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Patent Rules (SOR/2019-251)

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Regulations are current to 2021-11-17 and last amended on 2021-06-28. Previous Versions

PART 1Rules of General Application (continued)

Restoration of Right of Priority (continued)

Marginal note:Divisional application — within 12 months

 Paragraph 28.4(6)(b) of the Act does not apply in respect of a divisional application, in relation to a previously regularly filed application, if the filing date of the original application is deemed under subsection 28.4(6) of the Act to be within 12 months after the filing date of that previously regularly filed application for a patent.

Request for Examination

Marginal note:Contents of request

 A request for examination of an application for a patent, referred to in subsection 35(1) of the Act, must contain

  • (a) the name and postal address of the person making the request;

  • (b) the name of the applicant, if the person making the request is not the applicant; and

  • (c) the application number or other information sufficient to identify the application.

Marginal note:Examination fee

  •  (1) For the purposes of subsection 35(1) of the Act, the prescribed fee for an application for a patent to be examined is

    • (a) the applicable small entity fee set out in item 10 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)

      • (i) within the applicable time prescribed by section 81, or

      • (ii) if a notice is required to be sent under paragraph 35(3)(b) of the Act, before the notice is sent or, if the notice has been sent, before the end of two months after the date of the notice; and

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

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

    (2) Subsection 3(1) does not apply in respect of the times prescribed by subsection (1).

Marginal note:Prescribed time — subsection 35(2) of Act

  •  (1) For the purposes of subsection 35(2) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before

    • (a) in respect of an application for a patent other than a divisional application, the end of a period of four years after the filing date of the application; and

    • (b) in respect of a divisional application, the later of

      • (i) the end of the time that is applicable under this subsection in respect of the original application, and

      • (ii) the end of a period of three months after the presentation date of the divisional application.

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

    (2) Subsection 3(1) does not apply in respect of the times prescribed by subsection (1).

Marginal note:Late fee

 For the purposes of subsection 35(3) of the Act, the prescribed late fee is the fee set out in item 11 of Schedule 2.

Marginal note:Prescribed time — subsection 35(5) and paragraph 73(1)(e) of Act

  •  (1) For the purposes of subsection 35(5) and paragraph 73(1)(e) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before the end of a period of three months after the date of the notice referred to in that subsection or that paragraph.

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

    (2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

Examination

Marginal note:Advancing examination

  •  (1) In respect of an application for a patent that is open to public inspection at the Patent Office, the Commissioner must advance out of its routine order the examination of the application on the request of

    • (a) any person, if they pay the fee set out in item 12 of Schedule 2 and file with the Commissioner a statement indicating that failure to advance the examination of the application is likely to prejudice that person’s rights; or

    • (b) the applicant, if the applicant files with the Commissioner a statement indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources.

  • Marginal note:Exception

    (2) In respect of a request made under subsection (1) by an applicant, the Commissioner must not advance the examination of the application for a patent out of its routine order or, if the examination is advanced, must return it to its routine order if

    • (a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application; or

    • (b) the application is or was deemed to be abandoned.

Marginal note:Notice — invention in foreign application

  •  (1) If, in the course of examining an application for a patent, an examiner has reasonable grounds to believe that an application for a patent disclosing the same invention has been filed, in or for any country other than Canada, by an inventor of that invention or a person claiming through them, the examiner may by notice requisition the applicant

    • (a) to submit the following information or, if any of the information is not known to the applicant, to so indicate:

      • (i) any prior art cited in respect of the foreign application for a patent,

      • (ii) the application number of the foreign application for a patent, the filing date and, if the patent has been granted, the patent number, and

      • (iii) particulars of any opposition, re-examination, impeachment or similar proceedings in respect of the foreign application or any patent granted on the basis of that application;

    • (b) to submit a copy of any document related to the information referred to in paragraph (a) or, if the document is not available to the applicant, to so indicate; and

    • (c) to submit an English or French translation of any document, or part of a document, related to the information referred to in paragraph (a), that is not in either English or French or, if such a translation is not available to the applicant, to so indicate.

  • Marginal note:Notice — invention previously published or patented

    (2) If, in the course of examining an application for a patent, an examiner has reasonable grounds to believe that an invention disclosed in an application for a patent was, before the filing date of the application, published or the subject of a patent, the examiner may by notice requisition the applicant to identify the first publication of or patent for that invention or, if that information is not known to the applicant, to so indicate.

Marginal note:Notice — application found allowable by examiner

  •  (1) If an examiner has reasonable grounds to believe that an application for a patent complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice.

  • Marginal note:Notice of defects

    (2) If an examiner has reasonable grounds to believe that an application for a patent does not comply with the Act or these Rules, the examiner must by notice inform the applicant of the application’s defects and requisition the applicant to amend the application in order to comply with the Act and these Rules, or to submit arguments as to why the application does comply, not later than four months after the date of the notice.

  • Marginal note:Rejection for defect

    (3) If an applicant replies in good faith to the requisition made under subsection (2), on or before the date set out in subsection (4), but the examiner, after receiving the reply, has reasonable grounds to believe that the application for a patent still does not comply with the Act or these Rules in respect of any of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.

  • Marginal note:Date

    (4) For the purpose of subsection (3), the date is the last day of the period referred to in subsection (2) or, if the application for a patent is deemed to be abandoned under paragraph 73(1)(a) of the Act for failure to reply in good faith to a requisition made under subsection (2), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

  • Marginal note:Final action

    (5) If an examiner rejects an application for a patent, the examiner must send a notice bearing the notation “Final Action” or “Décision finale”, indicating the outstanding defects and requisitioning the applicant to amend the application in order to comply with the Act and these Rules, or to submit arguments as to why the application does comply, not later than four months after the date of the notice.

  • Marginal note:Notice — application found allowable after final action

    (6) If an applicant, on or before the date set out in subsection (8), replies in good faith to a requisition made under subsection (5) and the examiner has reasonable grounds to believe that the application for a patent complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice.

  • Marginal note:Rejection not withdrawn after final action

    (7) If an applicant replies in good faith to a requisition made under subsection (5) on or before the date set out in subsection (8) but, after that date, the examiner still has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules,

    • (a) the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;

    • (b) any amendments made to that application during the period beginning on the date of the final action notice and ending on the date set out in subsection (8) are considered never to have been made; and

    • (c) the application must be reviewed by the Commissioner.

  • Marginal note:Date

    (8) For the purposes of subsections (6) and (7), the date is four months after the date of the notice referred to in subsection (5) or, if the application for a patent is deemed to be abandoned under paragraph 73(1)(a) of the Act for failure to reply in good faith to a requisition made under subsection (5), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

  • Marginal note:Additional defects

    (9) If, during the review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the final action notice, the Commissioner must by notice inform the applicant of those defects and invite the applicant to submit arguments, not later than one month after the date of the notice, as to why the application does comply.

  • Marginal note:Notice — rejection withdrawn

    (10) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice.

  • Marginal note:Notice requiring certain amendments

    (11) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules and certain amendments are necessary in order to make the application allowable, the Commissioner must by notice inform the applicant that those amendments must be made not later than three months after the date of the notice.

  • Marginal note:Notice — application found allowable after amendments

    (12) If the applicant complies with the notice sent under subsection (11), the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 13 of Schedule 2 not later than four months after the date of the notice.

  • Marginal note:Right to hearing

    (13) Before refusing an application for a patent under section 40 of the Act, the Commissioner must give the applicant an opportunity to be heard.

  • Marginal note:Withdrawal of notice of allowance

    (14) If, after a notice of allowance is sent but before a patent is issued, the Commissioner has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules, the Commissioner must

    • (a) by notice, inform the applicant of that fact and that the notice of allowance is withdrawn; and

    • (b) if the final fee has been paid, refund it.

  • Marginal note:Exception

    (15) Subsection (14) does not apply in respect of an application for a patent at any time at which it is deemed to be abandoned.

  • Marginal note:Consequence of notice sent under subsection (14)

    (16) If a notice is sent to the applicant under subsection (14),

    • (a) the notice of allowance that was sent is considered never to have been sent; and

    • (b) the application for a patent is subject to further examination.

  • Marginal note:Notice of allowance considered not sent

    (17) A notice of allowance that is sent under subsection (1), (6) or (10) is considered never to have been sent and the application for a patent is subject to further examination if, not later than four months after the day on which the Commissioner sends the notice to the applicant but before the day on which the final fee is paid, the applicant pays the fee set out in item 14 of Schedule 2 and requests that the notice of allowance be withdrawn and that the application be subject to further examination.

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

    (18) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1), (6), (10), (12) or (17).

Marginal note:Basic fee of final fee

  •  (1) For the purposes of calculating, in respect of an application for a patent, the final fee set out in item 13 of Schedule 2, the prescribed basic fee is

    • (a) the small entity fee set out in that item, if the small entity status condition set out in subsection 44(2) is met and if a small entity declaration is filed in respect of the application in accordance with subsection 44(3) before the end of the applicable time for the payment of that fee; and

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

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

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

Divisional Applications

Marginal note:Definition of one invention

 For the purposes of section 36 of the Act, one invention includes a group of inventions linked in such a manner that they form a single general inventive concept.

Marginal note:Requirements

  •  (1) An application for a patent is a divisional application only if

    • (a) the application on its presentation date contains a petition that includes a statement to the effect that the application is a divisional application that results from the division of an original application filed in Canada;

    • (b) the original application number is submitted to the Commissioner not later than three months after the presentation date;

    • (c) the applicant, or if there are joint applicants, at least one of the joint applicants, was an applicant of the original application at any time during the period beginning on the filing date of the original application and ending on the presentation date;

    • (d) the application on its presentation date contains one or more claims; and

    • (e) if the applicant of the original application is required, under subsection 15(2) or (3), to provide a translation in respect of that application, that applicant has provided the translation to the Commissioner not later than the presentation date.

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

    (2) Subsection 3(1) does not apply to the time referred to in paragraph (1)(b).

 
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