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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)

Corrections (continued)

Marginal note:Correction on request of patentee

  •  (1) On the request of the patentee, made in accordance with subsection (2), not later than 12 months after the day on which a patent is issued under the Act and on payment of the fee set out in item 24 of Schedule 2, the Commissioner must correct

    • (a) an error in the name of the patentee or an inventor included in the patent, if the correction does not change their identity; or

    • (b) an error in the specification or the drawings referenced in the patent, if from the specification or the drawings referenced in the patent at the time the patent was issued it would have been obvious to a person skilled in the art or science to which the patent pertains that something other than what appears in the specification or the drawings was intended and that nothing other than the correction could have been intended.

  • Marginal note:Contents of request

    (2) A request under subsection (1) must contain

    • (a) an indication that a correction of an error is being requested;

    • (b) the number of the patent concerned;

    • (c) the correction to be made; and

    • (d) new pages to replace the pages altered by the correction, if the error is in the specification or the drawings and the error was not made by the Commissioner.

  • Marginal note:Notice

    (3) If a request is made under subsection (1) during the 12-month period referred to in that subsection but the request does not comply with subsection (2) or the fee referred to in subsection (1) is not paid, the Commissioner must by notice require the patentee to submit the elements referred to in subsection (2) or pay the fee referred to in subsection (1), as applicable, not later than three months after the date of the notice.

  • Marginal note:Correction after notice

    (4) The Commissioner must make the correction if the applicant complies with the notice not later than three months after the date of the notice and if the error is one referred to in subsection (1).

  • Marginal note:Date of correction

    (5) A correction made under subsection (1) or (4) is considered to have been made on the day on which the patent was issued.

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

 Subsection 3(1) does not apply in respect of the times referred to in subsection 107(1), 108(1) or 109(1), (3) or (4).

Marginal note:Certificate

  •  (1) If the Commissioner corrects an error under section 107, 108 or 109, the Commissioner must, under the seal of the Patent Office, issue a certificate setting out the correction.

  • Marginal note:Obvious error made by Commissioner

    (2) The Commissioner may correct an error made in the certificate if, from the documents that were in the possession of the Patent Office on the day on which the certificate was issued, 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.

Maintaining Rights Accorded by a Patent

Marginal note:Prescribed fee

  •  (1) Subject to subsection (5), for the purposes of subsection 46(1) of the Act, the prescribed fee to maintain the rights accorded by a patent issued under the Act in effect is, for an anniversary date set out in item 25 of Schedule 2 that falls on or after the day on which the patent was issued,

    • (a) the applicable small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in accordance with subsection (3) in respect of the patent, or in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted,

      • (i) on or before that anniversary date, or

      • (ii) if a notice is required to be sent under paragraph 46(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of six months after that anniversary date and the end of two months after the date of the notice; and

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

  • Marginal note:Small entity status condition

    (2) The small entity status condition is that

    • (a) in respect of a patent granted on the basis 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 50 employees or less or is a university, other than

      • (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees, 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 more than 50 employees;

    • (b) in respect of a patent granted on the basis of a PCT national phase application, the applicant of the application on the national phase entry date is, on that date, an entity that has 50 employees or less or is a university, other than an entity referred to in subparagraph (a)(i) or (ii); and

    • (c) in respect of a patent granted on the basis of a divisional application, the applicable requirements set out in subsection 44(2) 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 a document other than the abstract, the specification or the drawings of the application on the basis of which the patent was granted, that identifies the patent to which the declaration relates;

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

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

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

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

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

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

    • (d) indicate the name of the patentee 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:Exception

    (5) If a patent is granted on the basis of an application for a patent, in respect of which a fee was payable under subsection 27.1(1) of the Act within the 12-month period preceding the day on which the patent was issued but that was not yet paid before that day, the prescribed fee, for the purposes of subsection 46(1) of the Act, to maintain in effect the rights accorded by the patent is, for the day of the first of the anniversaries of the filing date of the application that fall on or after the day on which the patent was issued, the total of

    • (a) the unpaid fee,

    • (b) the late fee set out in item 26 of Schedule 2, and

    • (c) the fee prescribed by paragraph (1)(a) or (b) of this section for that anniversary, as applicable.

Marginal note:Prescribed Dates

 For the purposes of subsection 46(1) of the Act, the prescribed dates are

  • (a) for a fee referred to in subsection 112(1) of these Rules, the anniversary date for which it is paid; and

  • (b) for a fee referred to in subsection 112(5) of these Rules, the date of the first of the anniversaries of the filing date of the application that fall on or after the day on which the patent was issued.

Marginal note:Clarification

 For greater certainty, for the purposes of sections 112 and 113, a reissued patent is considered to be granted on the basis of the original application and is considered to be issued on the day on which it is reissued.

Marginal note:Late fee

 For the purposes of subsection 46(2) of the Act, the prescribed late fee is the fee set out in item 26 of Schedule 2.

Marginal note:Time — paragraph 46(5)(a) of Act

  •  (1) For the purposes of paragraph 46(5)(a) of the Act, the prescribed time is 12 months after the end of the six-month period referred to in subsection 46(4) of the Act.

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

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

Marginal note:Additional prescribed fee

 For the purpose of subparagraph 46(5)(a)(iii) of the Act, the additional prescribed fee is the fee set out in item 27 of Schedule 2.

Reissue

Marginal note:Form

 An application for the reissue of a patent under section 47 of the Act must be filed in Form 1 of Schedule 1.

Marginal note:Prescribed fee

 For the purpose of subsection 47(1) of the Act, the prescribed fee is the fee set out in item 28 of Schedule 2.

Disclaimer of Any Part of a Patent

Marginal note:Form

 A disclaimer under section 48 of the Act must be filed in Form 2 of Schedule 1.

Marginal note:Prescribed fee

 For the purpose of subsection 48(1) of the Act, the prescribed fee is the fee set out in item 29 of Schedule 2.

Re-examination

Marginal note:Prescribed fee

  •  (1) For the purposes of subsection 48.1(1) of the Act, the prescribed fee for a request for re-examination of one or more claims of a patent is

    • (a) the small entity fee set out in item 30 of Schedule 2 if

      • (i) the person requesting re-examination is the patentee, the small entity status condition set out in subsection 112(2) is met and a small entity declaration is filed in accordance with subsection 112(3) in respect of the patent or filed in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted, or

      • (ii) the person requesting re-examination is not the patentee, the small entity status condition set out in subsection (3) is met and a small entity declaration is filed in respect of the request for re-examination in accordance with subsection (4); and

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

  • Marginal note:Clarification

    (2) For greater certainty, for the purposes of subparagraph (1)(a)(i), a reissued patent is considered to be granted on the basis of the original application.

  • Marginal note:Exception — small entity status condition

    (3) In respect of a request for re-examination under subsection 48.1(1) of the Act by a person other than the patentee, the small entity status condition is that the person requesting the re-examination is, on the date of the request, an entity that has 50 employees or less or is a university, other than an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees.

  • Marginal note:Exception — small entity declaration

    (4) In respect of a request for re-examination under subsection 48.1(1) of the Act by a person other than the patentee, a small entity declaration must

    • (a) be filed with the Commissioner;

    • (b) identify the request for re-examination to which it relates;

    • (c) contain a statement that the person requesting re-examination believes that the small entity status condition set out in subsection (3) is met in respect of that request;

    • (d) be signed by

      • (i) the person requesting re-examination,

      • (ii) if a document authorizing a foreign practitioner to sign a small entity declaration is signed by the person requesting re-examination and submitted to the Commissioner at the same time as the declaration, that foreign practitioner, or

      • (iii) a patent agent who is appointed in respect of that request; and

    • (e) indicate the name of the person requesting re-examination and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

Marginal note:Numbering of claims

 An amended claim or a new claim proposed by a patentee under subsection 48.3(2) of the Act must be numbered consecutively in Arabic numerals, beginning with the number immediately following the number of the last claim in the patent.

Registration of Documents and Recording of Transfers

Marginal note:Related documents

 The Commissioner must, on the receipt of a request and the fee set out in item 33 of Schedule 2, register in the Patent Office a document relating to a patent or an application for a patent.

Marginal note:Name change

 If an applicant for a patent or a patentee changes their name, the Commissioner must, on the receipt of a request from that applicant or patentee and the fee set out in item 34 of Schedule 2, record that name change.

Marginal note:Request to record transfer

 A request to record a transfer under section 49 of the Act must contain the name and postal address of the transferee and be accompanied by the fee set out in item 35 of Schedule 2.

Marginal note:Condition for recording transfer of application

 The Commissioner must not record the transfer of an application for a patent under subsection 49(2) of the Act if the request to record the transfer is submitted after the day on which the final fee set out in item 13 of Schedule 2 is paid or, if the final fee is refunded, after the day on which the final fee is paid again.

Third party Rights

Marginal note:Period

 For the purposes of subsections 55.11(2), (3), (7) and (9) of the Act, the prescribed periods are

  • (a) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11(1)(a)(i) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 27.1(1) of the Act was due under that subsection but was not paid, without taking into account subsection 27.1(3) of the Act, and ending

    • (i) if the Commissioner, under paragraph 27.1(2)(b) of the Act, sent a notice to the applicant because of that omission, and if the application is deemed to be abandoned under paragraph 73(1)(c) of the Act because the prescribed fee and the late fee referred to in that notice were not paid within the time referred to in that paragraph, on the earlier of

      • (A) the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment, and

      • (B) the day on which the patent was granted, or

    • (ii) if the application was not deemed to be abandoned under paragraph 73(1)(c) of the Act for the reason referred to in subparagraph (i), on the earlier of

      • (A) the day on which that prescribed fee and the late fee referred to in subsection 27.1(2) of the Act were paid — or, if they were paid on different days, the later of those days — without taking into account subsection 27.1(3) of the Act, and

      • (B) the day on which the patent was granted;

  • (b) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11(1)(a)(ii) of the Act, the period beginning six months after the end of the prescribed time referred to in subsection 35(2) of the Act and ending

    • (i) if the application was deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of

      • (A) the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment, and

      • (B) the day on which the patent was granted, or

    • (ii) if the application was not deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of

      • (A) the day on which the request referred to in subsection 35(3) of the Act was made and the prescribed fee and late fee referred to in that subsection were paid — or, if the request was made on a different day than the day on which those fees were paid, or those fees were paid on different days, the latest of those days — without taking into account subsection 35(4) of the Act, and

      • (B) the day on which the patent was granted;

  • (c) in the case of a patent that was granted on the basis of a divisional application referred to in paragraph 55.11(1)(b) of the Act, any period that applies under this section in respect of a patent granted on the basis of the original application, or that would apply to that patent if it were granted, but excluding any part of that period that is after the presentation date of the divisional application; and

  • (d) in the case of a patent referred to in paragraph 55.11(1)(c) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 46(1) of the Act was due under that subsection but was not paid, without taking into account subsection 46(3) of the Act, and ending

    • (i) if the Commissioner, under paragraph 46(2)(b) of the Act, sent a notice to the patentee because of that omission and if, without taking into account subsection 46(5) of the Act, the patent was deemed to have expired under subsection 46(4) of the Act because the prescribed fee and the late fee referred to in subsection 46(2) of the Act were not paid within the time referred to in subsection 46(4) of the Act, on the day on which subsection 46(4) of the Act is deemed never to have produced its effects under subsection 46(5) of the Act, or

    • (ii) if, without taking into account subsection 46(5) of the Act, the term limited for the duration of the patent is not deemed to have expired under subsection 46(4) of the Act for the reason referred to in subparagraph (i), on the day on which that prescribed fee and the late fee referred to in subsection 46(2) of the Act were paid — or, if they were paid on different days, the later of those days — without taking into account subsection 46(3) of the Act.

 
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