Patent Rules (SOR/2019-251)

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.