INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

Patent Act

APPLICATION FOR PATENTS

Commissioner may grant patents

27. (1) The Commissioner shall grant a patent for an invention to the inventor
or the inventor's legal representative if an application for the patent in
Canada is filed in accordance with this Act and all other requirements for the
issuance of a patent under this Act are met.

Application requirements

(2) The prescribed application fee must be paid and the application must be
filed in accordance with the regulations by the inventor or the inventor's legal
representative and the application must contain a petition and a specification
of the invention.

Specification

(3) The specification of an invention must

(a) correctly and fully describe the invention and its operation or use as
contemplated by the inventor;

(b) set out clearly the various steps in a process, or the method of
constructing, making, compounding or using a machine, manufacture or composition
of matter, in such full, clear, concise and exact terms as to enable any person
skilled in the art or science to which it pertains, or with which it is most
closely connected, to make, construct, compound or use it;

(c) in the case of a machine, explain the principle of the machine and the best
mode in which the inventor has contemplated the application of that principle;
and

(d) in the case of a process, explain the necessary sequence, if any, of the
various steps, so as to distinguish the invention from other inventions.

Claims

(4) The specification must end with a claim or claims defining distinctly and in
explicit terms the subject-matter of the invention for which an exclusive
privilege or property is claimed.

Alternative definition of subject-matter

(5) For greater certainty, where a claim defines the subject-matter of an
invention in the alternative, each alternative is a separate claim for the
purposes of sections 2, 28.1 to 28.3 and 78.3.

When application to be completed

(6) Where an application does not completely meet the requirements of subsection
(2) on its filing date, the Commissioner shall, by notice to the applicant,
require the application to be completed on or before the date specified in the
notice.

Specified period

(7) The specified date must be at least three months after the date of the
notice and at least twelve months after the filing date of the application.

What may not be patented

(8) No patent shall be granted for any mere scientific principle or abstract
theorem.

R.S., 1985, c. P-4, s. 27; R.S., 1985, c. 33 (3rd Supp.), s. 8; 1993, c. 15, s.
31, c. 44, s. 192.

Maintenance fees

27.1 (1) An applicant for a patent shall, to maintain the application in effect,
pay to the Commissioner such fees, in respect of such periods, as may be
prescribed.

(2) and (3) [Repealed, 1993, c. 15, s. 32]

R.S., 1985, c. 33 (3rd Supp.), s. 9; 1993, c. 15, s. 32.

Filing date

28. (1) The filing date of an application for a patent in Canada is the date on
which the Commissioner receives the documents, information and fees prescribed
for the purposes of this section or, if they are received on different dates,
the last date.

Deemed date of receipt of fees

(2) The Commissioner may, for the purposes of this section, deem prescribed fees
to have been received on a date earlier than the date of their receipt if the
Commissioner considers it just to do so.

R.S., 1985, c. P-4, s. 28; R.S., 1985, c. 33 (3rd Supp.), s. 10; 1993, c. 15, s.
33.

Claim date

28.1 (1) The date of a claim in an application for a patent in Canada (the
"pending application") is the filing date of the application, unless

(a) the pending application is filed by

(i) a person who has, or whose agent, legal representative or predecessor in
title has, previously regularly filed in or for Canada an application for a
patent disclosing the subject-matter defined by the claim, or

(ii) a person who is entitled to protection under the terms of any treaty or
convention relating to patents to which Canada is a party and who has, or whose
agent, legal representative or predecessor in title has, previously regularly
filed in or for any other country that by treaty, convention or law affords
similar protection to citizens of Canada an application for a patent disclosing
the subject-matter defined by the claim;

(b) the filing date of the pending application is within twelve months after the
filing date of the previously regularly filed application; and

(c) the applicant has made a request for priority on the basis of the previously
regularly filed application.

Claims based on previously regularly filed applications

(2) In the circumstances described in paragraphs (1)(a) to (c), the claim date
is the filing date of the previously regularly filed application.

1993, c. 15, s. 33.

Subject-matter of claim must not be previously disclosed

28.2 (1) The subject-matter defined by a claim in an application for a patent in
Canada (the "pending application") must not have been disclosed

(a) more than one year before the filing date by the applicant, or by a person
who obtained knowledge, directly or indirectly, from the applicant, in such a
manner that the subject-matter became available to the public in Canada or
elsewhere;

(b) before the claim date by a person not mentioned in paragraph (a) in such a
manner that the subject-matter became available to the public in Canada or
elsewhere;

(c) in an application for a patent that is filed in Canada by a person other
than the applicant, and has a filing date that is before the claim date; or

(d) in an application (the "co-pending application") for a patent that is filed
in Canada by a person other than the applicant and has a filing date that is on
or after the claim date if

(i) the co-pending application is filed by

(A) a person who has, or whose agent, legal representative or predecessor in
title has, previously regularly filed in or for Canada an application for a
patent disclosing the subject-matter defined by the claim, or

(B) a person who is entitled to protection under the terms of any treaty or
convention relating to patents to which Canada is a party and who has, or whose
agent, legal representative or predecessor in title has, previously regularly
filed in or for any other country that by treaty, convention or law affords
similar protection to citizens of Canada an application for a patent disclosing
the subject-matter defined by the claim,

(ii) the filing date of the previously regularly filed application is before the
claim date of the pending application,

(iii) the filing date of the co-pending application is within twelve months
after the filing date of the previously regularly filed application, and

(iv) the applicant has, in respect of the co-pending application, made a request
for priority on the basis of the previously regularly filed application.

Withdrawal of application

(2) An application mentioned in paragraph (1)(c) or a co-pending application
mentioned in paragraph (1)(d) that is withdrawn before it is open to public
inspection shall, for the purposes of this section, be considered never to have
been filed.

1993, c. 15, s. 33.

Invention must not be obvious

28.3 The subject-matter defined by a claim in an application for a patent in
Canada must be subject-matter that would not have been obvious on the claim date
to a person skilled in the art or science to which it pertains, having regard to

(a) information disclosed more than one year before the filing date by the
applicant, or by a person who obtained knowledge, directly or indirectly, from
the applicant in such a manner that the information became available to the
public in Canada or elsewhere; and

(b) information disclosed before the claim date by a person not mentioned in
paragraph (a) in such a manner that the information became available to the
public in Canada or elsewhere.

1993, c. 15, s. 33.

Request for priority

28.4 (1) For the purposes of sections 28.1, 28.2 and 78.3, an applicant for a
patent in Canada may request priority in respect of the application on the basis
of one or more previously regularly filed applications.

Requirements governing request

(2) The request for priority must be made in accordance with the regulations and
the applicant must inform the Commissioner of the filing date, country of filing
and number of each previously regularly filed application on which the request
is based.

Withdrawal of request

(3) An applicant may, in accordance with the regulations, withdraw a request for
priority, either entirely or with respect to one or more previously regularly
filed applications.

Multiple previously regularly filed applications

(4) Where two or more applications have been previously regularly filed as
described in paragraph 28.1(1)(a), subparagraph 28.2(1)(d)(i) or paragraph
78.3(1)(a) or (2)(a), either in the same country or in different countries,

(a) paragraph 28.1(1)(b), subparagraph 28.2(1)(d)(iii) or paragraph 78.3(1)(b)
or (2)(b), as the case may be, shall be applied using the earliest filing date
of the previously regularly filed applications; and

(b) subsection 28.1(2), subparagraph 28.2(1)(d)(ii) or paragraph 78.3(1)(d) or
(2)(d), as the case may be, shall be applied using the earliest filing date of
the previously regularly filed applications on the basis of which a request for
priority is made.

Withdrawal, etc., of previously regularly filed applications

(5) A previously regularly filed application mentioned in section 28.1 or 28.2
or subsection 78.3(1) or (2) shall, for the purposes of that section or
subsection, be considered never to have been filed if

(a) it was filed more than twelve months before the filing date of

(i) the pending application, in the case of section 28.1,

(ii) the co-pending application, in the case of section 28.2,

(iii) the later application, in the case of subsection 78.3(1), or

(iv) the earlier application, in the case of subsection 78.3(2);

(b) before the filing date referred to in paragraph (a), another application

(i) is filed by the person who filed the previously regularly filed application
or by the agent, legal representative or predecessor in title of that person,

(ii) is filed in or for the country where the previously regularly filed
application was filed, and

(iii) discloses the subject-matter defined by the claim in the application
mentioned in paragraph (a); and

(c) on the filing date of the other application mentioned in paragraph (b) or,
if there is more than one such application, on the earliest of their filing
dates, the previously regularly filed application

(i) has been withdrawn, abandoned or refused without having been opened to
public inspection and without leaving any rights outstanding, and

(ii) has not served as a basis for a request for priority in any country,
including Canada.

1993, c. 15, s. 33.

Non-resident applicants

29. (1) An applicant for a patent who does not appear to reside or carry on
business at a specified address in Canada shall, on the filing date of the
application, appoint as a representative a person or firm residing or carrying
on business at a specified address in Canada.

Nominee deemed representative

(2) Subject to this section, a nominee of an applicant shall be deemed to be the
representative for all purposes of this Act, including the service of any
proceedings taken under it, of the applicant and of any patentee of a patent
issued on his application who does not appear to reside or carry on business at
a specified address in Canada, and shall be recorded as such by the
Commissioner.

New representatives

(3) An applicant for a patent or a patentee

(a) may, by giving notice to the Commissioner, appoint a new representative in
place of the latest recorded representative, or may give notice to the
Commissioner of a change in the address of the latest recorded representative;
and

(b) shall so appoint a new representative or supply a new and correct address of
the latest recorded representative on receipt of a request of the Commissioner
stating that the latest recorded representative has died or that a letter
addressed to the latest recorded representative at the latest recorded address
and sent by ordinary mail has been returned undelivered.

Where no new appointment is made or no new address supplied

(4) Where the Commissioner makes a request under paragraph (3)(b) and no new
appointment is made or no new and correct address is supplied by the applicant
or patentee within three months, the Federal Court or the Commissioner may
dispose of any proceedings under this Act without requiring service on the
applicant or patentee of any process in the proceedings.

When fee payable

(5) No fee is payable on the appointment of a new representative or the supply
of a new and correct address, unless that appointment or supply follows a
request by the Commissioner under subsection (3), in which case the prescribed
fee is payable.

R.S., 1985, c. P-4, s. 29; 1993, c. 15, s. 34.

30. [Repealed, 1993, c. 15, s. 35]

JOINT APPLICATIONS

Effect of refusal of a joint inventor to proceed

31. (1) Where an invention is made by two or more inventors and one of them
refuses to make application for a patent or his whereabouts cannot be
ascertained after diligent inquiry, the other inventors or their legal
representatives may make application, and a patent may be granted in the name of
the inventors who make the application, on satisfying the Commissioner that the
joint inventor has refused to make application or that his whereabouts cannot be
ascertained after diligent inquiry.

Powers of Commissioner

(2) In any case where

(a) an applicant has agreed in writing to assign a patent, when granted, to
another person or to a joint applicant and refuses to proceed with the
application, or

(b) disputes arise between joint applicants with respect to proceeding with an
application,

the Commissioner, on proof of the agreement to his satisfaction, or if satisfied
that one or more of the joint applicants ought to be allowed to proceed alone,
may allow that other person or joint applicant to proceed with the application,
and may grant a patent to him in such manner that all persons interested are
entitled to be heard before the Commissioner after such notice as he may deem
requisite and sufficient.

Procedure when one joint applicant retires

(3) Where an application is filed by joint applicants and it subsequently
appears that one or more of them has had no part in the invention, the
prosecution of the application may be carried on by the remaining applicant or
applicants on satisfying the Commissioner by affidavit that the remaining
applicant or applicants is or are the sole inventor or inventors.

Joining applicants

(4) Where an application is filed by one or more applicants and it subsequently
appears that one or more further applicants should have been joined, the further
applicant or applicants may be joined on satisfying the Commissioner that he or
they should be so joined, and that the omission of the further applicant or
applicants had been by inadvertence or mistake and was not for the purpose of
delay.

To whom granted

(5) Subject to this section, in cases of joint applications, the patent shall be
granted in the names of all the applicants.

Appeal

(6) An appeal lies to the Federal Court from the decision of the Commissioner
under this section.

R.S., c. P-4, s. 33; R.S., c. 10(2nd Supp.), s. 64.

IMPROVEMENTS

Improvements

32. Any person who has invented any improvement on any patented invention may
obtain a patent for the improvement, but he does not thereby obtain the right of
making, vending or using the original invention, nor does the patent for the
original invention confer the right of making, vending or using the patented
improvement.

R.S., c. P-4, s. 34.

SPECIFICATIONS AND CLAIMS

33. and 34. [Repealed, 1993, c. 15, s. 36]

FILING OF PRIOR ART

Filing

34.1 (1) Any person may file with the Commissioner prior art, consisting of
patents, applications for patents open to public inspection and printed
publications, that the person believes has a bearing on the patentability of any
claim in an application for a patent.

Pertinency

(2) A person who files prior art with the Commissioner under subsection (1)
shall explain the pertinency of the prior art.

R.S., 1985, c. 33 (3rd Supp.), s. 11; 1993, c. 15, s. 37.

EXAMINATION

Request for examination

35. (1) The Commissioner shall, on the request of any person made in such manner
as may be prescribed and on payment of a prescribed fee, cause an application
for a patent to be examined by competent examiners to be employed in the Patent
Office for that purpose.

Required examination

(2) The Commissioner may by notice require an applicant for a patent to make a
request for examination pursuant to subsection (1) or to pay the prescribed fee
within the time specified in the notice, but the specified time may not exceed
the time provided by the regulations for making the request and paying the fee.

(3) and (4) [Repealed, 1993, c. 15, s. 38]

R.S., 1985, c. P-4, s. 35; R.S., 1985, c. 33 (3rd Supp.), s. 12; 1993, c. 15, s.
38.

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