Patent Rules (SOR/2019-251)
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Regulations are current to 2025-10-14 and last amended on 2025-01-01. Previous Versions
PART 1Rules of General Application (continued)
Additional Term (continued)
Certificate of Additional Term
Marginal note:Information on certificate
117.04 (1) A certificate issued under subsection 46.1(7), 46.3(5) or 46.4(3) of the Act must indicate the filing date of the application on the basis of which the patent was granted, the title of the invention and the day on which the certificate is issued.
Marginal note:Correction of certificate
(2) The Commissioner is authorized to correct any typographical error in a certificate issued under subsection 46.1(7), 46.3(5) or 46.4(3) of the Act.
Marginal note:Availability of certificate
(3) The Commissioner must make available on the website of the Canadian Intellectual Property Office a copy of any certificate of additional term or amended certificate of additional term issued by the Commissioner.
Maintaining in Effect Rights Accorded by Patent During Additional Term
Marginal note:Prescribed fee
117.05 (1) Subject to subsection (3), for the purposes of subsection 46.2(1) of the Act, the prescribed fee to maintain the rights accorded by a patent in effect is, for an anniversary date set out in item 43 of Schedule 2 that falls on or after the day on which the patent was issued,
(a) the small entity fee set out in paragraph 43(a) of that Schedule, if the small entity status condition set out in subsection 112(2) is met and a small entity declaration is filed in accordance with subsection 112(3) in respect of the patent or in accordance with subsection 44(3) in respect of the application on the basis of which the patent was granted
(i) on or before that anniversary date, or
(ii) if a notice is required to be sent under paragraph 46.2(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of the six-month period that follows that anniversary date and the end of the two-month period that follows the date of the notice; and
(b) in any other case, the standard fee set out in paragraph 43(b) of that Schedule.
Marginal note:Non-application of subsection 3(1)
(2) Subsection 3(1) does not apply in respect of the periods of time referred to in subsection (1).
Marginal note:Exception
(3) For the purposes of subsection 46.2(1) of the Act, if a patent is granted on the basis of an application for a patent after the 19th anniversary of the filing date of the application, and a fee in respect of the application was payable under subsection 27.1(1) of the Act for an anniversary of the filing date of the application that fell within the 12-month period preceding the day on which the patent was issued but the fee was not paid before that day, the prescribed fee to maintain in effect the rights accorded by the patent is, for the date of the first anniversary of the filing date of the application that falls on or after the day on which the patent was issued, the total of
(a) the unpaid fee,
(b) the late fee set out in item 44 of Schedule 2, and
(c) the fee prescribed by paragraph (1)(a) or (b) for that first anniversary, as applicable.
Marginal note:Prescribed dates
117.06 For the purposes of subsection 46.2(1) of the Act, the prescribed dates are
(a) for a fee referred to in subsection 117.05(1) of these Rules, the anniversary date for which it is paid; and
(b) for a fee referred to in subsection 117.05(3) of these Rules, the date of the first anniversary of the filing date of the application that falls on or after the day on which the patent was issued.
Marginal note:Clarification
117.07 For greater certainty, for the purposes of sections 117.05 and 117.06, a reissued patent is considered to be granted on the basis of the original application and is considered to be issued on the day on which it is reissued.
Marginal note:Late fee
117.08 For the purposes of subsection 46.2(2) of the Act, the prescribed late fee is the fee set out in item 44 of Schedule 2.
Marginal note:Time — paragraph 46.2(5)(a) of Act
117.09 (1) For the purposes of paragraph 46.2(5)(a) of the Act, the prescribed time is the period of 12 months that follows the end of the six-month period referred to in subsection 46.2(4) of the Act.
Marginal note:Non-application of subsection 3(1)
(2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).
Marginal note:Additional prescribed fee
117.1 For the purpose of subparagraph 46.2(5)(a)(iii) of the Act, the additional prescribed fee is the fee set out in item 45 of Schedule 2.
Reconsideration
Marginal note:Application for reconsideration
117.11 (1) An application for reconsideration under subsection 46.3(2) of the Act must be made in writing and must
(a) include the patent number of the patent that is the subject of the application;
(b) provide information that demonstrates that the additional term granted by the Commissioner is longer than is authorized by section 46.1 of the Act; and
(c) provide an opinion regarding the determination of the duration of the additional term that should have been made by the Commissioner.
Marginal note:Prescribed fee
(2) For the purposes of subsection 46.3(2) of the Act, the prescribed fee for an application for reconsideration is
(a) the small entity fee set out in paragraph 42(a) of Schedule 2 if
(i) the person applying for reconsideration is the patentee, the small entity status condition set out in subsection 112(2) is met and a small entity declaration is filed in accordance with subsection 112(3) in respect of the patent or in accordance with subsection 44(3) in respect of the application on the basis of which the patent was granted, or
(ii) the person applying for reconsideration is not the patentee, the small entity status condition set out in subsection (4) is met and a small entity declaration is filed in accordance with subsection (5) in respect of the application for reconsideration; and
(b) in any other case, the standard fee set out in paragraph 42(b) of Schedule 2.
Marginal note:Clarification
(3) For greater certainty, for the purposes of subparagraph (2)(a)(i), a reissued patent is considered to be granted on the basis of the original application.
Marginal note:Small entity status condition
(4) The small entity status condition is that the person applying for reconsideration is, on the day on which the application for reconsideration is made,
(a) an entity that has fewer than 100 employees, other than an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 employees or more; or
(b) a university.
Marginal note:Small entity declaration
(5) A small entity declaration must
(a) be filed with the Commissioner;
(b) identify the application for reconsideration to which it relates;
(c) contain a statement declaring that the person applying for reconsideration believes that the small entity status condition set out in subsection (4) is met in respect of the application;
(d) be signed by
(i) the person applying for reconsideration,
(ii) if a document authorizing a foreign practitioner to sign a small entity declaration is signed by the person applying for reconsideration and submitted to the Commissioner at the same time as the declaration, that foreign practitioner, or
(iii) a patent agent who is appointed in respect of the application; and
(e) indicate the name of the person applying for reconsideration and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.
Marginal note:Notice of preliminary determination
(6) After the Commissioner initiates a reconsideration or receives an application for reconsideration, the Commissioner must send to the patentee and, if applicable, the person applying for reconsideration a notice indicating the Commissioner’s preliminary determination of
(a) whether the duration of the additional term is longer than is authorized under subsection 46.1(4) of the Act; and
(b) if the duration is longer than is authorized under that subsection, the shortened duration of the additional term.
Marginal note:Observations
(7) The patentee and the person applying for reconsideration, if applicable, may make observations regarding the preliminary determination within two months after the date of the notice.
Marginal note:Certificate or dismissal
(8) After the end of the period for making observations, the Commissioner must either issue an amended certificate of additional term or dismiss the application. The Commissioner must provide to the patentee and, if applicable, the person applying for reconsideration reasons for the shortened duration of the additional term indicated in the amended certificate or for dismissing the application, as the case may be.
Reissue
Marginal note:Form
118 An application for the reissue of a patent under section 47 of the Act must be filed in Form 1 of Schedule 1.
Marginal note:Prescribed fee
119 For the purpose of subsection 47(1) of the Act, the prescribed fee is the fee set out in item 28 of Schedule 2.
Disclaimer of Any Part of a Patent
Marginal note:Form
120 A disclaimer under section 48 of the Act must be filed in Form 2 of Schedule 1.
Marginal note:Prescribed fee
121 For the purpose of subsection 48(1) of the Act, the prescribed fee is the fee set out in item 29 of Schedule 2.
Re-examination
Marginal note:Prescribed fee
122 (1) For the purposes of subsection 48.1(1) of the Act, the prescribed fee for a request for re-examination of one or more claims of a patent is
(a) the small entity fee set out in item 30 of Schedule 2 if
(i) the person requesting re-examination is the patentee, the small entity status condition set out in subsection 112(2) is met and a small entity declaration is filed in accordance with subsection 112(3) in respect of the patent or filed in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted, or
(ii) the person requesting re-examination is not the patentee, the small entity status condition set out in subsection (3) is met and a small entity declaration is filed in respect of the request for re-examination in accordance with subsection (4); and
(b) in any other case, the standard fee set out in that item.
Marginal note:Clarification
(2) For greater certainty, for the purposes of subparagraph (1)(a)(i), a reissued patent is considered to be granted on the basis of the original application.
Marginal note:Exception — small entity status condition
(3) In respect of a request for re-examination under subsection 48.1(1) of the Act by a person other than the patentee, the small entity status condition is that the person requesting the re-examination is, on the date of the request, an entity that has fewer than 100 employees or is a university, other than an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 employees or more.
Marginal note:Exception — small entity declaration
(4) In respect of a request for re-examination under subsection 48.1(1) of the Act by a person other than the patentee, a small entity declaration must
(a) be filed with the Commissioner;
(b) identify the request for re-examination to which it relates;
(c) contain a statement that the person requesting re-examination believes that the small entity status condition set out in subsection (3) is met in respect of that request;
(d) be signed by
(i) the person requesting re-examination,
(ii) if a document authorizing a foreign practitioner to sign a small entity declaration is signed by the person requesting re-examination and submitted to the Commissioner at the same time as the declaration, that foreign practitioner, or
(iii) a patent agent who is appointed in respect of that request; and
(e) indicate the name of the person requesting re-examination and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.
Marginal note:Numbering of claims
123 An amended claim or a new claim proposed by a patentee under subsection 48.3(2) of the Act must be numbered consecutively in Arabic numerals, beginning with the number immediately following the number of the last claim in the patent.
Registration of Documents and Recording of Transfers
Marginal note:Related documents
124 The Commissioner must, on the receipt of a request and the fee set out in item 33 of Schedule 2, register in the Patent Office a document relating to a patent or an application for a patent.
Marginal note:Name change
125 If an applicant for a patent or a patentee changes their name, the Commissioner must, on the receipt of a request from that applicant or patentee and the fee set out in item 34 of Schedule 2, record that name change.
Marginal note:Request to record transfer
126 A request to record a transfer under section 49 of the Act must contain the name and postal address of the transferee and be accompanied by the fee set out in item 35 of Schedule 2.
Marginal note:Condition for recording transfer of application
127 The Commissioner must not record the transfer of an application for a patent under subsection 49(2) of the Act if the request to record the transfer is submitted after the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, after the day on which the final fee is paid again.
Third party Rights
Marginal note:Period
128 (1) For the purposes of subsections 55.11(2), (3), (7) and (9) of the Act, the prescribed periods are
(a) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11(1)(a)(i) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 27.1(1) of the Act was due under that subsection but was not paid, without taking into account subsection 27.1(3) of the Act, and ending
(i) if the Commissioner, under paragraph 27.1(2)(b) of the Act, sent a notice to the applicant because of that omission, and if the application is deemed to be abandoned under paragraph 73(1)(c) of the Act because the prescribed fee and the late fee referred to in that notice were not paid within the time referred to in that paragraph, on the earlier of
(A) the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment, and
(B) the day on which the patent was granted, or
(ii) if the application was not deemed to be abandoned under paragraph 73(1)(c) of the Act for the reason referred to in subparagraph (i), on the earlier of
(A) the day on which that prescribed fee and the late fee referred to in subsection 27.1(2) of the Act were paid — or, if they were paid on different days, the later of those days — without taking into account subsection 27.1(3) of the Act, and
(B) the day on which the patent was granted;
(b) in the case of a patent that was granted on the basis of an application referred to in subparagraph 55.11(1)(a)(ii) of the Act, the period beginning six months after the end of the prescribed time referred to in subsection 35(2) of the Act and ending
(i) if the application was deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of
(A) the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment, and
(B) the day on which the patent was granted, or
(ii) if the application was not deemed to be abandoned under paragraph 73(1)(d) of the Act, on the earlier of
(A) the day on which the request referred to in subsection 35(3) of the Act was made and the prescribed fee and late fee referred to in that subsection were paid — or, if the request was made on a different day than the day on which those fees were paid, or those fees were paid on different days, the latest of those days — without taking into account subsection 35(4) of the Act, and
(B) the day on which the patent was granted;
(c) in the case of a patent that was granted on the basis of a divisional application referred to in paragraph 55.11(1)(b) of the Act, any period that applies under this section in respect of a patent granted on the basis of the original application, or that would apply to that patent if it were granted, but excluding any part of that period that is after the presentation date of the divisional application;
(d) in the case of a patent referred to in paragraph 55.11(1)(c) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 46(1) of the Act was due under that subsection but was not paid, without taking into account subsection 46(3) of the Act, and ending
(i) if the Commissioner, under paragraph 46(2)(b) of the Act, sent a notice to the patentee because of that omission and if, without taking into account subsection 46(5) of the Act, the term of the patent was deemed to have expired under subsection 46(4) of the Act because the prescribed fee and the late fee referred to in subsection 46(2) of the Act were not paid within the time referred to in subsection 46(4) of the Act, on the day on which subsection 46(4) of the Act is deemed never to have produced its effects under subsection 46(5) of the Act, or
(ii) if, without taking into account subsection 46(5) of the Act, the term of the patent is not deemed to have expired under subsection 46(4) of the Act for the reason referred to in subparagraph (i), on the day on which that prescribed fee and the late fee referred to in subsection 46(2) of the Act were paid — or, if they were paid on different days, the later of those days — without taking into account subsection 46(3) of the Act;
(e) in the case of a patent referred to in paragraph 55.11(1)(d) of the Act, any period beginning six months after a day on which a prescribed fee referred to in subsection 46.2(1) of the Act was due under that subsection but was not paid, without taking into account subsection 46.2(3) of the Act, and ending
(i) if the Commissioner, under paragraph 46.2(2)(b) of the Act, sent a notice to the patentee because of that omission and if, without taking into account subsection 46.2(5) of the Act, the additional term of the patent was deemed to have expired under subsection 46.2(4) of the Act because the prescribed fee and the late fee referred to in subsection 46.2(2) of the Act were not paid within the time referred to in subsection 46.2(4) of the Act, on the day on which subsection 46.2(4) of the Act is deemed never to have produced its effects under subsection 46.2(5) of the Act, or
(ii) if, without taking into account subsection 46.2(5) of the Act, the additional term is not deemed to have expired under subsection 46.2(4) of the Act for the reason referred to in subparagraph (i), on the day on which that prescribed fee and the late fee referred to in subsection 46.2(2) of the Act were paid — or, if they were paid on different days, the later of those days — without taking into account subsection 46.2(3) of the Act; and
(f) in the case of a patent referred to in paragraph 55.11(1)(e) of the Act, any period beginning after the expiry of the term referred to in section 44 of the Act, without taking into account section 46 of the Act, and ending on the day on which the additional term is granted under section 46.1 of the Act, if the additional term is granted after the day on which the term referred to in section 44 of the Act expires, without taking into account section 46 of the Act.
Marginal note:Fee considered paid — small entity
(2) For the purposes of subsection (1), a fee is considered to have been paid on the day on which a small entity fee is paid if, on or before that day, a small entity declaration is filed in accordance with subsection 112(3) in respect of the patent or in accordance with subsection 44(3) in respect of the application on the basis of which the patent was granted.
Marginal note:Fee considered paid — insufficient payment
(3) For the purposes of subsection (1), a fee is considered to have been paid on the day on which an insufficient payment was made if
(a) in the case of a fee referred to in subsection 80(1), the Commissioner sent a notice to the applicant acknowledging that the request for examination was made in accordance with subsection 35(2) of the Act, unless the applicant or patentee paid the fee before the notice was sent; or
(b) in any other case, the Commissioner provided erroneous information in writing concerning the amount of the fee and the applicant or patentee paid an insufficient amount that was equal to the amount specified in the erroneous information.
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