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  • (a) a patent has been issued on the basis of the application or the application has been refused, withdrawn or deemed to be abandoned and is no longer subject to reinstatement; or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to any other person before either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, and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of the application until either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement.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a request under section 95, until a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, a request under section 97 may only be submitted by an independent expert nominated under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

• 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 is sent.

• Marginal note:Exception — obvious error

  (2) The specification and the drawings may be amended by the applicant on or before the day on which the final fee set out in item 13 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 if, from the specification and the drawings contained in the application for a patent on the day on which the notice of allowance was sent, it is obvious 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.

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 in name of applicant

104 An error in the name of an applicant in an application for a patent, other than a PCT national phase application, that arises from inadvertence, accident or mistake, without any fraudulent or deceptive intention, must be corrected by the Commissioner on the request of the person who submitted the application on their own behalf or on behalf of the applicant, 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 the request is made 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 in name of inventor

105 An error in the name of an inventor in an application for a patent must be corrected by the Commissioner on the request of the applicant if the correction changes the identity of the inventor and the request is made before the day on which a notice of allowance is sent.

Marginal note:Error in name of applicant or inventor

106 An error in the name of an applicant or an inventor in an application for a patent must be corrected by the Commissioner on the request of the applicant if the request is made on or before the day on which the final fee set out in item 13 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 the correction does not result in a change in their identity.

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 in the name of the patentee or an inventor included in the patent, if the correction does not change their identity; 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.