Patent Act (R.S.C., 1985, c. P-4)

Marginal note: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 before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim 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.

Marginal note: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.

• Marginal note:Requirements for request

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

• Marginal note:Request deemed never filed

  (2.1) Except for the purposes of subsection 10(3), a request for priority is deemed never to have been made if the request is not made in accordance with the regulations or if the applicant does not submit the information, other than the number of each previously regularly filed application, required under subsection (2).

• Marginal note: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.

• Marginal note:Multiple previously regularly filed applications

  (4) If 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 or for the same country or in or for 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.

• Marginal note: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) on the filing date of one of the following applications, as the case may be, more than 12 months have elapsed since the filing date of the previously regularly filed application:

    • (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 of the application referred to in one of subparagraphs (a)(i) to (iv), as the case may be, 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.

• Marginal note:Filing date deemed to be within 12 months

  (6) Subject to the regulations, for the purposes of paragraph 28.1(1)(b) and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii), the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if

  • (a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application but within two months after the end of those 12 months; and

  • (b) the applicant, within the prescribed time,

    • (i) makes a request to the Commissioner for this subsection to apply,

    • (ii) states, in the request, that the failure to file the pending application or the co-pending application, as the case may be, within 12 months after the filing date of the previously regularly filed application was unintentional, and

    • (iii) complies with any prescribed requirements.

• Marginal note:Powers of the Federal Court

  (7) If subsection (6) applies, the Federal Court may, by order, declare that subsection never to have produced its effects if the Federal Court determines that the failure referred to in subparagraph (6)(b)(ii) was intentional.

29 [Repealed, 2017, c. 6, s. 36]

30 [Repealed, 1993, c. 15, s. 35]

Joint Applications

Marginal note: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.

• Marginal note:Powers of Commissioner

  (2) In any case where

  • (a) an applicant has agreed in writing to transfer 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.

• Marginal note: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.

• Marginal note: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.

• Marginal note: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.

• Marginal note:Appeal

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

Improvements

Marginal note: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.

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

Filing of Prior Art

Marginal note: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.

• Marginal note:Pertinency

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

Examination

Marginal note: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.

• Marginal note:Prescribed time

  (2) The request shall be made within the prescribed time and the prescribed fee shall be paid within that time.

• Marginal note:Late fee and notice

  (3) If the request is not made or the prescribed fee is not paid within the prescribed time,

  • (a) the prescribed late fee shall be paid, in addition to the prescribed fee; and

  • (b) the Commissioner shall send a notice to the applicant stating that the application will be deemed to be abandoned if the request is not made and the prescribed fee and late fee are not paid before the end of two months after the date of the notice.

• Marginal note:Request deemed made and prescribed fee deemed paid within prescribed time

  (4) If the request is made and the prescribed fee and late fee are paid before a notice is sent or, if a notice has been sent, the request is made and the prescribed fee and late fee are paid before the end of two months after the date of the notice, the request shall be deemed to have been made and the prescribed fee shall be deemed to have been paid within the prescribed time.

• Marginal note:Required examination

  (5) The Commissioner may by a notice sent to the applicant, require that the request be made and the prescribed fee be paid within the prescribed time. However, the Commissioner is not authorized to send the notice if the prescribed time would end after the prescribed time referred to in subsection (2).

• Marginal note:Non-application

  (6) If a notice is sent under subsection (5), subsections (2) to (4) do not apply.

Divisional Applications

Marginal note: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.

• Marginal note: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.

• Marginal note: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.

• Marginal note:Original application abandoned

  (3) If an original application mentioned in subsection (2) or (2.1) is deemed to be abandoned and is not reinstated, the time for filing a divisional application ends on the later of the day on which the original application is deemed to be abandoned and the end of the prescribed time referred to in subsection 73(3).

• Marginal note: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, except for the purposes of subsections 27(6) and (7), it shall have the same filing date as the original application.

Biological Materials

37 [Repealed, 2014, c. 39, s. 130]

38 [Repealed, 2014, c. 39, s. 130]

Marginal note: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.

• Marginal note: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).

Amendments to Specifications and Drawings

Marginal note:Amendments to specifications and drawings

• 38.2 (1) Subject to subsections (2) to (3.1) and the regulations, the specification and drawings contained in an application for a patent in Canada may be amended before the patent is issued.

• Marginal note:Restriction

  (2) The specification and drawings contained in an application, other than a divisional application, may not be amended to add matter that cannot reasonably be inferred from the specification or drawings contained in the application on its filing date.

• Marginal note:Language other than English or French

  (3) However, if all or part of the text matter of the specification or drawings contained in the application on its filing date is in a language other than English or French, the specification and drawings may not be amended to add matter not reasonably to be inferred from both

  • (a) the specification or drawings contained in the application on its filing date, and

  • (b) the specification or drawings contained in the application immediately after the text matter is replaced by an English or French translation, in accordance with the regulations.

• Marginal note:Divisional application

  (3.1) The specification and drawings contained in a divisional application may not be amended to add matter

  • (a) that may not be or could not have been added, under subsection (2) or (3) or this subsection, to the specification and drawings contained in the application for a patent from which the divisional application results; or

  • (b) that cannot reasonably be inferred from the specification or drawings contained in the divisional application on the date on which the Commissioner, in respect of that application, receives the prescribed documents and information or, if they are received on different dates, on the latest of those dates.

• Marginal note:Non-application of subsections (2) to (3.1)

  (4) Subsections (2) to (3.1) do not apply if it is admitted in the specification that the matter is prior art with respect to the application.

• Marginal note:Application subject to regulations

  (5) Subsections (2) to (3.1) apply subject to any regulations made under paragraph 12(1)(j.81).