INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

Patent Act

DIVISIONAL APPLICATIONS

Patent for one invention only

36. (1) A patent shall be granted for one invention only but in an action or
other proceeding a patent shall not be deemed to be invalid by reason only that
it has been granted for more than one invention.

Limitation of claims by applicant

(2) Where an application (the "original application") describes more than one
invention, the applicant may limit the claims to one invention only, and any
other invention disclosed may be made the subject of a divisional application,
if the divisional application is filed before the issue of a patent on the
original application.

Limitation of claims on direction of Commissioner

(2.1) Where an application (the "original application") describes and claims
more than one invention, the applicant shall, on the direction of the
Commissioner, limit the claims to one invention only, and any other invention
disclosed may be made the subject of a divisional application, if the divisional
application is filed before the issue of a patent on the original application.

Original application abandoned

(3) If an original application mentioned in subsection (2) or (2.1) becomes
abandoned, the time for filing a divisional application terminates with the
expiration of the time for reinstating the original application under this Act.

Separate applications

(4) A divisional application shall be deemed to be a separate and distinct
application under this Act, to which its provisions apply as fully as may be,
and separate fees shall be paid on the divisional application and it shall have
the same filing date as the original application.

R.S., 1985, c. P-4, s. 36; 1993, c. 15, s. 39.

DRAWINGS, MODELS AND BIOLOGICAL MATERIALS

Drawings

37. (1) In the case of a machine, or in any other case in which an invention
admits of illustration by means of drawings, the applicant shall, as part of the
application, furnish drawings of the invention that clearly show all parts of
the invention.

Particulars

(2) Each drawing must include references corresponding with the specification,
and the Commissioner may require further drawings or dispense with any of them
as the Commissioner sees fit.

R.S., 1985, c. P-4, s. 37; 1993, c. 15, s. 40.

Models and specimens

38. (1) In all cases in which an invention admits of representation by model,
the applicant, if required by the Commissioner, shall furnish a model of
convenient size exhibiting its several parts in due proportion, and when an
invention is a composition of matter, the applicant, if required by the
Commissioner, shall furnish specimens of the ingredients, and of the
composition, sufficient in quantity for the purpose of experiment.

Dangerous substances

(2) If the ingredients or composition referred to in subsection (1) are of an
explosive or dangerous character, they shall be furnished with such precautions
as are specified in the requisition therefor.

R.S., 1985, c. P-4, s. 38; R.S., 1985, c. 33 (3rd Supp.), s. 13.

Biological material may be deposited

38.1 (1) Where a specification refers to a deposit of biological material and
the deposit is in accordance with the regulations, the deposit shall be
considered part of the specification and, to the extent that subsection 27(3)
cannot otherwise reasonably be complied with, the deposit shall be taken into
consideration in determining whether the specification complies with that
subsection.

Deposit not required

(2) For greater certainty, a reference to a deposit of biological material in a
specification does not create a presumption that the deposit is required for the
purpose of complying with subsection 27(3).

1993, c. 15, s. 41.

AMENDMENTS TO SPECIFICATIONS AND DRAWINGS

Amendments to specifications and drawings

38.2 (1) Subject to subsections (2) and (3) and the regulations, the
specification and any drawings furnished as part of an application for a patent
in Canada may be amended before the patent is issued.

Restriction on amendments to specifications

(2) The specification may not be amended to describe matter not reasonably to be
inferred from the specification or drawings as originally filed, except in so
far as it is admitted in the specification that the matter is prior art with
respect to the application.

Restriction on amendments to drawings

(3) Drawings may not be amended to add matter not reasonably to be inferred from
the specification or drawings as originally filed, except in so far as it is
admitted in the specification that the matter is prior art with respect to the
application.

1993, c. 15, s. 41.

39. to 39.26 [Repealed, 1993, c. 2, s. 3]

REFUSAL OF PATENTS

Refusal by Commissioner

40. Whenever the Commissioner is satisfied that an applicant is not by law
entitled to be granted a patent, he shall refuse the application and, by
registered letter addressed to the applicant or his registered agent, notify the
applicant of the refusal and of the ground or reason therefor.

R.S., c. P-4, s. 42.

Appeal to Federal Court

41. Every person who has failed to obtain a patent by reason of a refusal of the
Commissioner to grant it may, at any time within six months after notice as
provided for in section 40 has been mailed, appeal from the decision of the
Commissioner to the Federal Court and that Court has exclusive jurisdiction to
hear and determine the appeal.

R.S., 1985, c. P-4, s. 41; R.S., 1985, c. 33 (3rd Supp.), s. 16.

GRANT OF PATENTS

Contents of patent

42. Every patent granted under this Act shall contain the title or name of the
invention, with a reference to the specification, and shall, subject to this
Act, grant to the patentee and the patentee's legal representatives for the term
of the patent, from the granting of the patent, the exclusive right, privilege
and liberty of making, constructing and using the invention and selling it to
others to be used, subject to adjudication in respect thereof before any court
of competent jurisdiction.

R.S., 1985, c. P-4, s. 42; R.S., 1985, c. 33 (3rd Supp.), s. 16.

FORM AND TERM OF PATENTS

Form and duration of patents

43. (1) Subject to section 46, every patent granted under this Act shall be
issued under the seal of the Patent Office, and shall bear on its face the
filing date of the application for the patent, the date on which the application
became open to public inspection under section 10, the date on which the patent
is granted and issued and any prescribed information.

Validity of patent

(2) After the patent is issued, it shall, in the absence of any evidence to the
contrary, be valid and avail the patentee and the legal representatives of the
patentee for the term mentioned in section 44 or 45, whichever is applicable.

R.S., 1985, c. P-4, s. 43; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s.
42.

Term of patents based on applications filed on or after October 1, 1989

44. Subject to section 46, where an application for a patent is filed under this
Act on or after October 1, 1989, the term limited for the duration of the patent
is twenty years from the filing date.

R.S., 1985, c. P-4, s. 44; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s.
42.

Term of patents based on applications filed before October 1, 1989

45. Subject to section 46, the term limited for the duration of every patent
issued under this Act on the basis of an application filed before October 1,
1989 is seventeen years from the date on which the patent is issued.

R.S., 1985, c. P-4, s. 45; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s.
42.

Maintenance fees

46. (1) A patentee of a patent issued by the Patent Office under this Act after
the coming into force of this section shall, to maintain the rights accorded by
the patent, pay to the Commissioner such fees, in respect of such periods, as
may be prescribed.

Lapse of term if maintenance fees not paid

(2) Where the fees payable under subsection (1) are not paid within the time
provided by the regulations, the term limited for the duration of the patent
shall be deemed to have expired at the end of that time.

R.S., 1985, c. P-4, s. 46; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993, c. 15, s.
43.

REISSUE OF PATENTS

Issue of new or amended patents

47. (1) Whenever any patent is deemed defective or inoperative by reason of
insufficient description and specification, or by reason of the patentee's
claiming more or less than he had a right to claim as new, but at the same time
it appears that the error arose from inadvertence, accident or mistake, without
any fraudulent or deceptive intention, the Commissioner may, on the surrender of
the patent within four years from its date and the payment of a further
prescribed fee, cause a new patent, in accordance with an amended description
and specification made by the patentee, to be issued to him for the same
invention for the then unexpired term for which the original patent was granted.

Effect of new patent

(2) The surrender referred to in subsection (1) takes effect only on the issue
of the new patent, and the new patent and the amended description and
specification have the same effect in law, on the trial of any action thereafter
commenced for any cause subsequently accruing, as if the amended description and
specification had been originally filed in their corrected form before the issue
of the original patent, but, in so far as the claims of the original and
reissued patents are identical, the surrender does not affect any action pending
at the time of reissue or abate any cause of action then existing, and the
reissued patent to the extent that its claims are identical with the original
patent constitutes a continuation thereof and has effect continuously from the
date of the original patent.

Separate patents for separate parts

(3) The Commissioner may entertain separate applications and cause patents to be
issued for distinct and separate parts of the invention patented, on payment of
the fee for a reissue for each of the reissued patents.

R.S., c. P-4, s. 50.

DISCLAIMERS

Patentee may disclaim anything included in patent by mistake

48. (1) Whenever, by any mistake, accident or inadvertence, and without any
wilful intent to defraud or mislead the public, a patentee has

(a) made a specification too broad, claiming more than that of which the
patentee or the person through whom the patentee claims was the inventor, or

(b) in the specification, claimed that the patentee or the person through whom
the patentee claims was the inventor of any material or substantial part of the
invention patented of which the patentee was not the inventor, and to which the
patentee had no lawful right,

the patentee may, on payment of a prescribed fee, make a disclaimer of such
parts as the patentee does not claim to hold by virtue of the patent or the
assignment thereof.

Form and attestation of disclaimer

(2) A disclaimer shall be filed in the prescribed form and manner.

(3) [Repealed, 1993, c. 15, s. 44]

Pending suits not affected

(4) No disclaimer affects any action pending at the time when it is made, unless
there is unreasonable neglect or delay in making it.

Death of patentee

(5) In case of the death of an original patentee or of his having assigned the
patent, a like right to disclaim vests in his legal representatives, any of whom
may exercise it.

Effect of disclaimer

(6) A patent shall, after disclaimer as provided in this section, be deemed to
be valid for such material and substantial part of the invention, definitely
distinguished from other parts thereof claimed without right, as is not
disclaimed and is truly the invention of the disclaimant, and the disclaimant is
entitled to maintain an action or suit in respect of that part accordingly.

R.S., 1985, c. P-4, s. 48; R.S., 1985, c. 33 (3rd Supp.), s. 17; 1993, c. 15, s.
44.

RE-EXAMINATION

Request for re-examination

48.1 (1) Any person may request a re-examination of any claim of a patent by
filing with the Commissioner prior art, consisting of patents, applications for
patents open to public inspection and printed publications, and by paying a
prescribed fee.

Pertinency of request

(2) A request for re-examination under subsection (1) shall set forth the
pertinency of the prior art and the manner of applying the prior art to the
claim for which re-examination is requested.

Notice to patentee

(3) Forthwith after receipt of a request for re-examination under subsection
(1), the Commissioner shall send a copy of the request to the patentee of the
patent in respect of which the request is made, unless the patentee is the
person who made the request.

R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 45.

Establishment of re-examination board

48.2 (1) Forthwith after receipt of a request for re-examination under
subsection 48.1(1), the Commissioner shall establish a re-examination board
consisting of not fewer than three persons, at least two of whom shall be
employees of the Patent Office, to which the request  shall be referred for
determination.

Determination to be made by board

(2) A re-examination board shall, within three months following its
establishment, determine whether a substantial new question of patentability
affecting any claim of the patent concerned is raised by the request for
re-examination.

Notice

(3) Where a re-examination board has determined that a request for
re-examination does not raise a substantial new question affecting the
patentability of a claim of the patent concerned, the board shall so notify the
person who filed the request and the decision of the board is final for all
purposes and is not subject to appeal or to review by any court.

Idem

(4) Where a re-examination board has determined that a request for
re-examination raises a substantial new question affecting the patentability of
a claim of the patent concerned, the board shall notify the patentee of the
determination and the reasons therefor.

Filing of reply

(5) A patentee who receives notice under subsection (4) may, within three months
of the date of the notice, submit to the re-examination board a reply to the
notice setting out submissions on the question of the patentability of the claim
of the patent in respect of which the notice was given.

R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 46(F).

Re-examination proceeding

48.3 (1) On receipt of a reply under subsection 48.2(5) or in the absence of any
reply within three months after notice is given under subsection 48.2(4), a
re-examination board shall forthwith cause a re-examination to be made of the
claim of the patent in respect of which the request for re-examination was
submitted.

Patentee may submit amendments

(2) In any re-examination proceeding under subsection (1), the patentee may
propose any amendment to the patent or any new claims in relation thereto but no
proposed amendment or new claim enlarging the scope of a claim of the patent
shall be permitted.

Time limitation

(3) A re-examination proceeding in respect of a claim of a patent shall be
completed within twelve months of the commencement of the proceedings under
subsection (1).

R.S., 1985, c. 33 (3rd Supp.), s. 18.

Certificate of board

48.4 (1) On conclusion of a re-examination proceeding in respect of a claim of a
patent, the re-examination board shall issue a certificate

(a) cancelling any claim of the patent determined to be unpatentable;

(b) confirming any claim of the patent determined to be patentable; or

(c) incorporating in the patent any proposed amended or new claim determined to
be patentable.

Certificate attached to patent

(2) A certificate issued in respect of a patent under subsection (1) shall be
attached to the patent and made part thereof by reference, and a copy of the
certificate shall be sent by registered mail to the patentee.

Effect of certificate

(3) For the purposes of this Act, where a certificate issued in respect of a
patent under subsection (1)

(a) cancels any claim but not all claims of the patent, the patent shall be
deemed to have been issued, from the date of grant, in the corrected form;

(b) cancels all claims of the patent, the patent shall be deemed never to have
been issued; or

(c) amends any claim of the patent or incorporates a new claim in the patent,
the amended claim or new claim shall be effective, from the date of the
certificate, for the unexpired term of the patent.

Appeals

(4) Subsection (3) does not apply until the time for taking an appeal has
expired under subsection 48.5(2) and, if an appeal is taken, subsection (3)
applies only to the extent provided in the final judgment on the appeal.

R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 47.

Appeals

48.5 (1) Any decision of a re-examination board set out in a certificate issued
under subsection 48.4(1) is subject to appeal by the patentee to the Federal
Court.

Limitation

(2) No appeal may be taken under subsection (1) after three months from the date
a copy of the certificate is sent by registered mail to the patentee.

R.S., 1985, c. 33 (3rd Supp.), s. 18.

Continue to: ASSIGNMENTS AND DEVOLUTIONS