Patent Act (R.S.C., 1985, c. P-4)

Written Demands

Marginal note:Requirements

• 76.2 (1) Any written demand received by a person in Canada, that relates to an invention that is patented in Canada or elsewhere or that is protected by a certificate of supplementary protection in Canada or by analogous rights granted elsewhere, must comply with the prescribed requirements.

• Marginal note:Federal Court

  (2) Any person who receives a written demand that does not comply with the prescribed requirements, and any person who is aggrieved as a result of the receipt by another person of such a written demand, may bring a proceeding in the Federal Court.

• Marginal note:Relief

  (3) If the Federal Court is satisfied that the written demand does not comply with the prescribed requirements, it may grant any relief that it considers appropriate, including by way of recovery of damages, punitive damages, an injunction, a declaration or an award of costs.

• Marginal note:Liability — special case

  (4) If a corporation sends a written demand that does not comply with the prescribed requirements, is notified of those requirements and of the demand’s defects in respect of those requirements and does not, within a reasonable time after receiving the notice of those defects, remedy them, the corporation’s officers, directors, agents or mandataries are jointly and severally, or solidarily, liable with the corporation if they directed, authorized, assented to, acquiesced in or participated in the sending of the demand.

• Marginal note:Due diligence

  (5) A person is not to be found liable under subsection (4) if they establish that they exercised due diligence to ensure that the written demand complies with the prescribed requirements.

Marginal note:Regulations

76.3 The Governor in Council may make regulations for the purposes of section 76.2, including regulations

• (a) respecting what constitutes a written demand or an aggrievement;

• (b) respecting the requirements with which a written demand must comply;

• (c) respecting factors that the Federal Court may consider, must consider or is not permitted to consider in making an order under subsection 76.2(3); and

• (d) respecting the circumstances in which a defendant is not to be found liable in a proceeding brought under subsection 76.2(2).

Miscellaneous Matters

77 [Repealed, 1993, c. 15, s. 54]

Marginal note:Time period extended

• 78 (1) If a time period fixed under this Act, in respect of any business before the Patent Office, for doing anything ends on a prescribed day or a day that is designated by the Commissioner, that time period is extended to the next day that is not a prescribed day or a designated day.

• Marginal note:Power to designate day

  (2) The Commissioner may, on account of unforeseen circumstances and if the Commissioner is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Commissioner shall inform the public of that fact on the website of the Canadian Intellectual Property Office.

Transitional Provisions

Marginal note:Definition of coming-into-force date

• 78.1 (1) In sections 78.2, 78.21 and 78.5 to 78.56, coming-into-force date means the day on which section 121 of the Economic Action Plan 2014 Act, No. 2 comes into force.

• Marginal note:Definition of filing date

  (2) In sections 78.21, 78.22, 78.4, 78.5, 78.53 and 78.54, filing date means the date on which an application for a patent in Canada is filed, as determined in accordance with section 78.2.

Marginal note:Filing date

78.2 The filing date of an application for a patent is

• (a) with respect to an original application,

  • (i) if all of the following elements were received by the Commissioner before October 1, 1989, the date on which they were received or, if they were received on different dates, the latest of those different dates:

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

    • (B) a specification, including claims,

    • (C) any drawing referred to in the specification,

    • (D) an abstract of the part of the specification other than the claims,

    • (E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read on the day on which the fee was received,

  • (ii) if subparagraph (i) does not apply, one or more of the following elements were received by the Commissioner on or after October 1, 1989 and all of the following elements were received by the Commissioner before October 1, 1996, the date on which they were received or, if they were received on different dates, the latest of those different dates:

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

    • (B) a specification, including claims,

    • (C) any drawing referred to in the specification,

    • (D) an abstract of the part of the specification other than the claims,

    • (E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read on the day on which the fee was received,

  • (iii) if subparagraphs (i) and (ii) do not apply, one or more of the following elements were received by the Commissioner on or after October 1, 1996 and all of the following elements were received by the Commissioner before June 2, 2007, the date on which they were received or, if they were received on different dates, the latest of those different dates:

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

    • (B) the applicant’s name,

    • (C) the address of the applicant or of their patent agent,

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

    • (E) the fee set out in item 1 of Schedule II to the Patent Rules as that item read on the day on which the fee was received, and

  • (iv) if subparagraphs (i) to (iii) do not apply, one or more of the following elements were received by the Commissioner on or after June 2, 2007 and all of the following elements were received by the Commissioner before the coming-into-force date, the date on which they were received or, if they were received on different dates, the latest of those different dates:

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

    • (B) the applicant’s name,

    • (C) the address of the applicant or of their patent agent,

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

    • (E) either a small entity declaration, in accordance with section 3.01 of the Patent Rules as it read on the day on which the declaration was received, and the small entity fee set out in item 1 of Schedule II to those Rules as that item read on the day on which that fee was received or the standard fee set out in item 1 of that Schedule, as that item read on the day on which that standard fee was received; or

• (b) with respect to a divisional application, the filing date of the original application from which the divisional application results, determined in accordance with this section.

Marginal note:Applications — no filing date

78.21 An application for a patent that is filed before the coming-into-force date and that does not have a filing date on the coming-into-force date shall be deemed never to have been filed.

Marginal note:Applications — filing date before October 1, 1989

78.22 An application for a patent whose filing date is before October 1, 1989 shall be dealt with and disposed of in accordance with

• (a) the provisions of this Act as they read immediately before October 1, 1989, other than the definition legal representatives in section 2, subsections 4(2), 5(2) and 7(1), sections 8, 15 and 29, paragraph 31(2)(a) and sections 49 to 51 and 78; and

• (b) the definition legal representatives in section 2, subsections 4(2), 5(2) and 7(1), section 8.1, paragraph 31(2)(a) and sections 38.1, 49, 78 and 78.2.

Marginal note:Previous version of section 43 applies

• 78.3 (1) Where a conflict, as defined in section 43 as it read immediately before October 1, 1989, exists between an application for a patent in Canada filed before October 1, 1989 (the “earlier application”) and an application for a patent in Canada filed on or after that date (the “later application”) and

  • (a) the later application is filed by 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 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 describing the same invention,

  • (b) the later application is filed within twelve months after the filing of the previously regularly filed application,

  • (c) the applicant in the later application has made a request for priority in respect of that application on the basis of the previously regularly filed application, and

  • (d) the earlier application is filed after the filing of the previously regularly filed application,

  the applicant having the earlier date of invention shall be entitled to a patent and the applications shall be dealt with and disposed of in accordance with section 43, as it read immediately before October 1, 1989.

• Marginal note:Exception

  (2) Subsection (1) does not apply if

  • (a) the earlier application is filed by 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 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 describing the same invention;

  • (b) the earlier application is filed within twelve months after the filing of the previously regularly filed application mentioned in paragraph (a);

  • (c) the applicant in the earlier application has made a request for priority in respect of that application on the basis of the previously regularly filed application mentioned in paragraph (a); and

  • (d) the previously regularly filed application mentioned in paragraph (a) was filed before the filing of the previously regularly filed application mentioned in subsection (1).

Marginal note:Applications — filing date October 1, 1989 to before October 1, 1996

78.4 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is on or after October 1, 1989 but before October 1, 1996 shall be dealt with and disposed of in accordance with

• (a) the provisions of this Act, other than the definition filing date in section 2, subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6); and

• (b) subsection 27(2) as it read immediately before October 1, 1996.

Marginal note:Applications — filing date October 1, 1996 to before coming-into-force date

78.5 Subject to sections 78.51 and 78.52, an application for a patent whose filing date is on or after October 1, 1996 but before the coming-into-force date shall be dealt with and disposed of in accordance with the provisions of this Act, other than the definition filing date in section 2, subsection 27(7), sections 27.01, 28 and 28.01 and subsection 28.4(6).

Marginal note:Abandonment before coming-into-force date

78.51 If an application for a patent was deemed to be abandoned under section 73 as it read immediately before the coming-into-force date, that section 73 applies in respect of that abandonment.

Marginal note:Abandonment — requisition or notice before coming-into-force date

• 78.52 (1) If, on or after the coming-into-force date, an applicant fails to do any act described in paragraph 73(1)(a), (b), (e) or (f), as those paragraphs read immediately before that date, in respect of a requisition made or notice given, as the case may be, before that date, section 73 as it read immediately before that date applies in respect of any abandonment resulting from the failure.

• Marginal note:Abandonment — section 97 of the Patent Rules

  (2) If, on or after the coming-into-force date, an applicant fails to do any act described in section 97 of the Patent Rules, as that section read immediately before that date, in respect of a requisition of the Commissioner that was given before that date, section 73 as it read immediately before that date applies in respect of any abandonment resulting from the failure.

Marginal note:Patents — filing date before October 1, 1989

• 78.53 (1) Subject to subsection 78.55(2), any matter arising on or after the coming-into-force date, in respect of a patent granted on the basis of an application whose filing date is before October 1, 1989, shall be dealt with and disposed of in accordance with

  • (a) the provisions of this Act, other than the definitions claim date, filing date and request for priority in section 2, sections 10, 27 to 28.4, 34.1 to 36, 38.2 and 55, paragraphs 55.11(1)(a) and (b) and section 56; and

  • (b) sections 10 and 55 and subsections 61(1) and (3), as they read immediately before October 1, 1989.

• Marginal note:Special case

  (2) Section 56 of the Patent Act, as it read immediately before October 1, 1989, applies in respect of a purchase, construction or acquisition made before October 1, 1996 of an invention for which a patent is issued on the basis of an application filed before October 1, 1989.