Government of Canada / Gouvernement du Canada
Symbol of the Government of Canada

Search

Patent Rules (SOR/2019-251)

Full Document:  

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

PART 1Rules of General Application (continued)

Divisional Applications (continued)

Marginal note:Time for filing if original application refused

 Unless a shorter time is applicable under subsection 36(2), (2.1) or (3) of the Act, if an application for a patent is refused by the Commissioner under section 40 of the Act, the time for filing a divisional application resulting from the division of that application is any time before

  • (a) if an appeal is not taken under section 41 of the Act, the end of a period of six months after the notice as provided for in section 40 of the Act is mailed;

  • (b) if an appeal is taken under section 41 of the Act and no appeal is taken to the Federal Court of Appeal from the final judgment of the Federal Court on that appeal, the later of

    • (i) the end of the period referred to in paragraph (a), and

    • (ii) the end of a period of two months after the day on which final judgment is rendered in the appeal by the Federal Court or, if the appeal is discontinued, the end of a period of two months after the day on which the appeal is discontinued;

  • (c) if an appeal is taken under section 41 of the Act and the final judgment of the Federal Court in that appeal is appealed to the Federal Court of Appeal and no appeal is taken to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal in that appeal, the later of

    • (i) the end of a period of two months after the day on which the final judgment of the Federal Court of Appeal is rendered in the appeal or, if the appeal to the Federal Court of Appeal is discontinued, the end of a period of two months after the day on which the appeal is discontinued, and

    • (ii) if an application is made in accordance with the Supreme Court Act for leave to appeal to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal, the end of a period of two months after the day on which the application is dismissed or granted; and

  • (d) if an appeal is taken under section 41 of the Act and the final judgment of the Federal Court in that appeal is appealed to the Federal Court of Appeal and an appeal is taken to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal in that appeal, the end of a period of two months after the day on which the final judgment of the Supreme Court is rendered in the appeal or, if the appeal to the Supreme Court is discontinued, the end of a period of two months after the day on which the appeal is discontinued.

Marginal note:Clarification

 For greater certainty, the specification and the drawings contained in a divisional application on its presentation date must not contain matter that is not in the specification and the drawings contained in the original application on its filing date, or if the original application is itself a divisional application, on its presentation date, unless

  • (a) the matter may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application; or

  • (b) it is admitted in the specification that the matter is prior art with respect to the application.

Marginal note:Actions considered taken — divisional application

 If, on or before the presentation date of a divisional application, any of the following measures has been taken with respect to the original application, the same measure is considered to have been taken, with respect to the divisional application, on the date the action was taken in respect of the original application:

  • (a) a small entity declaration has been filed;

  • (b) a request for priority has been made and has not been withdrawn;

  • (c) information required under subsection 28.4(2) of the Act has been submitted to the Commissioner in respect of a request for priority;

  • (d) a copy or an English or French translation of a previously regularly filed application for a patent, or a certificate showing its filing date, has been submitted to the Commissioner;

  • (e) a copy of a previously regularly filed application for a patent has been made available to the Commissioner in a digital library;

  • (f) information required by paragraph 93(1)(b) in respect of a deposit of biological material has been submitted to the Commissioner; or

  • (g) a request has been submitted under subsection 95(1).

Deposit of Biological Material

Marginal note:Conditions

  •  (1) For the purpose of subsection 38.1(1) of the Act, the following conditions apply to a deposit of biological material:

    • (a) the deposit of biological material must be made by the applicant or their predecessor in title with an international depositary authority on or before the filing date of the application for a patent;

    • (b) the applicant must, before the day on which the application for a patent becomes open to public inspection at the Patent Office, inform the Commissioner of the name of the international depositary authority and the accession number given by the authority to the deposit;

    • (c) the information required by paragraph (b) must be included in the description;

    • (d) in the case where a sample of the biological material is transferred to a substitute authority under Rule 5 of the Regulations under the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by that authority not later than three months after the day on which the authority issues a receipt;

    • (e) in the case where the depositor is notified under Article 4 of the Budapest Treaty of the inability of the international depositary authority to furnish samples, a new deposit must be made in accordance with that Article; and

    • (f) in the case where a new deposit of the biological material is made with another international depositary authority under Article 4(1)(b)(i) or (ii) of the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by that authority not later than after the day on which the authority issues a receipt.

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

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

Marginal note:Inclusion of date of deposit of biological material

 If a specification refers to a deposit of biological material and the deposit is taken into consideration by an examiner in determining whether the specification complies with subsection 27(3) of the Act and the date of that deposit is not already included in the description, the examiner may by notice requisition the applicant to amend the description to include the date of that deposit.

Marginal note:Request to furnish sample to independent expert

  •  (1) If the specification contained in an application for a patent refers to a deposit of biological material, the applicant may, before the day on which the application becomes open to public inspection at the Patent Office, submit to the Commissioner a request that, until a patent has been issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, the Commissioner only authorize in respect of that application the furnishing of a sample of the deposited biological material to an independent expert nominated under section 96.

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

    (2) Subsection 3(1) does not apply to the time for submitting the request referred to in subsection (1).

Marginal note:Nomination of independent expert

  •  (1) If an applicant submits a request under section 95, the Commissioner must, on the request of any person and with the agreement of the applicant, nominate an independent expert.

  • Marginal note:No agreement on nomination

    (2) If the Commissioner and the applicant cannot agree on the nomination of an independent expert, the request under section 95 is considered not to have been submitted.

Marginal note:Form for submitting request

  •  (1) The Commissioner must publish on the website of the Canadian Intellectual Property Office a form for submitting a request for the furnishing of a sample of deposited biological material, the contents of which must be the same as the contents of the form referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty.

  • Marginal note:Certification

    (2) Subject to section 98, if a specification contained in a Canadian patent, or in an application for a patent filed in Canada that is open to public inspection at the Patent Office, refers to a deposit of biological material by the applicant and if a person submits a request to the Commissioner on the form referred to in subsection (1), the Commissioner must make the certification referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty in respect of that person if

    • (a) a patent has been issued on the basis of the application or the application has been refused, withdrawn or deemed to be abandoned and is no longer subject to reinstatement; or

    • (b) the Commissioner has received an undertaking by that person

      • (i) not to make any sample of biological material furnished by the international depositary authority or any material derived from such a sample available to any other person before either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, and

      • (ii) to use the sample of biological material furnished by the international depositary authority and any material derived from such a sample solely for the purpose of experiments that relate to the subject-matter of the application until either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement.

  • Marginal note:Copy of request and certification to be sent

    (3) Except in the case where subsection 98(2) applies, if the Commissioner makes a certification under subsection (2), the Commissioner must send a copy of the request together with the certification to the person who submitted the request.

Marginal note:Person authorized to submit request

  •  (1) If an applicant submits a request under section 95, until a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, a request under section 97 may only be submitted by an independent expert nominated under section 96.

  • Marginal note:Copy of request and certification to be sent

    (2) If the Commissioner makes a certification under subsection 97(2) in respect of an independent expert nominated by the Commissioner, the Commissioner must send a copy of the request together with the certification to the applicant and to the person who requested the nomination of the expert.

Amendment to Specification and Drawings

Marginal note:No amendment before submission of translation

 If an applicant is required to submit a translation under subsection 15(2) or (3), the specification and the drawings contained in the application for a patent must not be amended by the applicant before they submit the translation to the Commissioner.

Marginal note:No amendment after notice of allowance

  •  (1) Subject to subsection (2), the specification and the drawings contained in an application for a patent must not be amended by the applicant after a notice of allowance is sent.

  • Marginal note:Exception — obvious error

    (2) The specification and the drawings may be amended by the applicant on or before the day on which the final fee set out in item 13 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again if, from the specification and the drawings contained in the application for a patent on the day on which the notice of allowance was sent, it is obvious that something other than what appears in the specification and the drawings was intended and that nothing other than the proposed amendment could have been intended.

Marginal note:No amendment after rejection

 If an application for a patent is rejected by an examiner under subsection 86(3), the specification and the drawings contained in the application must not be amended by the applicant after the date prescribed by subsection 86(8), unless

  • (a) a notice is sent to the applicant informing them that the rejection is withdrawn;

  • (b) the amendments are those required in a notice sent under subsection 86(11); or

  • (c) the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendments to be made.

Marginal note:Amendment to specification or drawings

 An amendment by the applicant to the specification or the drawings contained in an application for a patent must be made by submitting a new page to replace each page altered by the amendment and a statement explaining the purpose of the amendment and identifying the differences between the new page and the replaced page.

Marginal note:Prescribed Documents and information — divisional application

  •  (1) For the purpose of paragraph 38.2(3.1)(b) of the Act, the prescribed documents and information are

    • (a) an explicit or implicit indication that the granting of a Canadian patent is being sought;

    • (b) information allowing the identity of the applicant to be established;

    • (c) information allowing the Commissioner to contact the applicant; and

    • (d) a document that, on its face, appears to be a description.

  • Marginal note:Presentation date

    (2) The presentation date of an application for a patent is the date on which the Commissioner receives the documents and information referred to in subsection (1) or, if they are received on different dates, the latest of those dates.

Corrections

Marginal note:Error in name of applicant

 An error in the name of an applicant in an application for a patent, other than a PCT national phase application, that arises from inadvertence, accident or mistake, without any fraudulent or deceptive intention, must be corrected by the Commissioner on the request of the person who submitted the application on their own behalf or on behalf of the applicant, if the request contains a statement to the effect that the error arose from inadvertence, accident or mistake without any fraudulent or deceptive intention and the request is made not later than the earlier of

  • (a) the day on which the application becomes open to public inspection at the Patent Office, and

  • (b) if the Commissioner records a transfer of the application under section 49 of the Act, the day on which the Commissioner received the request to record that transfer.

Marginal note:Error in name of inventor

 An error in the name of an inventor in an application for a patent must be corrected by the Commissioner on the request of the applicant if the correction changes the identity of the inventor and the request is made before the day on which a notice of allowance is sent.

Marginal note:Error in name of applicant or inventor

 An error in the name of an applicant or an inventor in an application for a patent must be corrected by the Commissioner on the request of the applicant if the request is made on or before the day on which the final fee set out in item 13 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again, and the correction does not result in a change in their identity.

Marginal note:Obvious error made by Commissioner

  •  (1) The Commissioner may, on his or her own initiative within 12 months after the day on which a patent is issued under the Act, or on the request of the patentee made within that period, correct an error made by the Commissioner in the patent or in the specification or the drawings referenced in the patent if, from the documents that were in the possession of the Patent Office on that day, it is obvious that something other than what appears in the patent, the specification or the drawings was intended and that nothing other than the correction could have been intended.

  • Marginal note:Date of correction

    (2) A correction made under subsection (1) is considered to have been made on the day on which the patent was issued.

Marginal note:Obvious error made by re-examination board

  •  (1) The Commissioner may, on his or her own initiative within six months after the day on which a certificate is issued under section 48.4 of the Act, or on the request of the patentee made within that period, correct an error made by the re-examination board in the certificate if, from the documents that were in the possession of the Patent Office on that day, it is obvious that something other than what appears in the certificate was intended and that nothing other than the correction could have been intended.

  • Marginal note:Date of correction

    (2) A correction made under subsection (1) is considered to have been made on the day on which the certificate was issued.

 
Date modified: