Patent Rules (SOR/2019-251)
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Regulations are current to 2025-03-17 and last amended on 2025-01-01. Previous Versions
PART 1Rules of General Application (continued)
Maintaining Rights Accorded by a Patent (continued)
Marginal note:Prescribed Dates
113 For the purposes of subsection 46(1) of the Act, the prescribed dates are
(a) for a fee referred to in subsection 112(1) of these Rules, the anniversary date for which it is paid; and
(b) for a fee referred to in subsection 112(5) of these Rules, the date of the first of the anniversaries of the filing date of the application that fall on or after the day on which the patent was issued.
Marginal note:Clarification
114 For greater certainty, for the purposes of sections 112 and 113, 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
115 For the purposes of subsection 46(2) of the Act, the prescribed late fee is the fee set out in item 26 of Schedule 2.
Marginal note:Time — paragraph 46(5)(a) of Act
116 (1) For the purposes of paragraph 46(5)(a) of the Act, the prescribed time is 12 months after the end of the six-month period referred to in subsection 46(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 For the purpose of subparagraph 46(5)(a)(iii) of the Act, the additional prescribed fee is the fee set out in item 27 of Schedule 2.
Additional Term
Application
Marginal note:Submitting application
117.01 (1) For the purposes of paragraph 46.1(1)(c) of the Act, an application for an additional term for a patent must be submitted in writing and must indicate the number of the patent to which the application relates.
Marginal note:Correction — patent number
(2) An error in the patent number referred to in an application for an additional term may be corrected by the patentee on or before the later of
(a) the day that is three months after the day on which the patent is issued; and
(b) the day that is one month after the day on which the application is received.
Marginal note:Prescribed fee
(3) The prescribed fee for an application for an additional term is the standard fee set out in paragraph 41(b) of Schedule 2 or, 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 filed in accordance with subsection 44(3) in respect of the application on the basis of which the patent is granted, the small entity fee set out in paragraph 41(a) of Schedule 2.
Marginal note:One application
(4) Only one application for an additional term may be submitted for a given patent.
Marginal note:Dismissal of application
(5) If the Commissioner dismisses an application that does not meet the requirements set out in paragraphs 46.1(1)(a) to (c) of the Act, the application is deemed never to have been made and the Commissioner must send a notice to the patentee to that effect.
Marginal note:Notice of preliminary determination
(6) Following receipt of the application, the Commissioner must send a notice to the patentee indicating the Commissioner’s preliminary determination of the duration of the additional term, unless the application has been dismissed under subsection (5).
Marginal note:Observations
(7) The patentee 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 a certificate of additional term in accordance with subsection 46.1(7) of the Act or dismiss the application. The Commissioner must provide reasons for the duration of the additional term set out in the certificate or for the dismissal of the application, as the case may be.
Marginal note:Prescribed day — paragraph 46.1(2)(a) of Act
117.02 (1) For the purposes of paragraph 46.1(2)(a) of the Act, the prescribed day is the presentation date.
Marginal note:Prescribed day — paragraph 46.1(2)(b) of Act
(2) For the purposes of paragraph 46.1(2)(b) of the Act, the prescribed day is the national phase entry date.
Days to be Subtracted
Marginal note:Applicable periods
117.03 (1) Subject to subsections (5) to (11), the number of days to be subtracted in determining the duration of an additional term under subsection 46.1(4) of the Act is the sum of all the days included in the following periods as applicable:
(a) if the Commissioner sends a notice under section 65, the period beginning on the date of the notice and ending on the earlier of the day on which the applicant replies in good faith to that notice and the day on which the application for the patent is deemed to be abandoned under paragraph 132(1)(d);
(b) if the Commissioner requires further drawings under subsection 27(5.2) of the Act, the period beginning on the day on which the Commissioner requests the further drawings and ending on the earlier of the day on which the applicant replies in good faith to the request and the day on which the application for the patent is deemed to be abandoned under paragraph 132(1)(c);
(c) if the Commissioner sends a notice under subsection 27(6) of the Act, the period beginning on the date of the notice and ending on the earlier of the day on which the applicant complies with the notice and the day on which the application for the patent is deemed to be abandoned under paragraph 73(1)(b) of the Act;
(d) if the Commissioner sends a notice under subsection 27(7) of the Act, the period beginning on the date of the notice and ending on the day on which the application fee referred to in subsection 27(2) of the Act and the late fee referred to in subsection 27(7) of the Act are paid or, if they are paid on different days, the later of those days;
(e) if the Commissioner sends a notice under subsection 15(4), the period beginning on the date of the notice and ending on the earlier of the day on which the applicant complies with the notice and the day on which the application is deemed to be abandoned under paragraph 132(1)(a);
(f) if the prescribed fee referred to in subsection 27.1(1) of the Act is not paid on or before the prescribed date, the period beginning on the prescribed date and ending on the earlier of
(i) the first day on which both the prescribed fee referred to in subsection 27.1(1) of the Act and the prescribed late fee referred to in subsection 27.1(2) of the Act have been paid, and
(ii) the day on which the application is deemed to be abandoned under paragraph 73(1)(c) of the Act;
(g) if the applicant submits an addition and statement under subsection 28.01(1) of the Act, the period beginning on the filing date of the application for the patent and ending on the later of the day on which the Commissioner receives the addition and the statement and, if the addition is withdrawn, the day on which it is withdrawn;
(h) if the Commissioner sends a notice under subsection 74(4), the period beginning on the date of the notice and ending on the earliest of
(i) the day on which the applicant complies with the requirements of paragraph 74(1)(a) or (b),
(ii) the day on which the applicant meets the conditions set out in paragraphs 74(6)(a) and (b),
(iii) the day on which the applicant withdraws the request for priority, and
(iv) the day that is two months after the date of the notice;
(i) if a notice is sent under subsection 76(1) or (2), the period beginning on the date of the notice and ending on the earliest of
(i) the day on which the applicant complies with the notice,
(ii) the day on which the applicant withdraws the request for priority, and
(iii) the day that is four months after the date of the notice;
(j) if the Commissioner extends a period of time under subsection 3(1), the period beginning on the day on which the original period ends and ending on the earlier of the day on which the action for which the extension is requested is taken and the day on which the extended period ends;
(k) the period beginning on the applicable day referred to in subsection 46.1(2) of the Act and ending on the earlier of
(i) the first day, without taking into account subsection 35(4) of the Act, on which a request for examination has been made under section 35 of the Act in respect of the application for the patent, the prescribed fee referred to in subsection 35(1) of the Act has been paid and, if applicable, the prescribed late fee referred to in paragraph 35(3)(a) of the Act has been paid, and
(ii) the day on which the application is deemed to be abandoned under paragraph 73(1)(d) of the Act;
(l) if a notice is sent under subsection 85(1) or (2) or 86(2) or (5) or section 94, the period beginning on the date of the notice and ending on the earlier of the day on which the applicant replies in good faith to the notice and the day on which the application is deemed to be abandoned under paragraph 73(1)(a) of the Act;
(m) if a notice is sent under subsection 85.1(1), the period beginning on the date of the notice and ending on the earlier of
(i) the first day on which both a request for continued examination has been made and the prescribed fee has been paid in accordance with subsection 85.1(3), and
(ii) the day on which the application is deemed to be abandoned under paragraph 132(1)(e);
(n) if the applicant makes one or more requests referred to in subsection 85.1(1) or (4) – or has made one or more requests referred to in subsection 86(17), as that subsection read immediately before October 3, 2022 – and pays the applicable fee, the period beginning on the first day on which both the first request has been made and the prescribed fee has been paid and ending on the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee has been refunded, the day on which the final fee is paid again;
(o) if, on or before October 2, 2022, a request for examination was made and the prescribed fee was paid in accordance with subsection 35(1) of the Act and if three notices have been sent under subsection 86(2) or (5) before a notice of allowance or a conditional notice of allowance has been sent, the period beginning on the date of the third notice and ending on the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee has been refunded, the day on which the final fee is paid again;
(p) if, during an interview with and initiated by an examiner, the applicant agrees to consider making an amendment to the application to correct defects identified by the examiner on or before a specified day, the period beginning on the day on which the interview is held and ending on the earliest of
(i) the day on which the applicant communicates in writing that they will not make the amendment,
(ii) the day on which the amendment is received by the Commissioner, and
(iii) the specified day;
(q) if the Commissioner sends a notice under subsection 86(1), (6), (10) or (12), the period beginning on the date of the notice and ending on the earliest of
(i) the day on which the applicant pays the final fee set out in item 14 of Schedule 2,
(ii) the day on which the notice is set aside under subsection 85.1(4),
(iii) the day on which the application for the patent is deemed to be abandoned under paragraph 132(1)(f), and
(iv) the date of a notice sent under paragraph 86(14)(a) informing the applicant that the notice of allowance is withdrawn;
(r) if the Commissioner sends a conditional notice of allowance under subsection 86(1.1), the period beginning on the date of the notice and ending on the earliest of
(i) the day on which the applicant replies in good faith to the notice and pays the final fee set out in item 14 of Schedule 2,
(ii) the day on which the notice is set aside under subsection 85.1(4),
(iii) the day on which the application for the patent is deemed to be abandoned under paragraph 132(1)(g), and
(iv) the date of a notice sent under paragraph 86(14.1)(a) informing the applicant that the notice of conditional allowance is withdrawn;
(s) if a notice to the applicant indicating that submissions or proposed amendments may be made to the Commissioner on or before a specified day is sent on or after the day on which the Commissioner sends a notice under paragraph 86(7)(a), the period beginning on the date of the notice and ending on the earliest of
(i) the day on which the applicant notifies the Commissioner in writing they will not make a submission or proposed amendment,
(ii) the day on which a submission or proposed amendment is submitted; and
(iii) the specified day or, if the Commissioner extends the time period to end on a later day, that day;
(t) if a notice proposing a hearing date is sent to the applicant on or after the day on which the Commissioner sends them a notice under paragraph 86(7)(a) and the hearing is rescheduled for a later date at the request of the applicant, the period beginning on the proposed hearing date and ending on the earlier of
(i) the rescheduled hearing date, and
(ii) the day on which the applicant notifies the Commissioner in writing that they would like to cancel the hearing;
(u) if the Commissioner sends a notice under subsection 86(11) and the applicant makes amendments to the application after the date of the notice, other than amendments made in response to a notice under subsection 86(5), the period beginning on the date of the notice under subsection 86(11) and ending on the earlier of
(i) the day on which the amendments are received by the Commissioner or the Patent Office, and
(ii) the day that is three months after the date of that notice;
(v) if the Commissioner gives a direction to the applicant under subsection 36(2.1) of the Act, the period beginning on the day on which the direction is given and ending on the earlier of the day on which the applicant replies to the direction and the due date to reply that is specified in the direction;
(w) if the applicant appeals a refusal under section 41 of the Act, the period beginning on the day of the notice of the refusal under section 40 of the Act and ending on the latest of
(i) the day on which the final judgment is rendered by the Federal Court,
(ii) if the final judgment of the Federal Court of that appeal is appealed to the Federal Court of Appeal, the later of
(A) the day on which the final judgment of the Federal Court of Appeal is rendered in the appeal or, if applicable, the day on which the appeal is discontinued, and
(B) if an application is made in accordance with the Supreme Court Act for leave to appeal to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal, the day on which the application is dismissed or granted, and
(iii) if the final judgment of the Federal Court is appealed to the Federal Court of Appeal and an appeal is taken to the Supreme Court of Canada, the day on which the final judgment of the Supreme Court is rendered in the appeal or, if applicable, the day on which the appeal is discontinued;
(x) if the application is deemed to be abandoned under subsection 73(1) or (2) of the Act, the period beginning on the day on which the application is deemed to be abandoned and ending on the day on which the application is reinstated in respect of that abandonment;
(y) if the Commissioner sends a notice under section 31, the period beginning on the date of the notice and ending on the earlier of the day on which the applicant complies with the requirements of the notice and the day on which the application for the patent is deemed to be abandoned under paragraph 132(1)(b);
(z) if the Commissioner sends a notice under subsection 40(1), the period beginning on the day on which the Commissioner receives the written communication from the joint applicant and ending on the earliest of
(i) the first day on which the joint applicant has both been appointed in accordance with paragraph 26(3)(a) to represent the other joint applicants as their common representative and a request has been made that the Commissioner have regard to the communication,
(ii) the day on which the joint applicant submits a written request that the Commissioner not have regard to the communication, and
(iii) the day that is three months after the date of the notice;
(z.01) if the Commissioner sends a notice under subsection 41(1), the period beginning on the day on which the Commissioner receives the written communication from the patent agent and ending on the earliest of
(i) the first day on which the patent agent has both been appointed to represent the applicant in respect of the application for a patent and a request has been made that the Commissioner have regard to the communication,
(ii) the day on which the applicant submits a written request that the Commissioner not have regard to the communication, and
(iii) the day that is three months after the date of the notice;
(z.02) if the Commissioner sends a notice under subsection 41.1(2), the period beginning on the day on which the Commissioner receives the written communication from the patent agent and ending on the earliest of
(i) the first day on which the patent agent provided their name to the Commissioner and requested that the Commissioner have regard to the communication,
(ii) the day on which the applicant submits a request in writing that the Commissioner not have regard to the communication, and
(iii) the day that is three months after the date of the notice;
(z.03) if the Commissioner sends a notice under subsection 154(7), the period beginning on the date of the notice and ending on the day on which the person complies with the notice;
(z.04) if the Commissioner sends a notice under subsection 155.5(6), the period beginning on the date of the notice and ending on the earlier of
(i) the day on which the applicant complies with the notice, and
(ii) the day on which the application is deemed to be abandoned under paragraph 132(1)(h);
(z.05) if the applicant receives a notice — other than a notice of allowance withdrawn under paragraph 86(14)(a) or (14.1)(a) or a notice of allowance considered never to have been sent under subsection 86(17), as that subsection read immediately before October 3, 2022 — that requires them to take an action within a specified period and the notice is withdrawn by the Commissioner after the applicant requests in writing that it be withdrawn for a reason other than their having received the notice more than one month after the date of the notice, the period beginning the last day of the specified period without regard to any extension of a period time under section 3, and ending on the day on which the Commissioner receives the request for the notice to be withdrawn;
(z.06) if the applicant receives a notice that requires them to take an action within a specified period and the notice is withdrawn by the Commissioner after the applicant requests in writing that it be withdrawn because they received it more than one month after the date of the notice, unless the delay was the result of an error made by the Commissioner or the Patent Office, the period beginning on the date of the notice and ending on the day on which the Commissioner receives the request for the notice to be withdrawn;
(z.07) if the Commissioner or the Patent Office sends a notice to the applicant that requires them to take an action within a specified period and the notice is withdrawn by the Commissioner after the applicant requests in writing that it be withdrawn because they did not receive it, the period beginning on the date of the notice and ending on the day on which the applicant notifies the Commissioner in writing that the notice was not received;
(z.08) subject to subsection (12), if a notice requiring the applicant to take an action within a specified period appears in the records associated with the application for the patent on the website of the Canadian Intellectual Property Office and the notice is not sent to the applicant because of an error made by the Patent Office, the period
(i) beginning on the earlier of
(A) the next anniversary of the filing date of the application after the date of the notice, and
(B) the day on which the next communication after the day of the notice from the Commissioner or the Patent Office is sent to the applicant, and
(ii) ending on the earlier of
(A) the day on which the applicant notifies the Commissioner in writing that they did not receive the notice, and
(B) the day on which the Commissioner or the Patent Office sends the notice;
(z.09) if the Commissioner or the Patent Office sends a notice, under any provision of these Rules or the Act, requiring the applicant to take an action within a specified period, other than a notice referred to in any of paragraphs (a), (c) to (e), (h), (i), (l), (m), (q) to (u) and (y) to (z.04), the period beginning on the date of the notice and ending on the earliest of
(i) the day on which the applicant complies with the notice or replies to it in good faith,
(ii) the final day of the specified period, and
(iii) if applicable, the day on which the application is deemed to be abandoned under subsection 73(1) or (2) of the Act because the applicant failed to take the action required in the notice or to reply in good faith;
(z.1) if the applicant makes an application for judicial review of a decision of the Commissioner or the Patent Office in respect of a patent application, the period beginning on the date of a issuance of a notice of application for judicial review and ending on the latest of
(i) the day on which the final judgment is rendered in that judicial review by the Federal Court or, if the judicial review is discontinued, the day on which the judicial review is discontinued,
(ii) if the final judgment of the Federal Court is appealed to the Federal Court of Appeal, the later of
(A) the day on which the final judgment of the Federal Court of Appeal is rendered in the appeal or, if applicable, the day on which the appeal is discontinued, and
(B) if an application is made in accordance with the Supreme Court Act for leave to appeal to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal, the day on which the application is dismissed or granted, and
(iii) if the final judgment of the Federal Court is appealed to the Federal Court of Appeal and if the final judgment of the Federal Court of Appeal is appealed to the Supreme Court of Canada, the day on which the final judgment of the Supreme Court is rendered in the appeal or, if applicable, the day on which the appeal is discontinued;
(z.11) if a court orders a stay of the examination or prosecution of the application, the period beginning on the day on which the order is made and ending on the day on which the stay is no longer in force;
(z.12) if the Commissioner designates a day under subsection (3), the period beginning on the designated day and ending on the next day.
Marginal note:More than one period
(2) Paragraphs (1)(a) to (c), (e) to (j), (l), (m), (p) to (t) and (v) to (z.12) may refer to more than one period.
Marginal note:Power to designate day
(3) For the purposes of paragraph (1)(z.12), the days that the Commissioner may designate are those during which the operations at the Patent Office are significantly disrupted for all or part of the day during ordinary business hours due to circumstances beyond the control of the Patent Office.
Marginal note:List of designated days
(4) The Commissioner must publish a list of the days referred to in subsection (3) on the website of the Canadian Intellectual Property Office.
Marginal note:Days included in period
(5) The number of days in any period referred to in subsection (1) includes the first day but does not include the last day.
Marginal note:Day included in more than one period
(6) If a day is included in more than one period referred to in subsection (1), that day is included only once in the sum referred to in that subsection.
Marginal note:Days not included
(7) The periods referred to in subsection (1) are deemed not to include any day before the applicable day referred to in subsection 46.1(2) of the Act or any day after the day on which the patent is issued.
Marginal note:Previous days not included
(8) If the fifth anniversary of the applicable day referred to in subsection 46.1(2) of the Act falls before the third anniversary of the first day, without taking subsection 35(4) of the Act into account, on which a request for examination has been made under section 35 of the Act in respect of the application for the patent, the prescribed fee referred to in subsection 35(1) of the Act has been paid and, if applicable, the prescribed late fee referred to in paragraph 35(3)(a) of the Act has been paid, the periods referred to in subsection (1) are deemed not to include the days preceding that first day.
Marginal note:Withdrawn communication
(9) If a communication sent by the Commissioner or the Patent Office is withdrawn, that communication is not considered to have been sent for the purposes of determining the periods referred to in subsection (1), except for the purposes of determining those referred to in paragraph (1)(z.05), (z.06) or (z.07).
Marginal note:Number equal to zero
(10) If the day on which a period referred to in subsection (1) ends on or before the day on which the period begins, the number of days in the period is zero.
Marginal note:End of period
(11) If a period that begins under subsection (1) does not end under subsection (1) on or before the day on which the patent is issued, then the period ends on that day.
Marginal note:Non-application of paragraph (1)(z.08)
(12) Paragraph (1)(z.08) does not apply in respect of a notice requiring the applicant to take an action within a specified period if the applicant, on the day on which they notify the Commissioner in writing that they did not receive the notice, files a statement that they are notifying the Commissioner without undue delay after they became aware of the notice and the fact that they had not received it.
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