Patent Rules (SOR/2019-251)

Marginal note:Named patent agent

• 41.1 (1) In any business before the Patent Office in respect of which a patent agent acts under subsection 36(1) or (5), or represents a patentee under subsection 37(2), written communications on behalf of the applicant or patentee must be submitted to the Commissioner or the Patent Office by a named patent agent.

• Marginal note:Notice

  (2) If the patent agent is not named, the Commissioner must by notice inform the sender that the Commissioner will not have regard to the communication unless, not later than three months after the date of the notice, the patent agent who submitted the communication provides their name to the Commissioner and requests that the Commissioner have regard to the communication.

• Marginal note:Communication of notice

  (2.1) The notice must also be sent to the applicant or the patentee.

• Marginal note:Date communication received

  (3) If the name of the patent agent and the request referred to in subsection (2) are provided to the Commissioner within the time limit set out in that subsection, the original communication is considered to have been received on the day on which it was actually received by the Commissioner or the Patent Office.

Government-owned Patents

Marginal note:Notice to applicant

42 If the Governor in Council orders, under subsection 20(17) of the Act, that an invention described in an application for a patent must be treated for the purposes of section 20 of the Act as if it had been assigned or agreed to be assigned to the Minister of National Defence, the Commissioner must, as soon as the Commissioner is informed of the order, notify the applicant.

Marginal note:Inspection of defence-related application for patent

43 The Commissioner must permit a public servant who is authorized in writing by the Minister of National Defence, or an officer of the Canadian Forces who is authorized in writing by the Minister of National Defence, to inspect a pending application for a patent that relates to an instrument or munition of war to do so and to obtain a copy of the application.

Presentation of Application for a Patent

General

Marginal note:Application fee

• 44 (1) For the purposes of subsection 27(2) of the Act, the prescribed application fee is

  • (a) the small entity fee set out in item 6 of Schedule 2, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in respect of the application for a patent in accordance with subsection (3),

    • (i) on or before the filing date of the application or, in the case of a divisional application, on or before the presentation date of the divisional application, or

    • (ii) if a notice is required to be given under subsection 27(7) of the Act, before the notice is given or, if the notice has been given, not later than three months after the date of the notice; and

  • (b) in any other case, the standard fee set out in that item.

• Marginal note:Small entity status condition

  (2) The small entity status condition is that

  • (a) in respect of an application for a patent — other than a PCT national phase application or a divisional application — the applicant of the application on the filing date is, on that date, an entity that has fewer than 100 employees or is a university, other than

    • (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 employees or more, or

    • (ii) an entity that has transferred or licensed, or has an obligation other than a contingent obligation to transfer or license, any right or interest in a claimed invention to an entity, other than a university, that has 100 employees or more;

  • (b) in respect of an international application, the applicant of the application on the national phase entry date is, on that date, an entity that has fewer than 100 employees or is a university, other than an entity referred to in subparagraph (a)(i) or (ii); and

  • (c) in respect of a divisional application, the applicable requirements of this subsection are met in respect of the original application.

• Marginal note:Small entity declaration

  (3) A small entity declaration must

  • (a) be filed with the Commissioner in the petition or in a document other than the abstract, the specification or the drawings, that identifies the application for a patent to which the declaration relates;

  • (b) contain a statement to the effect that the applicant believes that the small entity status condition set out in subsection (2) is met in respect of that application for a patent;

  • (c) be signed by a patent agent appointed in respect of that application or

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

    • (ii) if there is a single applicant and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the applicant and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,

    • (iii) if there are joint applicants, any one of the applicants, or

    • (iv) if there are joint applicants and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the applicants and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and

  • (d) indicate the name of the applicant and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

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

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

Marginal note:Late fee

45 For the purposes of subsection 27(7) of the Act, the prescribed late fee is the fee set out in item 7 of Schedule 2.

Marginal note:Text in English or French

46 The text matter in the abstract, the description, the drawings and the claims, other than any text matter contained in a sequence listing, must be entirely in English or entirely in French.

Marginal note:Page margins — description, claims and abstract

• 47 (1) The minimum margins of pages that contain the description, the claims or the abstract must be as follows:

  • top margin, 2 cm
  • left margin, 2.5 cm
  • right margin, 2 cm
  • bottom margin, 2 cm

• Marginal note:Page margins — drawings

  (2) The minimum margins of pages containing the drawings must be as follows:

  • top margin, 2.5 cm
  • left margin, 2.5 cm
  • right margin, 1.5 cm
  • bottom margin, 1 cm

• Marginal note:Blank margins

  (3) Subject to subsections (4) and (5), the margins of the pages referred to in subsections (1) and (2) must be completely blank.

• Marginal note:File reference

  (4) The top margin of the pages referred to in subsections (1) and (2) may contain in either corner an indication of the applicant’s file reference.

• Marginal note:Line numbering

  (5) The lines of each page of the description and of the claims may be numbered in the left margin.

Marginal note:Line spacing

• 48 (1) All text matter in the description and the claims must be at least 1 1/2 line spaced, except for sequence listings, tables and chemical and mathematical formulas.

• Marginal note:Font size

  (2) All text matter in the description and the claims must be in characters the capital letters of which are not less than 0.21 cm in height.

Marginal note:New page

49 The petition, the abstract, the description, the drawings and the claims must each begin on a new page.

Marginal note:Page numbering

• 50 (1) The pages of the specification must be numbered consecutively.

• Marginal note:Position of page numbers

  (2) The page numbers must be centered at the top or bottom of each page, but must not be placed in the margin.

Marginal note:No drawings

• 51 (1) The petition, the abstract, the description and the claims must not contain drawings.

• Marginal note:Formulas

  (2) The abstract, the description and the claims may contain chemical or mathematical formulas.

Marginal note:Identification of trademarks

52 A trademark mentioned in an abstract, a specification or a drawing must be identified as such.

Petition

Marginal note:Title and content

53 A petition must bear the title “Petition” or “Request” and must contain

• (a) a request for the grant of a patent;

• (b) the title of the invention; and

• (c) the name and postal address of the applicant.

Inventors and Entitlement

Marginal note:Information on inventors

• 54 (1) The application must indicate the name and postal address of each inventor of the subject-matter of the invention for which an exclusive privilege or property is claimed.

• Marginal note:Statement

  (2) The application must contain

  • (a) a statement to the effect that the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent;

  • (b) a statement to the effect that the applicant is the sole inventor of the subject-matter of the invention for which an exclusive privilege or property is claimed or, if there are joint applicants, the applicants are all inventors and the sole inventors of that subject-matter; or

  • (c) in respect of a PCT national phase application, a declaration as to the applicant’s or, if there are joint applicants, the applicants’ entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17(ii) of the Regulations under the PCT.

• Marginal note:Translation

  (2.1) If all or part of a declaration referred to in paragraph (2)(c) is in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of the declaration or part in question.

• Marginal note:Manner of presentation

  (3) The statement and information required by this section must be included in the petition or submitted in a document other than the abstract, the specification or the drawings.

Abstract

Marginal note:Inclusion of abstract

• 55 (1) An application for a patent must contain an abstract that has a concise summary of the disclosure that appears in the description, claims and drawings and, if applicable, must include the chemical formula that, among all the formulas included in the application, best characterizes the invention.

• Marginal note:Technical field

  (2) The abstract must specify the technical field to which the invention relates.

• Marginal note:Drafting

  (3) The abstract must be drafted in a manner that allows an understanding of the technical problem, the gist of the solution of that problem by means of the invention and the principal use or uses of the invention.

• Marginal note:Scanning tool

  (4) The abstract must be drafted in a manner that can efficiently serve as a scanning tool for the purposes of searching in the particular art.

• Marginal note:Word limit

  (5) The abstract must not contain more than 150 words.

• Marginal note:Reference to drawings

  (6) In the abstract, a feature may be followed by a reference character placed between parentheses, if that feature is illustrated in the drawings of the application for a patent.

• Marginal note:Amendment or replacement of abstract

  (7) If the Commissioner considers that an abstract does not comply with subsections (1) to (6), the Commissioner is authorized to amend or replace the abstract.

• Marginal note:Abstract not relevant

  (8) An abstract must not be taken into account for the purpose of interpreting the scope of protection sought or obtained.

Description

Marginal note:Contents, manner and order

• 56 (1) The description must include the following information, set out in the following manner and order:

  • (a) the title of the invention must be stated in a short and precise manner and must not include a trademark, coined word or personal name;

  • (b) the technical field to which the invention relates must be specified;

  • (c) the background art that, as far as is known to the applicant, is important for the understanding, searching and examination of the invention must be described;

  • (d) a description of the invention must be set out in terms that permit the technical problem and its solution to be understood, even if that problem is not expressly stated;

  • (e) the figures in the drawings, if any, must be concisely described;

  • (f) at least one mode contemplated by the inventor for carrying out the invention must be set out using examples, if appropriate, and with reference to the drawings, if any; and

  • (g) a sequence listing, if required by subsection 58(1), must be included.

• Marginal note:Exception

  (2) The description may be presented in a different manner or order if, because of the nature of the invention, a different manner or order would result in a better understanding or more economical presentation of the invention.

Marginal note:No incorporation by reference

• 57 (1) The description must not incorporate any document by reference.

• Marginal note:No reference to certain documents

  (2) The description must not refer to a document that does not form part of the application for a patent unless the document is available to the public.

• Marginal note:Identification of documents

  (3) Every document referred to in the description must be fully identified.