ARCHIVED — Rules Amending the Patent Rules

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Vol. 143, No. 25 — December 9, 2009

Registration

SOR/2009-319 November 26, 2009

PATENT ACT

P.C. 2009-1894 November 26, 2009

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to section 12(see footnote a) of the Patent Act(see footnote b), and section 12(see footnote c) of that Act as it read immediately before October 1, 1989, hereby makes the annexed Rules Amending the Patent Rules.

RULES AMENDING THE PATENT RULES

AMENDMENTS

1. The definition “description” in section 2 of the Patent Rules(see footnote 1) is replaced by the following:

“description” means the part of a specification other than the claims; (description)

2. Subsection 4(2) of the Rules is replaced by the following:

(2) If an application does not meet the requirements of section 28 of the Act entitling it to a filing date, the fee paid shall be refunded, less $25.

3. Subsection 16(4) of the Rules is repealed.

4. Sections 18 and 19 of the Rules are replaced by the following:

18. Any decision of the Commissioner under section 16 of the Act to refuse to recognize a person as a patent agent and any decision of the Commissioner under subsection 16(3) to remove the name of a person from the register of patent agents shall be without delay entered in the register of patent agents and published in the Canadian Patent Office Record and a copy shall be sent by registered mail to the person referred to in the decision.

19. (1) If the Commissioner makes a decision under section 16 of the Act that a person be refused recognition as a patent agent or makes a decision under subsection 16(3) to remove the name of a person from the register of patent agents, any correspondence respecting an application sent by the Commissioner or by the Patent Office to that person within the six-month period before the date of the decision and to which no reply has been made by that date is deemed not to have been sent to the applicant.

(2) An application filed by a person who has been refused recognition as a patent agent by the Commissioner or whose name has been removed from the register of patent agents or an application that includes an appointment of such a person as patent agent of the applicant or as associate patent agent shall be treated by the Commissioner as an application filed by the applicant or by the patent agent who appointed the associate patent agent.

5. The Rules are amended by adding the following after section 27:

FILING DATE

27.1. (1) The documents, information and fees prescribed for the purposes of subsection 28(1) of the Act are

(a) if paragraphs (b) and (c) do not apply and one or more of the following has been received by the Commissioner on or after June 2, 2007,

(i) an indication, in English or French, that the granting of a Canadian patent is sought,

(ii) the applicant’s name,

(iii) the applicant’s address or that of their patent agent,

(iv) a document, in English or French, that on its face appears to describe an invention, and

(v) either

(A) a small entity declaration in accordance with section 3.01 and the small entity fee set out in item 1 of Schedule II as it read at the time of receipt, or

(B) the standard fee set out in that item;

(b) if one or more of the following has been received by the Commissioner on or after October 1, 1996 and all of the following have been received before June 2, 2007,

(i) an indication in English or French that the granting of a Canadian patent is sought,

(ii) the applicant’s name,

(iii) the applicant’s address or that of their patent agent,

(iv) a document, in English or French, that on its face appears to describe an invention, and

(v) the fee set out in item 1 of Schedule II as it read at the time of receipt;

(c) if all of the following have been received by the Commissioner before October 1, 1996,

(i) a petition executed by the applicant or a patent agent on the applicant’s behalf,

(ii) a specification, including claims,

(iii) any drawing referred to in the specification,

(iv) an abstract of the description, which may be inserted at the beginning of the specification, and

(v) the fee set out in item 1 of Schedule II as it read at the time of receipt.

(2) Subject to subsection 36(4) of the Act as it read immediately before October 1, 1989, the filing date of an application in Canada filed before October 1, 1989 is the date on which the fee for filing it has been paid and the following documents relating to it have been filed:

(a) a statement that the granting of a patent is sought, executed by the applicant or a patent agent on the applicant’s behalf;

(b) a specification, including claims;

(c) any drawing referred to in the specification; and

(d) an abstract of the description, which may be inserted at the beginning of the specification.

6. The Rules are amended by adding the following after section 36:

INVENTORS AND ENTITLEMENT

37. (1) If the applicant is the inventor, the application must contain a statement to that effect.

(2) If the applicant is not the inventor, the application must contain a statement indicating the name and address of the inventor and,

(a) in respect of an application other than a PCT national phase application, a declaration that the applicant is the legal representative of the inventor; and

(b) in respect of a PCT national phase application, either

(i) a declaration that the applicant is the legal representative of the inventor, or

(ii) a declaration as to the applicant’s entitlement, as at the filing date, to apply for and be granted a patent, in accordance with Rule 4.17 of the Regulations under the PCT.

(3) A statement or declaration required by subsection (1) or (2) shall be included in the petition or be submitted in a separate document.

(4) If an application does not comply with the requirements of subsections (1) to (3), the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those requirements before the later of the expiry of the 3-month period after the date of the notice and the expiry of the 12-month period after the filing date of the application.

7. Section 67 of the Rules and the headings before it are replaced by the following:

PART III

APPLICATIONS HAVING A FILING DATE ON OR AFTER OCTOBER 1, 1996

APPLICATION

67. (1) This Part applies to applications having a filing date on or after October 1, 1996 and to patents issued on the basis of such applications.

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

8. Section 77 of the Rules is replaced by the following:

77. The petition shall follow the form and the instructions for its completion set out in Form 3 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

9. Section 78.1 of the Rules and the heading before it are repealed.

10. Section 92 of the Rules is replaced by the following:

92. For the purposes of subsection 10(5) of the Act, the prescribed date is the day that is two months before the date of expiry of the confidentiality period referred to in subsection 10(2) of the Act or, if the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date before the expiry of the confidentiality period, that subsequent date.

11. Section 93 of the Rules and the heading before it are repealed.

12. Clause 94(2)(b)(ii)(B) of the Rules is repealed.

13. Subparagraphs 94(3)(b)(i) and (ii) of the Rules are repealed.

14. Section 97 of the Rules is replaced by the following:

97. For the purposes of subsection 73(2) of the Act, an application is deemed to be abandoned if the applicant does not reply in good faith to any requisition of the Commissioner referred to in section 23, 25, 37 or 94 within the time provided in that section.

15. Section 132 of the Rules and the headings before it are replaced by the following:

PART IV

APPLICATIONS HAVING A FILING DATE IN THE PERIOD BEGINNING ON OCTOBER 1, 1989 AND ENDING ON SEPTEMBER 30, 1996

APPLICATION

132. (1) This Part applies to applications having a filing date in the period beginning on October 1, 1989 and ending on September 30, 1996 and to patents issued on the basis of such applications.

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

16. Section 146 of the Rules is replaced by the following:

146. For the purposes of subsection 10(5) of the Act, the prescribed date is the day that is two months before the date of expiry of the confidentiality period referred to in subsection 10(2) of the Act or, if the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date before the expiry of the confidentiality period, that subsequent date.

17. Section 147 of the Rules and the heading before it are repealed.

18. Section 167 of the Rules and the headings before it are replaced by the following:

PART V

APPLICATIONS HAVING A FILING DATE BEFORE OCTOBER 1, 1989

APPLICATION

167. (1) This Part applies to applications having a filing date before October 1, 1989 and to patents issued on the basis of such applications.

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

19. Section 178 of the Rules and the heading before it are repealed.

20. Subsection 182(1) of the Rules is replaced by the following:

182. (1) For the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a patent issued on or after October 1, 1989, set out in item 32 of Schedule II, shall be paid in respect of the periods set out in that item before the expiry of the times provided in that item.

21. Subsection 182(3) of the Rules is replaced by the following:

(3) Subject to subsection (4), for the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a reissued patent, set out in item 32 of Schedule II, shall be paid in respect of the same periods and before the expiry of the same times, including periods of grace, as for the original patent.

22. Schedule I to the Regulations is amended by replacing “ (Sections 43, 44 and 77) ” after the heading “SCHEDULE I” with “ (Sections 43, 44, 77 and 78) ”.

23. Subsection 3(2) of Form 3 of Schedule I to the Rules is replaced by the following:

(2) The inventor is _________, whose complete address is _________ and the applicant is the legal representative of the inventor.

24. Section 7 of Form 3 of Schedule I to the Rules is replaced by the following:

7. The applicant believes that in accordance with the Patent Rules they are entitled to pay fees at the small entity level in respect of this application and in respect of any patent issued on the basis of this application.

25. The Rules are amended by adding the following after section 8 of Form 3 of Schedule I:

…………………. (signature)

26. The second to fourth paragraphs of the Instructions to Form 3 of Schedule I to the Rules are replaced by the following:

Sections 2 and 8 should be deleted if they do not apply.

The contents of sections 3 to 7 may be included in the petition or submitted in a separate document.

In section 3, in accordance with section 37 of the Patent Rules, only subsection 3(1) or subsection 3(2) should be included.

In general, the inclusion of a signature in the petition is optional. However, in accordance with paragraph 3.01(1)(e) of the Patent Rules, a signature is required if a small entity declaration is included in the petition.

27. Item 2 of Schedule II to the Rules is replaced by the following:

Item

Column I

Description

Column II

Fee

2.

On completing an application in response to a requisition under subsection 94(1) of these Rules or on avoiding a deemed abandonment under subsection 148(1) of these Rules

200.00

TRANSITIONAL PROVISIONS

28. In respect of an application, other than a PCT national phase application, that has a filing date before October 1, 2010, the applicant may substitute the requirements of Form 3 of Schedule I to the Patent Rules as it read immediately before October 1, 2010 for the requirements of section 37 of the Patent Rules and of Form 3 of Schedule I to the Patent Rules .

29. If the Commissioner, before October 1, 2010, requisitions the applicant by notice under subsection 94(1) of the Patent Rules as it read immediately before October 1, 2010 and the time provided by that subsection to reply has not expired,

(a) the notice is considered not to apply to the extent that it requisitions the applicant to comply with the requirements of any of clause 94(2)(b)(ii)(B) or subparagraph 94(3)(b)(i) or (ii) of the Patent Rules as they read immediately before October 1, 2010; and

(b) if the notice requisitions the applicant to comply with only one or more of the requirements referred to in paragraph (a), the applicant is not required to pay the fee set out in item 2 of Schedule II to the Patent Rules as it read immediately before October 1, 2010.

COMING INTO FORCE

30. These Rules come into force on October 1, 2010.

REGULATORY IMPACT
ANALYSIS STATEMENT

(This statement is not part of the Rules.)

Issue and objectives

This regulatory initiative consists of amendments to the Patent Rules under the authority of the Patent Act. The Patent Act and associated regulations relate to the protection of new inventions (art, process, machine, manufacture, composition of matter) or any new and useful improvement of an existing invention.

The objectives of the amendments are threefold:

  • to address most Standing Joint Committee for the Scrutiny of Regulations (SJCSR) comments to clarify provisions in the Patent Rules dealing with legalities and procedural issues;
  • to improve legal certainty; and
  • to modernize, simplify and clarify processes, thereby reducing the administrative burden for clients.

The SJCSR, a parliamentary committee established under the Rules of the Senate and the Standing Orders of the House of Commons, is responsible for reviewing and scrutinizing regulations and statutory instruments. In June 2007, the Committee conducted a review of the Patent Rules. During its review and in subsequent correspondence with the Patent Office of the Canadian Intellectual Property Office (CIPO), the Committee raised a number of points. Most points encourage CIPO to clarify certain provisions in the Patent Rules as opposed to issues of substantive policy. CIPO is also proposing several amendments to provide greater clarity and reduced administrative burden for clients.

Description and rationale

The regulatory actions respond to most of the SJCSR recommendations and to CIPO’s efforts to improve services to clients. The regulatory amendments are focused on the following areas: (1) definition of “description”; (2) clarification of the purpose of subsection 16(4) to decrease confusion that subsection 16(4) may attempt to modify, without statutory authority, the meaning of section 16 of the Patent Act that deals with similar subject matter; (3) establishment of a filing date; (4) confidentiality period; (5) payment of maintenance fees; (6) small entity declaration within the Petition for Grant of a Patent; (7) Form 3 of Schedule I; and (8) requirements for completing and establishing entitlement to file a patent application.

An additional recommendation from the SJCSR is related to the reinstatement of abandoned patent applications and is currently under discussion between SJCSR and Industry Canada. The outcome of these discussions may require further action that could lead to future regulatory amendments.

More detailed descriptions of the Patent Rules amendments are as follows:

Amendments that respond to the SJCSR recommendations

(1) Definition of “description”

The regulatory initiative amends the current definition, which states that description “means the part of the specification other than the claims, referred to in section 80.” In order to simplify this definition, the following new definition is inserted: “description” means the part of a specification other than the claims.

(2) Clarification of the purpose of subsection 16(4)

Subsection 16(4) of the PatentRules is deleted and sections 18 and 19 are replaced as per SJCSR recommendation. Subsection 16(4) of the Patent Rules currently reads as follows: “The removal by the Commissioner of the name of a person from the register of patent agents constitutes a refusal to recognize that person as a patent agent for the purposes of section 16 of the Act.” The SJCSR suggested that, in its current form, the text of subsection 16(4) may be interpreted erroneously by some as having the authority to modify provisions of section 16. In order to respond to the SJCSR points, subsection 16(4) is deleted and sections 18 and 19 are replaced with modifications that make clear that sections 18 and 19 of the Patent Rules apply both (1) to decisions pursuant to section 16 of the Patent Act to refuse to recognize a person as a patent agent and (2) to the removal of the name of a patent agent from the register of patent agents pursuant to subsection 16(3) of the Patent Rules.

(3) Establishment of the filing date

This amendment replaces three provisions in Parts III, IV, V of the Patent Rules with a new provision in Part I (Rules of General Application) as per a SJCSR recommendation. The amendment eliminates the presence of three different filing provisions in three different Parts of the Patent Rules (III, IV, V) and replaces said provisions with a general filing provision.

(4) Confidentiality period

For clarity of drafting, sections 92 and 146 of the Patent Rules are amended. The phrase “the confidentiality period” appears twice in these provisions. The insertion of the words “referred to in subsection 10(2) of the Act” after the first reference to “the confidentiality period” rather than the second reference clarifies the provisions.

(5) Payment of maintenance fees

Subsection 182(1) of the Patent Rules is amended in order to delete an incorrect reference to section 45 of the Patent Act. Subsection 182(3) of the Patent Rules is amended to replace the incorrect reference to section 45 of the Patent Act with the correct reference to section 46 of the Patent Act. This amendment does not change the fee structure.

CIPO amendments

(6) Small entity declaration within the Petition for Grant of a Patent (Form 3 of Schedule I)

Form 3 of Schedule I to the Patent Rules is amended. The amendment is necessary as one of the paragraphs refers to “small entity” as defined in section 2 of the Patent Rules prior to June 2007. The definition was changed in June 2007, and is now defined under subsection 3.01(3) of the Patent Rules, and no longer defined under section 2.

(7) Petition for Grant of a Patent (Form 3 of Schedule I)

Clarifying the instructions for Form 3 of Schedule I to the Patent Rules to reflect the changes outlined in proposed amendments 6 and 8 as well as to clarify that the contents of sections 3 to 7 of the instructions may be included in the petition or submitted in a separate document.

(8) Completion requirements

The Patent Rules are amended so that neither a Declaration of Entitlement nor the registration of any assignments is required to complete an application. An applicant who is not the inventor only needs to submit a statement (not proof of status) to the effect that the applicant is, in accordance with the Act and Rules, the legal representative of the inventor.

Benefits and costs

The amendments do not require the allocation of additional resources towards administering Canada’s patent system. The amendments are housekeeping in nature, aid legal certainty, assist applicants in obtaining patent rights and provide greater flexibility through the elimination of several administrative requirements and the clarification of some Patent Rules provisions. Clients will benefit from a more user-friendly, fair and flexible patent system.

Consultation

A consultation document was posted on CIPO’s Web site from November 27, 2008, to January 5, 2009, in order to solicit comments from stakeholders and members of the public. Comments were considered and, where applicable, integrated into the Regulatory Impact Analysis Statement published in the Canada Gazette, Part I on July 11, 2009, for a 30-day consultation period.

Written comments were received from four stakeholders, including the Intellectual Property Institute of Canada (IPIC) and the International Federation of Intellectual Property Attorneys (FICPI) and two patent agents. After a review and consideration of the comments and proposals, CIPO amended transitional Rule 28 to provide greater clarity in respect of divisional applications. In addition, to provide further clarity, CIPO amended Rule 28 and 30 (previously Rule 31 as published in the Canada Gazette, Part I) to include the actual date of the coming into force, which is October 1, 2010. CIPO has also adopted the stakeholder’s proposal with regards to the previously published Rule 30 by removing it.

Other comments and proposals relating to the establishment of filing date (s. 27.1(1)), and small entity declaration (s. 7 of Form 3) were not adopted. With respect to the establishment of filing date, CIPO takes the position that the proposed amendment is sufficiently clear in view of various provisions in the Act, Rules and international treaties. The editorial comments and proposals that dealt with the small entity declaration were also not adopted. Finally, in response to a stakeholder’s caution, CIPO wishes to make it clear that any assignments made before or after the filing date could subsequently be submitted for registration, on a voluntary basis.

Implementation, enforcement and service standards

The Patent Rules are enforced by the application of existing provisions in the Patent Act. Enforcement and compliance provisions therefore remain unchanged as a result of the regulatory amendments. Accordingly, there are no new compliance and enforcement provisions and no additional costs required to monitor and enforce these regulatory changes.

The amendments will come into force on October 1, 2010.

Contacts

For technical issues related to the Patent Rules, please contact

Scott Vasudev
Division Chief
Patent Administrative Policy, Classification and International Affairs Division
Canadian Intellectual Property Office
Industry Canada
50 Victoria Street
Place du Portage, Phase I
Gatineau, Quebec
K1A 0C9
Telephone: 819-997-3055
Fax: 819-994-1989

For all other matters related to the RIAS, please contact
Nancy P. Leigh
Chief
International and Regulatory Affairs Branch
Canadian Intellectual Property Office
Industry Canada
50 Victoria Street
Place du Portage, Phase II
Gatineau, Quebec
K1A 0C9
Telephone: 819-934-4257
Fax: 819-997-5052

Footnote a
S.C. 1993, c. 15, s. 29

Footnote b
R.S., c. P-4

Footnote c
R.S., c. 33 (3rd Supp.), s. 3

Footnote 1
SOR/96-423