Patent Rules (SOR/2019-251)

Marginal note:Form for submitting request

• 97 (1) The Commissioner must publish on the website of the Canadian Intellectual Property Office a form for submitting a request for the furnishing of a sample of deposited biological material, the contents of which must be the same as the contents of the form referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty.

• Marginal note:Certification

  (2) Subject to section 98, if a specification contained in a Canadian patent, or in an application for a patent filed in Canada that is open to public inspection at the Patent Office, refers to a deposit of biological material by the applicant and if a person submits a request to the Commissioner on the form referred to in subsection (1), the Commissioner must make the certification referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty in respect of that person if

  • (a) a patent has been issued on the basis of the application or the application has been refused, withdrawn or deemed to be abandoned and is no longer subject to reinstatement; or

  • (b) the Commissioner has received an undertaking by that person

    • (i) not to make any sample of biological material furnished by the international depositary authority or any material derived from such a sample available to any other person before either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, and

    • (ii) to use the sample of biological material furnished by the international depositary authority and any material derived from such a sample solely for the purpose of experiments that relate to the subject-matter of the application until either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement.

• Marginal note:Copy of request and certification to be sent

  (3) Except in the case where subsection 98(2) applies, if the Commissioner makes a certification under subsection (2), the Commissioner must send a copy of the request together with the certification to the person who submitted the request.

Marginal note:Person authorized to submit request

• 98 (1) If an applicant submits a request under section 95, until a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, a request under section 97 may only be submitted by an independent expert nominated under section 96.

• Marginal note:Copy of request and certification to be sent

  (2) If the Commissioner makes a certification under subsection 97(2) in respect of an independent expert nominated by the Commissioner, the Commissioner must send a copy of the request together with the certification to the applicant and to the person who requested the nomination of the expert.

Amendment to Specification and Drawings

Marginal note:No amendment before submission of translation

99 If an applicant is required to submit a translation under subsection 15(2) or (3), the specification and the drawings contained in the application for a patent must not be amended by the applicant before they submit the translation to the Commissioner.

Marginal note:No amendment after notice of allowance or conditional notice of allowance

• 100 (1) Subject to subsection (2), the specification and the drawings contained in an application for a patent must not be amended by the applicant after a notice of allowance or conditional notice of allowance is sent, unless

  • (a) the notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4); or

  • (b) the amendments are those referred to in the conditional notice of allowance and are made in accordance with subsection 86(1.1) or, if the application is deemed to be abandoned under subsection 73(2) of the Act in the circumstances referred to in paragraph 132(1)(g) of these Rules, on or before the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

• Marginal note:Exception — obvious errors

  (2) The applicant may amend the specification and the drawings contained in the application if it is obvious from the specification and the drawings contained in the application on the day on which the notice of allowance or conditional notice of allowance was sent that something other than what appears in the specification and the drawings was intended and that nothing other than the proposed amendment could have been intended. The amendments must be made

  • (a) if a notice of allowance was sent and has not been withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again; and

  • (b) if a conditional notice of allowance was sent and has not been withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), on or before the day on which the applicant replies in good faith to the conditional notice of allowance.

• Marginal note:Effect of withdrawal or setting aside

  (3) If a conditional notice of allowance is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), any amendments made to the application during the period beginning on the day on which the conditional notice of allowance is sent and ending on the day before the day on which the conditional notice of allowance is withdrawn or set aside are considered never to have been made.

Marginal note:No amendment after rejection

101 If an application for a patent is rejected by an examiner under subsection 86(3), the specification and the drawings contained in the application must not be amended by the applicant after the date prescribed by subsection 86(8), unless

• (a) a notice is sent to the applicant informing them that the rejection is withdrawn;

• (b) the amendments are those required in a notice sent under subsection 86(11); or

• (c) the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendments to be made.

Marginal note:Amendment to specification or drawings

102 An amendment by the applicant to the specification or the drawings contained in an application for a patent must be made by submitting a new page to replace each page altered by the amendment and a statement explaining the purpose of the amendment and identifying the differences between the new page and the replaced page.

Marginal note:Prescribed Documents and information — divisional application

• 103 (1) For the purpose of paragraph 38.2(3.1)(b) of the Act, the prescribed documents and information are

  • (a) an explicit or implicit indication that the granting of a Canadian patent is being sought;

  • (b) information allowing the identity of the applicant to be established;

  • (c) information allowing the Commissioner to contact the applicant; and

  • (d) a document that, on its face, appears to be a description.

• Marginal note:Presentation date

  (2) The presentation date of an application for a patent is the date on which the Commissioner receives the documents and information referred to in subsection (1) or, if they are received on different dates, the latest of those dates.

Corrections

Marginal note:Error – naming of applicants

104 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent, other than 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 submitted the application not later than the earlier of

• (a) the day on which the application becomes open to public inspection at the Patent Office, and

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

Marginal note:Error – naming of applicants

105 The Commissioner must, on request, correct an error with respect to the naming of applicants in an application for a patent if the request contains a statement to the effect that the correction does not add or delete the name of an applicant or change the identity of a named applicant and is made by the applicant on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again.

Marginal note:Error – naming of inventors

106 The Commissioner must, on request, correct an error with respect to the naming of inventors in an application for a patent if

• (a) in the case of a request that contains a statement to the effect that the correction does not add or delete the name of an inventor or change the identity of a named inventor, the request is made by the applicant on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again; or

• (b) in any other case, the request is made by the applicant before the day on which a notice of allowance or conditional notice of allowance is sent or, if the notice of allowance or conditional notice of allowance is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), before the day on which another notice of allowance or conditional notice of allowance is sent.

Marginal note:Obvious error made by Commissioner

• 107 (1) The Commissioner may, on his or her own initiative within 12 months after the day on which a patent is issued under the Act, or on the request of the patentee made within that period, correct an error made by the Commissioner in the patent or in the specification or the drawings referenced in the patent if, from the documents that were in the possession of the Patent Office on that day, it is obvious that something other than what appears in the patent, the specification or the drawings was intended and that nothing other than the correction could have been intended.

• Marginal note:Date of correction

  (2) A correction made under subsection (1) is considered to have been made on the day on which the patent was issued.

Marginal note:Obvious error made by re-examination board

• 108 (1) The Commissioner may, on his or her own initiative within six months after the day on which a certificate is issued under section 48.4 of the Act, or on the request of the patentee made within that period, correct an error made by the re-examination board in the certificate if, from the documents that were in the possession of the Patent Office on that day, it is obvious that something other than what appears in the certificate was intended and that nothing other than the correction could have been intended.

• Marginal note:Date of correction

  (2) A correction made under subsection (1) is considered to have been made on the day on which the certificate was issued.

Marginal note:Correction on request of patentee

• 109 (1) On the request of the patentee, made in accordance with subsection (2), not later than 12 months after the day on which a patent is issued under the Act and on payment of the fee set out in item 24 of Schedule 2, the Commissioner must correct

  • (a) an error with respect to the naming of a patentee or an inventor included in the patent, if the request for a correction contains a statement to the effect that the correction does not add or delete the name of a patentee or an inventor or change the identity of a named patentee or inventor, as the case may be; or

  • (b) an error in the specification or the drawings referenced in the patent, if from the specification or the drawings referenced in the patent at the time the patent was issued it would have been obvious to a person skilled in the art or science to which the patent pertains that something other than what appears in the specification or the drawings was intended and that nothing other than the correction could have been intended.

• Marginal note:Contents of request

  (2) A request under subsection (1) must contain

  • (a) an indication that a correction of an error is being requested;

  • (b) the number of the patent concerned;

  • (c) the correction to be made; and

  • (d) new pages to replace the pages altered by the correction, if the error is in the specification or the drawings and the error was not made by the Commissioner.

• Marginal note:Notice

  (3) If a request is made under subsection (1) during the 12-month period referred to in that subsection but the request does not comply with subsection (2) or the fee referred to in subsection (1) is not paid, the Commissioner must by notice require the patentee to submit the elements referred to in subsection (2) or pay the fee referred to in subsection (1), as applicable, not later than three months after the date of the notice.

• Marginal note:Correction after notice

  (4) The Commissioner must make the correction if the applicant complies with the notice not later than three months after the date of the notice and if the error is one referred to in subsection (1).

• Marginal note:Date of correction

  (5) A correction made under subsection (1) or (4) is considered to have been made on the day on which the patent was issued.