Patent Rules (SOR/2019-251)

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

110 Subsection 3(1) does not apply in respect of the times referred to in section 104, 105 or 106 or subsection 107(1), 108(1) or 109(1), (3) or (4).

Marginal note:Certificate

• 111 (1) If the Commissioner corrects an error under section 107, 108 or 109, the Commissioner must, under the seal of the Patent Office, issue a certificate setting out the correction.

• Marginal note:Obvious error made by Commissioner

  (2) The Commissioner may correct an error made in the certificate if, from the documents that were in the possession of the Patent Office on the day on which the certificate was issued, 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.

Maintaining Rights Accorded by a Patent

Marginal note:Prescribed fee

• 112 (1) Subject to subsection (5), for the purposes of subsection 46(1) of the Act, the prescribed fee to maintain the rights accorded by a patent issued under the Act in effect is, for an anniversary date set out in item 25 of Schedule 2 that falls on or after the day on which the patent was issued,

  • (a) the applicable small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in accordance with subsection (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 is granted,

    • (i) on or before that anniversary date, or

    • (ii) if a notice is required to be sent under paragraph 46(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of six months after that anniversary date and the end of two months after the date of the notice; and

  • (b) in any other case, the standard fee set out in that item for that anniversary date.

• Marginal note:Small entity status condition

  (2) The small entity status condition is that

  • (a) in respect of a patent granted on the basis of an application for a patent — other than a PCT national phase application or a divisional application — the applicant of the application on the filing date is, on that date, an entity that has fewer than 100 employees or is a university, other than

    • (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has 100 employees or more, or

    • (ii) an entity that has transferred or licensed, or has an obligation other than a contingent obligation to transfer or license, any right or interest in a claimed invention to an entity, other than a university, that has 100 employees or more;

  • (b) in respect of a patent granted on the basis of a PCT national phase application, the applicant of the application on the national phase entry date is, on that date, an entity that has fewer than 100 employees or is a university, other than an entity referred to in subparagraph (a)(i) or (ii); and

  • (c) in respect of a patent granted on the basis of a divisional application, the applicable requirements set out in subsection 44(2) are met in respect of the original application.

• Marginal note:Small entity declaration

  (3) A small entity declaration must

  • (a) be filed with the Commissioner in a document other than the abstract, the specification or the drawings of the application on the basis of which the patent was granted, that identifies the patent to which the declaration relates;

  • (b) contain a statement that the patentee believes that the small entity status condition set out in subsection (2) is met in respect of the patent;

  • (c) be signed by a patent agent appointed in respect of that patent or by

    • (i) if there is a single patentee, the patentee,

    • (ii) if there is a single patentee and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the patentee and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,

    • (iii) if there are joint patentees, any one of the patentees, or

    • (iv) if there are joint patentees and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the patentees and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and

  • (d) indicate the name of the patentee and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

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

  (4) Subsection 3(1) does not apply in respect of the times referred to in subsection (1).

• Marginal note:Exception

  (5) For the purposes of subsection 46(1) of the Act, if a patent is granted on the basis of an application for a patent, in respect of which a fee 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 that was not yet paid before that day, the prescribed fee to maintain in effect the rights accorded by the patent is, for the day 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, the total of

  • (a) the unpaid fee,

  • (b) the late fee set out in item 26 of Schedule 2, and

  • (c) the fee prescribed by paragraph (1)(a) or (b) of this section for that anniversary, as applicable.

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.

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.