Patent Rules (SOR/2019-251)

Marginal note:Prescribed fee

• 134 (1) Subject to subsection (2) and for the purposes of subparagraph 73(3)(a)(iv) of the Act, the prescribed fee is, for each failure to take an action referred to in the request for reinstatement, the fee set out in item 15 of Schedule 2.

• Marginal note:Interpretation — failure to take action

  (2) If both of the following failures to take action are referred to in the request for reinstatement, they are considered to be a single failure to take action:

  • (a) a failure to reply in good faith, within the time referred to in the applicable subsection, to any requisition made by an examiner under subsection 86(2) or (5); and

  • (b) a failure to make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3).

Marginal note:Non-application of certain portions of subsection 73(3) of Act

• 135 (1) Subparagraph 73(3)(a)(ii) and paragraph 73(3)(b) of the Act do not apply

  • (a) in respect of a failure under paragraph 73(1)(a), (b) or (e) or subsection 73(2) of the Act; or

  • (b) in respect of a failure under paragraph 73(1)(d) of the Act if, within six months after the applicable time prescribed by subsection 35(2) of the Act and in respect of that failure, the applicant makes a request for reinstatement to the Commissioner, takes the action that should have been taken in order to avoid the abandonment and pays the fee prescribed by section 134 of these Rules.

• Marginal note:Non-application of subsection 3(1)

  (2) Subsection 3(1) does not apply to the time prescribed by paragraph (1)(b).

Fees for Services

Marginal note:Fee for certified copies

• 136 (1) A person who requests from the Commissioner a certified copy of a document that is in the Commissioner’s possession must pay the fee set out in item 36 or 37 of Schedule 2, as applicable.

• Marginal note:Exception

  (2) Subsection (1) does not apply in respect of a certified copy transmitted under rule 318 of the Federal Courts Rules, including that rule as modified by rule 350 of those Rules.

Marginal note:Fee for non-certified copies

137 A person who requests from the Commissioner a non-certified copy of a document that is in the Commissioner’s possession must pay the fee set out in item 38 or 39 of Schedule 2, as applicable.

Marginal note:Fee for requesting information

138 A person who requests that the Patent Office provide information concerning the status of a patent or an application for a patent must pay the fee set out in item 40 of Schedule 2.

Refund and Waiver of Fees

Marginal note:Refund of fees

• 139 (1) Only the following fees may be refunded by the Commissioner:

  • (a) [Repealed, SOR/2021-131, s. 21]

  • (b) any fee, other than the fee referred to in subsection 27(2) of the Act, paid in respect of an application, other than a PCT national phase application, that was filed through inadvertence, accident or mistake and that was withdrawn not later than the fourteenth day after the earliest date on which the Commissioner received any document or information in respect of that application under subsection 28(1) of the Act or, in the case of a divisional application, not later than the fourteenth day after the earliest date on which the Commissioner received any document or information referred to in subsection 103(1) in respect of that application;

  • (c) any fee, other than the fee set out in any of items 16 to 21 of Schedule 2, paid in respect of an international application, if one or more of the requirements for entry into the national phase were met in respect of the application through inadvertence, accident or mistake and, if the international application has become a PCT national phase application, that PCT national phase application was withdrawn not later than the fourteenth day after its national phase entry date;

  • (d) a fee paid in respect of a request for the registration of a document relating to a patent or an application for a patent, if the fee is received but the document is not submitted;

  • (e) a fee paid for advertising on the website of the Canadian Intellectual Property Office an application presented to the Commissioner under section 65 of the Act, if the application was not advertised on that website;

  • (f) a fee paid in respect of a request for a copy of a document if the request is withdrawn before the copy is made;

  • (g) a fee paid in respect of a request for a copy of a document, if the Patent Office does not have that document;

  • (h) any overpayment of a fee;

  • (i) any fee paid, if payment of the fee is waived by the Commissioner;

  • (j) a fee paid under subsection 85.1(3) for the continued examination of an application for a patent, if the fee was paid in response to a notice referred to in subsection 85.1(6); and

  • (k) any fee that is to be refunded under these Rules.

• Marginal note:Request

  (2) The Commissioner must not give a refund under any of paragraphs (1)(a) to (h) unless a request for the refund is received not later than three years after the day on which the fee was paid.

Marginal note:Waiver of fee — request to correct errors

• 140 (1) The Commissioner is authorized to waive the payment of the fee set out in item 24 of Schedule 2 that is payable for a request for a correction if the request is in regard to an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.

• Marginal note:Waiver of fee — reissue of patent

  (2) The Commissioner is authorized to waive the payment of the fee set out in item 28 of Schedule 2 for filing an application to reissue a patent if the application for reissue is as a result of an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.

• Marginal note:Waiver of fee — extension of time

  (3) The Commissioner is authorized to waive the payment of the fee set out in item 1 of Schedule 2 that is payable for filing an application for an extension of the time for replying to a requisition made under subsection 86(2) or (5) if

  • (a) the notice sent under subsection 86(2) or (5) was received by the applicant more than one month after the day on which the notice was sent;

  • (b) the applicant applies for the extension within 14 days after the day on which the notice was received and, in that application, provides evidence satisfactory to the Commissioner of the date of receipt of the notice; and

  • (c) the Commissioner is satisfied that the circumstances justify it.

PART 2Patent Cooperation Treaty

Definitions

Marginal note:Definitions

141 The following definitions apply in this Part.

international filing date

international filing date means the date accorded to an international application under Article 11 of the Patent Cooperation Treaty. (date du dépôt international)

priority date

priority date has the same meaning as in Article 2(xi) of the Patent Cooperation Treaty. (date de priorité)

Application of Treaty

Marginal note:International applications

• 142 (1) Subject to subsection (2) and subsections 154(11) and (12), the provisions of the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT apply in respect of

  • (a) an international application filed with the Commissioner; and

  • (b) an international application in which Canada is designated under the Patent Cooperation Treaty.

• Marginal note:Exceptions

  (2) Article 24(2) of the Patent Cooperation Treaty and Rule 49.6 of the Regulations under the PCT do not apply in respect of an international application in which Canada is designated under the Patent Cooperation Treaty.

International Phase

Marginal note:Receiving Office

143 If an international application is filed with the Commissioner and the applicant or, if there is more than one applicant, at least one of the applicants, is a national or resident of Canada, the Commissioner must act as a receiving Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.

Marginal note:Application in English or French

144 An international application, other than any text matter contained in a sequence listing, that is filed with the Commissioner must be entirely in English or entirely in French.

Marginal note:International Searching Authority and International Preliminary Examining Authority

145 The Commissioner must act as an International Searching Authority and an International Preliminary Examining Authority in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.

Marginal note:Appointment of all the patent agents

145.1 If all of the agents at the same firm are appointed under Rule 90 of the Regulations under the PCT to represent an applicant before the Commissioner, section 28.1, subsection 29(2) and section 29.1 apply in respect of the appointment.

Marginal note:Fees payable in Canadian currency

• 146 (1) Fees payable under Rules 15 and 57 of the Regulations under the PCT must be paid in Canadian currency.

• Marginal note:Patent Cooperation Treaty Fund

  (2) Money received under Rules 15 and 57 of the Regulations under the PCT must be deposited in the account entitled the Patent Cooperation Treaty Fund within the account entitled the Canadian Intellectual Property Office Revolving Fund and must be paid out of that account in accordance with those Rules.

Marginal note:Transmittal fee

147 An applicant of an international application filed with the Commissioner must pay the transmittal fee set out in item 16 of Schedule 2 for the performance of the tasks referred to in Rule 14 of the Regulations under the PCT.

Marginal note:Search fee

148 An applicant of an international application filed with the Commissioner must pay the search fee set out in item 17 of Schedule 2 for the performance of the tasks referred to in Rule 16 of the Regulations under the PCT.

Marginal note:Additional fee

149 The amount of the additional fee for searching under Article 17(3)(a) of the Patent Cooperation Treaty is the fee set out in item 18 of Schedule 2.

Marginal note:Preliminary examination fee

150 An applicant of an international application filed with the Commissioner who requests an international preliminary examination must pay the preliminary examination fee set out in item 19 of Schedule 2 for the performance of the tasks referred to in Rule 58 of the Regulations under the PCT.

Marginal note:Additional fee

151 The amount of the additional fee for an international preliminary examination under Article 34(3)(a) of the Patent Cooperation Treaty is the fee set out in item 20 of Schedule 2.

National Phase

Marginal note:Designated Office

152 If an international application in which Canada is designated under the Patent Cooperation Treaty is filed, the Commissioner must act as the designated Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.

Marginal note:Elected Office

153 If an international application in which Canada is designated under the Patent Cooperation Treaty is filed and the applicant has elected Canada under Article 31 of the treaty, the Commissioner must act as an elected Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.

Marginal note:Requirements

• 154 (1) An applicant who designates Canada in an international application must, not later than 30 months after the priority date,

  • (a) if the International Bureau of the World Intellectual Property Organization has not published the international application, submit to the Commissioner a copy of the international application;

  • (b) if the description contained in the international application, other than any sequence listings, is entirely in a language other than English or French, submit to the Commissioner an English or French translation of the description other than any sequence listings;

  • (b.1) if the claims contained in the international application are entirely in a language other than English or French, submit to the Commissioner an English or French translation of the claims; and

  • (c) pay the basic national fee, which is

    • (i) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and

    • (ii) in any other case, the standard fee set out in that item.

• Marginal note:Fee

  (2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date must, not later than 30 months after the priority date, pay

  • (a) the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3); and

  • (b) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent.

• Marginal note:Reinstatement of rights

  (3) An applicant who fails to comply with the requirements of subsection (1) and, if applicable, subsection (2) not later than 30 months after the priority date, is considered to have complied with those requirements within that time if

  • (a) not later than 12 months after that time, the applicant

    • (i) submits to the Commissioner a request that the rights of the applicant be reinstated with respect to that international application and a statement that the failure was unintentional,

    • (ii) complies with the requirements of paragraphs (1)(a) and (b),

    • (iii) pays the basic national fee, which is

      • (A) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and

      • (B) in any other case, the standard fee set out in that item, and

    • (iv) pays the fee for reinstatement of rights set out in item 22 of Schedule 2; and

  • (b) if the applicant complies with the requirements of paragraph (a) after the second anniversary of the international filing date, the applicant,

    • (i) on or before the third anniversary of the international filing date but not later than 12 months after the time referred to in subsection (1), pays

      • (A) if the small entity status condition set out in subsection 44(2) is met and if, on or before that third anniversary, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, and

      • (B) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent, or

    • (ii) after the third anniversary of the international filing date but not later than 12 months after the time referred to in subsection (1), pays

      • (A) if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second and third anniversary of the filing date of an application for a patent, and

      • (B) in any other case, the standard fee set out in that item for the second and third anniversary of the filing date of an application for a patent.

• Marginal note:Extension in case of attempted payment

  (4) If the applicant of an international application fails to comply with the requirements of subsection (1) and, if applicable, subsection (2), not later than 30 months after the priority date and if, before the end of a period of 12 months after that time, the Commissioner receives a communication clearly indicating the applicant’s intention to pay some or all of the fees required by subsection (3), but all of the fees required by subsection (3) are not paid before the end of that 12-month period, those fees are considered to have been paid on the day on which that communication is received if the unpaid fees, together with the additional fee for late payment set out in item 23 of Schedule 2, are paid after the end of that 12-month period but not later than two months after the day on which the communication is received.

• Marginal note:Fee considered paid

  (5) If the Commissioner has, under subsection 3(3), extended the time period for the payment of a fee prescribed by paragraph (1)(c), subsection (2) or subparagraph (3)(a)(iii) or (b)(i) or (ii) and the fee is paid before the end of the extended period, for the purposes of subsection (1), (2) or (3), as applicable, that fee is considered to have been paid on the day on which the small entity fee was paid.

• Marginal note:Fee considered paid — insufficient payment

  (5.1) If the Commissioner has, under subsection 3(4), extended the time period for the payment of a fee prescribed by paragraph (1)(c), subsection (2) or subparagraph (3)(a)(iii) or (b)(i) or (ii) and the fee is paid before the end of the extended period, for the purposes of subsection (1), (2) or (3), as applicable, that fee is considered to have been paid on the day on which the insufficient payment was made.

• Marginal note:Correction of error – naming of applicants

  (6) The Commissioner must, on request, correct an error in the records of the Patent Office with respect to the naming of applicants in respect of a PCT national phase application if the request contains a statement to the effect that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, and is made by the person who paid the basic national fee prescribed by paragraph (1)(c) or subparagraph (3)(a)(iii) not later than the earlier of

  • (a) the later of

    • (i) the day on which a period of three months after the national phase entry date of that application expires, and

    • (ii) if the Commissioner sends a notice under subsection (7) before the end of a period of three months after the national phase entry date of that application, the day on which a period of three months after the date of the notice expires, and

  • (b) if the Commissioner records a transfer of the application for a patent under section 49 of the Act, on or before the day on which the Commissioner received the request to record that transfer.

• Marginal note:Notice

  (7) If the Commissioner has reasonable grounds to believe that the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), is neither the applicant of the international application nor their legal representative, the Commissioner must by notice require that person to establish that they are either the applicant of the international application or their legal representative.

• Marginal note:Person considered never to have complied

  (8) If the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), fails to comply with the notice not later than three months after the date of the notice, that person is considered never to have complied with those requirements.

• Marginal note:Non-application of subsection 3(1)

  (9) Subsection 3(1) does not apply in respect of the times referred to in subsection (1), (2), (3), (4) or (6).

• Marginal note:Exception to subsection 3(1)

  (10) Subsection 3(1) does not authorize the Commissioner to extend the time referred to in subsection (8) for complying with the notice beyond the later of the end of a period of six months after the date of the notice and the end of a period of 30 months after the priority date.

• Marginal note:Non-application of Article 48(2) of Patent Cooperation Treaty

  (11) Article 48(2) of the Patent Cooperation Treaty does not apply in respect of the times referred to in subsection (1), (2), (3) or (4) of this section or in respect of any time limit applicable to a PCT national phase application.

• Marginal note:Non-application of certain Rules under the PCT

  (12) Rules 49ter.1(f) and 49ter.2 of the Regulations under the PCT do not apply to a PCT national phase application.

• Marginal note:New PCT national phase application

  (13) Once an international application becomes a PCT national phase application, it may not become a new PCT national phase application unless the earlier PCT national phase application is withdrawn.