EXTRA Vol. 151, No. 1

Canada Gazette

Part Ⅱ

OTTAWA, THURSDAY, SEPTEMBER 7, 2017

Registration

SOR/2017-167 September 1, 2017

PATENT ACT

Rules Amending the Patent Rules

P.C. 2017-1116 August 31, 2017

His Excellency the Governor General in Council, on the recommendation of the Minister of Industry, pursuant to subsection 12(1) (see footnote a) of the Patent Act (see footnote b), makes the annexed Rules Amending the Patent Rules.

Rules Amending the Patent Rules

Amendments

1 Section 78 of the Patent Rules (see footnote 1) and the heading before it are repealed.

2 (1) Subparagraph 94(2)(b)(ii) of the Rules is amended by striking out “and” at the end of clause (H), by adding “and” at the end of clause (G) and by repealing clause (I).

(2) Paragraph 94(3)(b) of the Rules is amended by striking out “and” at the end of subparagraph (v), by adding “and” at the end of subparagraph (iv) and by repealing subparagraph (vi).

3 Subsection 148(1) of the Rules is amended by striking out “and” at the end of paragraph (c), by adding “and” at the end of paragraph (b) and by repealing paragraph (d).

4 Schedule I to the Rules is amended by replacing the reference after the heading “Schedule I” with the following:

(Sections 43, 44 and 77)

5 Form 1 of Schedule I to the Rules is replaced by the following:

FORM 1

(Section 47 of the Patent Act)

Application for Reissue

1 The patentee of Patent No. _______, granted on ______ for an invention entitled _______, requests that a new patent be issued, in accordance with the accompanying amended specification and agrees to surrender the original patent effective on the issue of a new patent.

2 The name and complete address of the patentee is ___

_______________________________________.

3 The respects in which the patent is deemed defective or inoperative are ____________________________.

4 The error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, in the following manner: ____________________________

_______________________________________.

5 The knowledge of the new facts giving rise to the application were obtained by the patentee on or about _______ in the following manner: ________.

6 The patentee appoints _______, whose complete address is _______, as the patentee’s patent agent.

Instructions

In sections 2 and 6, names and addresses must be presented in the following order with a clearly visible separation between the various elements: family name (in capital letters), given name(s), initials, or firm name, street name and number, city, province or state, postal code, telephone number, fax number and country.

6 Form 3 of Schedule I to the Rules is replaced by the following:

FORM 3

(Subsection 27(2) of the Patent Act)

Petition for Grant of a Patent

1 The applicant, _______, whose complete address is _______, requests the grant of a patent for an invention, entitled _______, which is described and claimed in the accompanying specification.

2 This application is a division of application number _______, filed in Canada on __________________.

3 (1) The applicant is the sole inventor.

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

4 The applicant requests priority in respect of the application on the basis of the following previously regularly filed application:

Country of filing

Application number

Filing date

_________________

_________________

_________________

_________________

_________________

_________________

5 The applicant appoints _______, whose complete address is _______, as the applicant’s patent agent.

6 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.

7 The applicant requests that Figure No. _______ of the drawings accompany the abstract when it is open to public inspection under section 10 of the Patent Act or published.

........................... (signature)

Instructions

In section 1, subsection 3(2) and section 5, names and addresses must be presented in the following order with a clearly visible separation between the various elements: family name (in capital letters), given name(s), initials, or firm name, street name and number, city, province or state, postal code, telephone number, fax number and country.

Sections 2 and 7 should be deleted if they do not apply.

The contents of sections 3 to 6 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.

Coming into Force

7 These Rules come into force on the day on which section 36 of the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act, chapter 6 of the Statutes of Canada, 2017, comes into force, but if they are registered after that day, they come into force on the day on which they are registered.

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Rules.)

Issues

Section 29 of the Patent Act is repealed by the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act. Accordingly, provisions of the Patent Rules that refer to representatives appointed under that section of the Patent Act are being repealed.

Background

Section 126 of the Economic Action Plan 2014 Act, No. 2 repeals section 29 of the Patent Act. However, that provision is not in force and will not be brought into force at the present time. Amendments to the Patent Act made in the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act introduce a certificate of supplementary protection regime which would have required further consequential amendments to the Patent Act in order to address section 29, unless repeal of that section took place on or before the coming into force of the relevant provisions of that Act.

Objectives

The objective of the amendments is to remove references to representatives appointed under section 29 of the Patent Act, as that section is repealed with the coming into force of the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act.

Description

These amendments repeal the references to representatives required under section 29 of the Act in the Patent Rules, as follows:

  • Repeal section 78, which indicates a manner and timing of appointing a representative;
  • Repeal clause 94(2)(b)(ii)(I), which requires, for completion of a patent application, information regarding appointment of a representative, if required by section 29 of the Patent Act;
  • Repeal subparagraph 94(3)(b)(vi), which requires, for completion of the national phase of a patent application in accordance with the Patent Cooperation Treaty, information regarding appointment of a representative, if required by section 29 of the Patent Act;
  • Repeal paragraph 148(1)(d), which provides for the deemed abandonment of a patent application that was filed between October 1, 1989, and September 30, 1996, and made in accordance with the Patent Cooperation Treaty, if information regarding appointment of a representative, if required by section 29 of the Patent Act, is not included;
  • Replace Form 1 (Application for Reissue) and Form 3 (Petition for a Grant of Patent) to delete references to representatives required under section 29 of the Patent Act and to make corrections related to changes in section numbering.

“One-for-One” Rule

The “One-for-One” Rule does not apply to these Rules, as there is no expected change in administrative costs to business.

Small business lens

These Rules do not impose new administrative or compliance costs on small business. Therefore, the small business lens does not apply.

Consultation

The amendments were prepublished in the Canada Gazette, Part I, with a 15-day comment period. No submissions were received.

Rationale

This amendment to the Patent Rules is needed to remove all references to representatives under section 29 of the Patent Act and to make the Patent Rules clearer. Removing the references to a provision of the Act that is repealed will reduce confusion for applicants and patentees who must comply with the provisions of the Patent Act and the Patent Rules.

Contact

Rachel Mainville-Dale
Manager – Patent Policy
Patent Branch
Canadian Intellectual Property Office
Innovation Science and Economic Development Canada
50 Victoria Street
Gatineau, Quebec
K1A 0C9
Telephone: 819-635-6891
Fax: 819-994-1989
Email: rachel.mainville-dale@canada.ca