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INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

Rules Respecting the Patent Act
JUS-96-460-01 (SOR/DORS)


28. (1) Subject to subsection (2), the Commissioner may advance an application for examination out of its routine order upon the request of any person who pays the fee set out in item 4 of Schedule II, where the Commissioner determines that failure to advance the application is likely to prejudice that person's rights.

(2) In respect of an application filed on or after October 1, 1989, subsection (1) only applies if the application is open to public inspection under section 10 of the Act and a request for examination has been made pursuant to subsection 35(1) of the Act.

29. (1) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application for a patent describing the same invention has been filed, in or for any country, on behalf of the applicant or on behalf of any other person claiming under an inventor named in the application being examined, the examiner may requisition from the applicant any of the following information and a copy of any related document:

(a) an identification of any prior art cited in respect of the applications;

(b) the application numbers, filing dates and, if granted, the patent numbers;

(c) particulars of conflict, opposition, re-examination or similar proceedings; and

(d) where a document is not in either English or French, a translation of the document, or a part of the document, into English or French.

(2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an invention disclosed in the application was, before the filing date of the application, published or the subject of a patent, the examiner may requisition the applicant to identify the first publication of or patent for that invention.

(3) Subsections (1) and (2) do not apply to any information or document that is not available or known to the applicant, provided that the applicant states the reasons why the information or document is not available or known.

30. (1) Where an examiner, after examining an application, has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.

(2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application does not comply with the Act or these Rules, the examiner shall inform the applicant of the application's defects and shall requisition the applicant to amend the application in order to comply or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

(3) Where an applicant has replied in good faith to a requisition referred to in subsection (2) within the time provided but the examiner has reasonable grounds to believe that the application still does not comply with the Act or these Rules in respect of one or more of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.

(4) Where an examiner rejects an application, the notice shall bear the notation "Final Action" or "D�cision finale", shall indicate the outstanding defects and shall requisition the applicant to amend the application in order to comply with the Act and these Rules or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

(5) Where in accordance with subsection 30(4) the applicant amends the application or provides arguments and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.

(6) Where the rejection is not withdrawn pursuant to subsection (5), the rejection shall be reviewed by the Commissioner and the applicant shall be given an opportunity to be heard.

(7) Where, after a notice is sent in accordance with subsection (1) or (5) but before a patent is issued, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules, the Commissioner shall notify the applicant, shall return the application to the examiner for further examination, and if the final fee has been paid shall refund it.

(8) After the applicant is sent a notice in accordance with subsection (7), sections 32 and 33 do not apply unless a further notice is sent to the applicant in accordance with subsection (1) or (5).

31. An application that has been rejected by an examiner shall not be amended after the expiry of the time for responding to the examiner's requisition, made pursuant to subsection 30(4), except

(a) where the rejection is withdrawn in accordance with subsection 30(5);

(b) where the Commissioner is satisfied after review that the rejection is not justified and the applicant has been so informed;

(c) where the Commissioner has informed the applicant that the amendment is necessary for compliance with the Act and these Rules; or

(d) by order of the Federal Court or the Supreme Court of Canada.

32. (1) Except as otherwise provided by the Act or these Rules, after the applicant is sent a notice pursuant to subsection 30(1) or (5), no amendment, other than an amendment to correct a clerical error that is obvious on the face of the application, may be made to the application unless the fee set out in item 5 of Schedule II is paid.

(2) Except as otherwise provided by the Act or these Rules, after the applicant is sent a notice pursuant to subsection 30(1) or (5), no amendment may be made to the application that would necessitate a further search by the examiner in respect of the application or that would make the application not comply with the Act or these Rules.

33. Except as otherwise provided by the Act or these Rules, no amendment may be made to an application after payment of the final fee referred to in subsection 30(1) or (5).

34. Amendments to an application shall be made by inserting new pages in place of the pages altered by the amendments and shall be accompanied by a statement explaining their nature and purpose.

35. Clerical errors in any document relating to an application, other than a specification, a drawing or a document effecting a transfer or a change of name, which are due to the fact that something other than what was obviously intended was written, may be corrected by the applicant.

Unity of Invention Index

36. For the purposes of section 36 of the Act or of the Act as it read immediately before October 1, 1989, an application does not claim more than one invention if the subject-matters defined by the claims are so linked as to form a single general inventive concept.

Transfers and Changes of Name Index

37. Where an applicant who files an application in Canada or who complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2) is not the inventor, the following must be registered in the Patent Office:

(a) evidence, by way of affidavit, statutory declaration or copies of documents effecting transfers or changes of name, that the applicant is a legal representative of the inventor; and

(b) copies of documents effecting transfers relevant to the applicant's entitlement to file the application, unless copies of those transfers are registered for the purposes of paragraph (a).

38. No transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the currently recognized owner to the new owner has been registered in the Patent Office in respect of that patent or application.

39. No change in the name of the owner of a patent or an application shall be recognized by the Commissioner unless evidence of the change in the name of the owner, by way of affidavit, statutory declaration or a copy of a document effecting the change, has been registered in the Patent Office in respect of that patent or application.

40. Registration of a transfer shall not of itself operate as a revocation of an appointment of a patent agent or of an appointment of a representative.

41. A patent shall not be granted to a transferee of an application unless the request for registration of the transfer is filed on or before the date on which the final fee is paid in accordance with subsection 30(1) or (5) or, if the final fee is refunded in accordance with subsection 30(7), on or before the date on which the final fee is paid again in accordance with subsection 30(1) or (5).

Registration of Documents Index

42. Subject to sections 49 and 50 of the Act, the Commissioner shall, upon request and on payment of the fee set out in item 21 of Schedule II, register in the Patent Office any document relating to a patent or an application.

43. An application for reissue pursuant to section 47 of the Act shall follow the form and the instructions for its completion set out in Form 1 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

44. A disclaimer pursuant to section 48 of the Act or of the Act as it read immediately before October 1, 1989 shall follow the form and the instructions for its completion set out in Form 2 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

45. Except when made by the patentee, a request pursuant to section 48.1 of the Act for a re-examination of any claim of a patent, and the prior art, shall be filed in duplicate.

Secret Applications and Patents Index

46. Where the Minister of National Defence gives a certificate in accordance with subsection 20(7) of the Act in relation to an application, all entries in any way concerning the application that may appear in any ordinary register maintained in the Patent Office are wholly obliterated, and no further entry concerning the application or any patent granted on the basis of the application shall be made in any such register until that Minister waives the benefits of that section with respect to such application or patent.

47. Where the Governor in Council orders under subsection 20(17) of the Act that an invention described in an application shall be treated for the purposes of section 20 of the Act as if it had been assigned or agreed to be assigned to the Minister of National Defence, the Commissioner shall, as soon as the Commissioner is informed of the order, notify the applicant by registered mail.

48. The Commissioner shall permit any public servant authorized in writing by the Minister of National Defence, or any officer of Her Majesty's Canadian Forces authorized in writing by the Minister of National Defence, to inspect any pending application that relates to any instrument or munition of war and to obtain a copy of any such application.

Abuse of Rights under Patents Index

49. (1) In this section, "application" means an application referred to in section 68 of the Act presented to the Commissioner under subsection 65(1) of the Act.

(2) Every application shall be accompanied by the fee set out in item 16 of Schedule II.

(3) For the purposes of subsection 69(1) of the Act, the prescribed time is the four-month period after

(a) the date on which the person or the patentee has been served with copies of the application and declarations referred to in subsection 68(1) of the Act; or

(b) where the person or the patentee has not been so served, the later of the date on which the application is advertised in the Canada Gazette and the date on which the application is advertised in the Canadian Patent Office Record.

PART II: PATENT COOPERATION TREATY Index

Definition

50. In this Part, "priority date" has the same meaning as in Article 2(xi) of the Patent Cooperation Treaty. (date de priorit�)

Application of Treaty Index

51. The provisions of the Patent Cooperation Treaty and the Regulations under the PCT shall apply in respect of

(a) an international application filed with the Commissioner;

(b) an international application in which Canada is designated in accordance with the Patent Cooperation Treaty; and

(c) an international application in which Canada is designated and elected in accordance with the Patent Cooperation Treaty.

Canada as Receiving Office Index

52. Where an international application is filed with the Commissioner and the applicant or, where there is more than one applicant, at least one of the applicants is a national or resident of Canada, the Commissioner shall act as a receiving Office as defined in Article 2(xv) of the Patent Cooperation Treaty.

53. An international application, in order to be filed with the Commissioner, shall be written in either English or French.

54. (1) Subject to subsection (2), correspondence addressed to the Commissioner in respect of an international application shall be considered to be received by the Commissioner on the day on which it is delivered to one of the following establishments, where the delivery is made during the business hours of that establishment:

(a) the Patent Office; or

(b) an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered.

(2) Where correspondence addressed to the Commissioner is delivered outside of business hours to an establishment referred to in paragraph (2)(a) or (b), it shall be considered to be received by the Commissioner on the next working day.

(3) Subject to subsection (4), correspondence transmitted by facsimile to the Commissioner in respect of an international application shall be considered to be received by the Commissioner on the day on which it is transmitted, where the facsimile is transmitted to the Commissioner before midnight, local time at the head office of the Patent Office.

(4) Where correspondence is transmitted by facsimile on a day that the Patent Office is closed for business, it shall be considered to be received by the Commissioner on the next working day.

55. (1) An applicant who files an international application with the Commissioner shall pay the transmittal fee referred to in Rule 14 of the Regulations under the PCT and set out in item 9 of Schedule II, within the one-month period after the date on which the international application is received by the Commissioner.

(2) Fees payable pursuant to Rules 15, 16 and 16bis of the Regulations under the PCT shall be paid in Canadian currency.

(3) Money received under Rules 15, 16 and 16bis of the Regulations under the PCT shall be deposited in the account entitled the Patent Cooperation Treaty Fund within the account entitled the Canadian Intellectual Property Office Revolving Fund and shall be paid out of that account for purposes in accordance with those Rules.

Canada as Designated or Elected Office Index

56. Where an international application in which Canada is designated is filed, the Commissioner shall act as the designated Office as defined in Article 2(xiii) of the Patent Cooperation Treaty.

57. Where an international application in which Canada is designated is filed and the applicant has elected Canada as a country in respect of which the international preliminary examination report referred to in Article 35 of the Patent Cooperation Treaty shall be established, the Commissioner shall act as an elected Office as defined in Article 2(xiv) of the Patent Cooperation Treaty.

National Phase in Canada Index

58. (1) An applicant who designates Canada, or who designates and elects Canada, in an international application shall, within the time prescribed by subsection (3),

(a) where the International Bureau of the World Intellectual Property Organization has not published the international application, provide the Commissioner with a copy of the international application;

(b) where the international application is not in English or French, provide the Commissioner with a translation of the international application into either English or French; and

(c) pay the basic national fee set out in item 10 of Schedule II.

(2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date shall, within the time prescribed by subsection (3), pay any fee set out in item 30 of Schedule II that would have been payable in accordance with section 99 or 154 had the international application been filed in Canada as a Canadian application on the international filing date.

(3) An applicant shall comply with the requirements of subsection (1) and, where applicable, subsection (2) not later than on the expiry of

(a) other than in the cases referred to in paragraph (b),

(i) the 20-month period after the priority date, or

(ii) where the applicant pays the additional fee for late payment set out in item 11 of Schedule II, the 32-month period after the priority date; or

(b) where an election of Canada has been made before the expiry of the nineteenth month after the priority date,

(i) the 30-month period after the priority date, or

(ii) where the applicant pays the additional fee for late payment set out in item 11 of Schedule II, the 42-month period after the priority date.

(4) Where the applicant provides a translation of the international application into either English or French in accordance with paragraph (1)(b) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful.

(5) Where the applicant who complies with the requirements of subsection (1) is not the applicant originally identified in the international application, the Commissioner shall requisition evidence that the applicant who complies with the requirements of that subsection is the legal representative of the originally identified applicant where the documents already in the Patent Office do not provide such evidence.

(6) For the purposes of subsection (2), "international filing date" means the date accorded to an international application by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty.

(7) For greater certainty, section 26 does not apply in respect of the times specified in subsection (3).

Application of Canadian Legislation Index

59. When an international application becomes a PCT national phase application, the application shall thereafter be deemed to be an application filed in Canada and the Act and these Rules shall thereafter apply in respect of that application.

60. For the purposes of section 11 of the Act, an international application in which Canada is designated is deemed to be pending in Canada only when it becomes a PCT national phase application.

61. The requirement in subsection 27(2) of the Act that an application contain a petition does not apply to PCT national phase applications.

62. (1) In respect of a PCT national phase application, where, on or before the expiry of the time specified in subsection (2), the application does not contain the information and documents listed below, the application is deemed to be abandoned for the purposes of subsection 73(2) of the Act:

(a) the name and address of the inventor;

(b) a sequence listing, where required by paragraph 111(a);

(c) a copy of a sequence listing in computer readable form complying with section 131, where required by paragraph 111(b);

(d) an appointment of a patent agent, where required by section 20;

(e) an appointment of an associate patent agent, where required by section 21; and

(f) an appointment of a representative, where required by section 29 of the Act.

(2) The time by which the information and documents referred to in subsection (1) must be submitted is the expiry of the latest of

(a) the 26-month period after the priority date;

(b) where the election of Canada has been made before the expiry of the nineteenth month after the priority date, the 36-month period after the priority date; and

(c) the six-month period after the applicant complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2).

(3) For greater certainty, section 26 does not apply in respect of the time specified in subsection (2).

63. An international application in which Canada is designated, or in which Canada is designated and elected, shall not be considered to be an application mentioned in paragraph 28.2(1)(c) of the Act or to be a co-pending application mentioned in paragraph 28.2(1)(d) of the Act unless it has become a PCT national phase application.

64. (1) Section 28 of the Act does not apply to a PCT national phase application.

(2) The filing date of a PCT national phase application shall be considered to be the date accorded by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty.

65. In respect of a PCT national phase application, the requirements of Rule 4.10 of the Regulations under the PCT may be substituted for the requirements of section 88 or 142.

66. Where the applicant complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2) on or after the date of the publication of the application in English or French by the International Bureau of the World Intellectual Property Organization in accordance with Article 21 of the Patent Cooperation Treaty, the application is deemed to be open to public inspection under section 10 of the Act on and after the date of that publication.

PART III: APPLICATIONS FILED ON OR AFTER OCTOBER 1, 1996 Index

Application

67. (1) This Part applies to applications filed 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) a divisional application is considered to be filed on the same date as the original application; and

(b) a reissued patent is considered to be issued on the basis of the original application.

Presentation of Documents Index

68. (1) Subject to subsection (2), documents filed in paper form in connection with patents and applications shall

(a) be on sheets of good quality white paper that are free of creases and folds and that are 21.6 cm x 27.9 cm or 21 cm x 29.7 cm (A4 format);

(b) be so presented as to permit direct reproduction by photography, electrostatic processes, photo offset, and microfilming, in any number of copies; and

(c) be free from interlineations, cancellations or corrections.

(2) Transfer documents, other documents concerning ownership, and certified copies of documents may be submitted on sheets of paper that are no larger than 21.6 cm x 35.6 cm.

69. (1) The minimum margins of pages containing the description, the claims and the abstract referred to in section 79 shall be as follows:

top 2 cm

left side 2.5 cm

right side 2 cm

bottom 2 cm

(2) The minimum margins of pages containing the drawings referred to in section 37 of the Act shall be as follows:

top 2.5 cm

left side 2.5 cm

right side 1.5 cm

bottom 1 cm

(3) Subject to subsections (4) and (5) and 125(2), the margins of the sheets referred to in subsections (1) and (2) must be completely blank.

(4) The top margin may contain in either corner an indication of the applicant's file reference.

(5) The lines of each page of the description and of the claims may be numbered in the left margin.

70. (1) With the exception of sequence listings, tables and chemical and mathematical formulae, all text matter in documents forming part of the description or the claims shall be at least 1 1/2 line spaced.

(2) All text matter shall be in characters the capital letters of which are not less than 0.21 cm high.

71. (1) The Commissioner shall refuse to take cognizance of any document submitted to the Commissioner that is not in the English or French language unless the applicant submits to the Commissioner a translation of the document into one of those languages.

(2) Where the applicant provides a translation of a document in accordance with subsection (1) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful.

(3) The text matter of the abstract, the description, the drawings and the claims, individually and all together, shall be wholly in English or wholly in French.

72. The petition, the abstract, the description, the drawings and the claims shall each commence on a new page.

73. (1) The pages of the description and the claims shall be numbered consecutively.

(2) The page numbers shall be centered at the top or bottom of the sheet, but shall not be placed in the margin.

74. (1) The petition, the abstract, the description and the claims shall not contain drawings.

(2) The abstract, the description and the claims may contain chemical or mathematical formulae or the like.

75. (1) Subject to subsection (2), each page of a document shall be used upright.

(2) Where it aids in presentation, drawings, tables and chemical or mathematical formulae may be presented sideways with the top of the drawings, tables or formulae at the left side of the sheet.

76. Any trade-mark mentioned in the application shall be identified as such.

77. Subject to section 78, 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.

Appointments of Representative Index

78. For the purposes of section 29 of the Act, an appointment of a representative in Canada shall be included in the petition in accordance with item 5 of Form 3 of Schedule I or in a separate document.

79. (1) An application shall contain an abstract that provides technical information and that cannot be taken into account for the purpose of interpreting the scope of protection sought or obtained.

(2) The abstract shall contain a concise summary of the matter contained in the application and, where applicable, the chemical formula that, among all the formulae included in the application, best characterizes the invention.

(3) The abstract shall specify the technical field to which the invention relates.

(4) The abstract shall be drafted in a way that allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention.

(5) The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art.

(6) The abstract shall not contain more than 150 words.

(7) Each main technical feature mentioned in the abstract and illustrated by a drawing in the application may be followed by a reference character placed between parentheses.

Continue to: Part III: Descriptions