Patent Rules (SOR/2019-251)

Marginal note:Application considered not to be referred to in paragraph 28.2(1)(c) or (d) of Act

163 An international application is considered not to be an application for a patent referred to in paragraph 28.2(1)(c) of the Act or not to be a co-pending application referred to in paragraph 28.2(1)(d) of the Act, unless it has become a PCT national phase application.

Marginal note:Patent not invalid

164 A patent that was granted on the basis of an international application must not be declared invalid by reason only that a fee referred to in section 154 was not paid.

PART 3Transitional Provisions

DIVISION 1Interpretation

Marginal note:Definitions

• 165 (1) The following definitions apply in this Part.

  application preceding the coming-into-force date

  application preceding the coming-into-force date[Repealed, SOR/2022-120, s. 36]

  category 1 application

  category 1 application means an application for a patent for which the filing date is before October 1, 1989. (demande de catégorie 1)

  category 2 application

  category 2 application[Repealed, SOR/2022-120, s. 36]

  category 3 application

  category 3 application means an application for a patent for which the filing date is on or after October 1, 1996 but before October 30, 2019. (demande de catégorie 3)

  coming-into-force date

  coming-into-force date[Repealed, SOR/2022-120, s. 36]

  former Rules

  former Rules means the Patent Rules as they read immediately before October 30, 2019. (anciennes règles)

• Marginal note:Interpretation

  (2) If the filing date of an application for a patent, other than a PCT national phase application, as determined in accordance with section 78.2 of the Act, precedes October 30, 2019, the filing date of that application is, for the purposes of these Rules, the filing date determined in accordance with that section.

Marginal note:Reissued patents

166 For greater certainty, for the purposes of this Part, a reissued patent is considered to be issued on the basis of the original application.

Marginal note:Application of subsection 3(1)

167 For greater certainty, subsection 3(1) applies in respect of any time limit fixed by the former Rules that continues to apply under these Rules.

DIVISION 2Rules in Respect of Category 1 Applications

Marginal note:Non-application of certain provisions of these Rules

• 168 (1) Sections 14, 47 to 51, 55, 56, 58 to 63, 65 and 74, subsection 86(1.1), subparagraphs 87(1)(a)(iii) and (b)(iii), sections 93 to 96, subsections 97(2) and (3) and sections 98 and 104 do not apply in respect of a category 1 application.

• Marginal note:Non-application of subsection 86(14)

  (2) Subsection 86(14) does not apply in respect of a category 1 application at any time at which it is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989.

• (3) [Repealed, SOR/2022-120, s. 37]

Marginal note:Application of certain provisions of former Rules

• 169 (1) Subject to subsection (3), sections 170, 171, 174, 175, 177, 181 and 183 to 186 of the former Rules continue to apply in respect of a category 1 application.

• Marginal note:Application of section 32 of former Rules

  (2) Section 32 of the former Rules continues to apply in respect of a category 1 application for which a notice of allowance was sent before October 30, 2019, other than such an application that is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, and is subsequently restored.

• Marginal note:Photographs

  (3) Paragraphs 177(1)(a), (b), (e) and (h) of the former Rules do not apply in respect of photographs provided in respect of a category 1 application.

• Marginal note:Application of section 179 of former Rules

  (4) Section 179 of the former Rules continues to apply in respect of a category 1 application, except that the reference to “the filing date and number of each application in a country other than Canada on which the applicant bases the claim” in that section is to be read as a reference to “the filing date and the name of the country of filing of each application that was filed in a country other than Canada on which the claim is based”.

Marginal note:Reference to “the Act”

170 A reference in section 42 and subsection 86(13) to “the Act”, in relation to a category 1 application, is to be read as a reference to “the Act as it read immediately before October 1, 1989”.

Marginal note:Final fee

171 With respect to a category 1 application,

• (a) the reference to “the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice” in subsections 86(1), (6), (10) and (12) is to be read as a reference to “the final fee set out in paragraph 6(b) of Schedule II to the former Rules within six months after the date of the notice”; and

• (b) the reference to “the small entity fee set out in paragraph 14(a) of Schedule 2”, “the standard fee set out in paragraph 14(a) of Schedule 2” and “the fee set out in paragraph 14(b) of Schedule 2” in subsection 87(1) is to be read as a reference to “the small entity fee set out in subparagraph 6(b)(i) of Schedule II to the former Rules”, “the standard fee set out in paragraph 6(b)(i) of Schedule II to the former Rules” and “the fee set out in subparagraph 6(b)(ii) of Schedule 2 to the former Rules”, respectively.

Marginal note:Rejection for defects

• 172 (1) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(2) of the former Rules, on or before the date set out in subsection (4) of this section, but the examiner, after receiving the reply, has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of any of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.

• Marginal note:Notice — application found allowable after final action

  (2) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(4) of the former Rules, on or before the date set out in subsection (4) of this section, if the examiner has reasonable grounds to believe that the application complies with the Act and these Rules and if the Commissioner has not sent a notice of allowance under subsection 30(5) of the former Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and must require the payment of the final fee set out in paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of that notice.

• Marginal note:Rejection not withdrawn after final action

  (3) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(4) of the former Rules, on or before the date set out in subsection (4) of this section, but the examiner, after that date, still has reasonable grounds to believe that the application does not comply with the Act or these Rules,

  • (a) if a notice was not sent under paragraph 30(6)(a) of the former Rules, the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;

  • (b) any amendments made during the period beginning on the date of the final action notice and ending on the date set out in subsection (4) of this section are considered never to have been made; and

  • (c) the application must be reviewed by the Commissioner.

• Marginal note:Date

  (4) For the purposes of subsections (1) to (3), the date is the later of

  • (a) the day that is six months after the date of the requisition referred to in subsection 30(2) or (4) of the former Rules, as applicable, and

  • (b) if the application is deemed to be abandoned under subsection 30(1) of the Act, as it read immediately before October 1, 1989, for the failure of the applicant to prosecute the application following the requisition made under subsection 30(2) or (4) of the former Rules, as applicable, the day on which the conditions for reinstatement set out in subsection 30(2) of the Act, as it read immediately before October 1, 1989, are met in respect of that abandonment.

• Marginal note:Notice — application found allowable after amendments

  (5) If the applicant of a category 1 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of amendments that have to be made and if a notice of allowance was not sent under that subsection, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and require the payment of the final fee set out in paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of the notice sent under this subsection.

• Marginal note:Non-application of paragraph (3)(b)

  (6) Paragraph (3)(b) does not apply in respect of an application for a patent that, before December 29, 2013, was rejected by an examiner under subsection 30(3) of the former Rules unless the rejection has been withdrawn.

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

  (7) Subsection 3(1) does not apply in respect of the time referred to in subsection (2) or (5).

Marginal note:No amendment after rejection

173 If a category 1 application is rejected by an examiner under subsection 172(1) of these Rules or subsection 30(3) of the former Rules, the specification and the drawings contained in the application must not be amended after the date prescribed by subsection 172(4) of these Rules, unless

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

• (b) the amendments made are those required in a notice sent under subsection 86(11) of these Rules or subsection 30(6.3) of the former Rules; or

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

Marginal note:Reference

174 The reference to “may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application” in paragraph 91(a) is to be read, in relation to a category 1 application, as a reference to “results from an amendment to the specification or drawings that is not prohibited by section 181 of the former Rules”.

Marginal note:Reference to subsection 28.4(2) of Act and paragraph 93(1)(b) of these Rules

175 The reference to “subsection 28.4(2) of the Act” in paragraph 92(c) and the reference to “paragraph 93(1)(b)” in paragraph 92(f), in relation to a category 1 application, are to be read as a reference to “section 179 of the former Rules” and “subsection 184(3) of the former Rules”, respectively.

Marginal note:Additional fee for restoration of application

176 The additional fee to be paid for the restoration of a category 1 application that was forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, is $200.

DIVISION 3[Repealed, SOR/2022-120, s. 39]

177 [Repealed, SOR/2022-120, s. 39]

178 [Repealed, SOR/2022-120, s. 39]

179 [Repealed, SOR/2022-120, s. 39]

180 [Repealed, SOR/2022-120, s. 39]

181 [Repealed, SOR/2022-120, s. 39]

182 [Repealed, SOR/2022-120, s. 39]

183 [Repealed, SOR/2022-120, s. 39]

184 [Repealed, SOR/2022-120, s. 39]

185 [Repealed, SOR/2022-120, s. 39]

186 [Repealed, SOR/2022-120, s. 39]

187 [Repealed, SOR/2022-120, s. 39]

DIVISION 4Rules in Respect of Category 3 Applications

Marginal note:Non-application of certain provisions of these Rules

• 188 (1) Subsections 73(1) and (4), 81(1), 84(2) and 103(2) and section 132 do not apply in respect of a category 3 application.

• Marginal note:Non-application of section 74

  (2) Section 74 does not apply in respect of a request for priority made in relation to a category 3 application before October 30, 2019.

• (3) [Repealed, SOR/2022-120, s. 40]

• Marginal note:Non-application of subsection 103(1)

  (4) Subsection 103(1) does not apply in respect of a category 3 application that has a presentation date before October 30, 2019.

• Marginal note:Non-application of section 104

  (5) Section 104 does not apply in relation to a category 3 application in respect of which an assignment was registered under subsection 49(2) of the Act, as it read immediately before October 30, 2019.

Marginal note:Application of section 26.1 of former Rules

• 189 (1) Section 26.1 of the former Rules continues to apply in respect of the time prescribed by section 98 of the former Rules in respect of a category 3 application.

• Marginal note:Application of section 32 of former Rules

  (2) Section 32 of the former Rules continues to apply in respect of a category 3 application for which a notice of allowance was sent before October 30, 2019 other than such an application that is deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before October 30, 2019, and is subsequently reinstated.

• Marginal note:Application of section 66 of the former Rules

  (3) Section 66 of the former Rules continues to apply in relation to a category 3 application in respect of which the applicant, before October 30, 2019, complied with the requirements of subsection 58(1) of the former Rules and, if applicable, with the requirements of subsection 58(2) of those Rules.

• Marginal note:Application of section 98 of former Rules

  (4) If, under section 78.51 or 78.52 of the Act, section 73 of the Act, as it read immediately before October 30, 2019, applies in respect of the abandonment of a category 3 application, section 98 of the former Rules continues to apply in respect of that abandonment.