection 48.2(5) of the Act or participating in a re-examination proceeding under section 48.3 of the Act,

    • (a) if there is a single patentee, they must represent themselves or be represented by a patent agent who resides in Canada and has been appointed in respect of that business; and

    • (b) if there are joint patentees, the patentees must be represented by the common representative or by a patent agent who resides in Canada and has been appointed in respect of that business.

Marginal note:Clarification

 For greater certainty, sections 33 to 37 do not apply to the act of signing

  • (a) a small entity declaration;

  • (b) a notice of appointment of a common representative or a patent agent; or

  • (c) a notice of revocation of an appointment of a patent agent.

Marginal note:Interview with officer or employee

 Only the following persons may have an interview with an officer or employee of the Patent Office regarding an application for a patent:

  • (a) if, in respect of that application, a patent agent residing in Canada is appointed or there is a requirement under subsection 27(2) to appoint a patent agent,

    • (i) a patent agent appointed in respect of that application who resides in Canada,

    • (ii) with the permission of the associate patent agent appointed in respect of that application, a patent agent appointed in respect of that application who does not reside in Canada, and

    • (iii) with the permission of the patent agent appointed in respect of that application who resides in Canada,

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

      • (B) the common representative, if there are joint applicants; and

  • (b) in any other case,

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

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

 
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