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Patent Rules (SOR/2019-251)

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Regulations are current to 2023-01-11 and last amended on 2022-10-03. Previous Versions

PART 1Rules of General Application (continued)

Amendment to Specification and Drawings (continued)

Marginal note:No amendment after notice of allowance or conditional 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 or conditional notice of allowance is sent, unless

    • (a) the notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4); or

    • (b) the amendments are those referred to in the conditional notice of allowance and are made in accordance with subsection 86(1.1) or, if the application is deemed to be abandoned under subsection 73(2) of the Act in the circumstances referred to in paragraph 132(1)(g) of these Rules, on or before 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:Exception — obvious errors

    (2) The applicant may amend the specification and the drawings contained in the application if it is obvious from the specification and the drawings contained in the application on the day on which the notice of allowance or conditional notice of allowance was sent 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. The amendments must be made

    • (a) if a notice of allowance was sent and has not been withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), on or before the day on which the final fee set out in item 14 of Schedule 2 is paid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

    • (b) if a conditional notice of allowance was sent and has not been withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), on or before the day on which the applicant replies in good faith to the conditional notice of allowance.

  • Marginal note:Effect of withdrawal or setting aside

    (3) If a conditional notice of allowance is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), any amendments made to the application during the period beginning on the day on which the conditional notice of allowance is sent and ending on the day before the day on which the conditional notice of allowance is withdrawn or set aside are considered never to have been made.

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 – naming of applicants

 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent, other than a PCT national phase application, 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 is made by the person who submitted the application 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 – naming of applicants

 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent if the request contains a statement to the effect that the correction does not add or delete the name of an applicant or change the identity of a named applicant and is made by the applicant on or before the day on which the final fee set out in item 14 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.

Marginal note:Error – naming of inventors

 The Commissioner must, on request, correct an error with respect to the naming of inventors in an application for a patent if

  • (a) in the case of a request that contains a statement to the effect that the correction does not add or delete the name of an inventor or change the identity of a named inventor, the request is made by the applicant on or before the day on which the final fee set out in item 14 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; or

  • (b) in any other case, the request is made by the applicant before the day on which a notice of allowance or conditional notice of allowance is sent or, if the notice of allowance or conditional notice of allowance is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), before the day on which another notice of allowance or conditional notice of allowance is sent.

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.

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 with respect to the naming of a patentee or an inventor included in the patent, if the request for a correction contains a statement to the effect that the correction does not add or delete the name of a patentee or an inventor or change the identity of a named patentee or inventor, as the case may be; 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 section 104, 105 or 106 or 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) For the purposes of subsection 46(1) of the Act, 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 for an anniversary of the filing date of the application that fell 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 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.

 
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