Patent Rules (SOR/2019-251)

Marginal note:Extension of time

190 The Commissioner is authorized to extend, in respect of a category 3 application, the time referred to in the former Rules for payment of the fee referred to in subsection 3(3), (5) or (7) of the former Rules or the time referred to in subsection 199(2) or (5) of these Rules for the payment of the final fee, after the expiry of that time, if the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) of these Rules are met.

Marginal note:Prescribed date — withdrawal of request for priority

191 For the purposes of subsection 10(4) of the Act, if a request for priority that was made in respect of a category 3 application has been withdrawn with respect to a previously regularly filed application for a patent before October 30, 2019, the prescribed date is, despite section 17, the later of

• (a) the earlier of

  • (i) the day on which a period of 16 months after the filing date of the previously regularly filed application expires, and

  • (ii) if the request for priority is based on more than one previously regularly filed application, the day on which a period of 16 months after the earliest of the filing dates of those applications expires, and

• (b) if the Commissioner is able to stop the technical preparations to open the category 3 application to public inspection before the expiry of the confidentiality period referred to in subsection 10(2) of the Act, the day on which the Commissioner stops those preparations.

Marginal note:Prescribed date — withdrawn application

192 If a category 3 application is withdrawn before October 30, 2019, for the purposes of subsection 10(5) of the Act, the prescribed date is, despite section 18 of these Rules, the day that is two months before the expiry date of the confidentiality period referred to in subsection 10(2) of the Act or, if the Commissioner is able to stop the technical preparations to open the application to public inspection at a subsequent date preceding the expiry of that period, that subsequent date.

Marginal note:Exception to subsection 50(1)

193 In respect of a category 3 application, the applicant may comply with the requirements of subsection 73(1) of the former Rules instead of the requirements of subsection 50(1) of these Rules.

Marginal note:Exception to section 58

194 In respect of a category 3 application for which the filing date was before June 2, 2007, the applicant may comply with the requirements of sections 111 to 131 of the Patent Rules, as they read immediately before June 2, 2007, instead of the requirements of section 58 of these Rules.

Marginal note:Requirements for request for priority

• 195 (1) For the purposes of subsection 28.4(2) of the Act, a request for priority in respect of a category 3 application must be made in the petition of that application or in a separate document, before the later of the end of

  • (a) a period 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request is based, and

  • (b) a period four months after the filing date of the category 3 application.

• Marginal note:Time prescribed by subsection 73(1)

  (2) With respect to a request for priority made in relation to a category 3 application, the reference to “the time prescribed by subsection (1)” in subsections 73(2) and (6) is to be read as a reference to “the time prescribed by subsection 195(1)”.

• Marginal note:Correction — error in filing date

  (3) An error in a filing date submitted under subsection 28.4(2) of the Act in relation to a request for priority in respect of a category 3 application may be corrected on request submitted before the earliest of

  • (a) the end of the period referred to in subsection (1), as determined using the corrected filing date,

  • (b) the end of the period referred to in subsection (1), as determined using the uncorrected filing date, and

  • (c) if applicable, the day on which the applicant submits their approval, under subsection 10(2) of the Act, for the category 3 application to be open to public inspection before the expiry of the confidentiality period, unless that approval is withdrawn in time to permit the Commissioner to stop the technical preparations to open the application to public inspection.

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

  (4) Subsection 3(1) does not apply to the time referred to in subsection (1).

Marginal note:Notice requiring application to be made accessible

• 196 (1) If, for the purpose of examining a pending category 3 application in respect of which a request for priority was made before October 30, 2019, the examiner takes into account a previously regularly filed application for a patent — other than such an application that was filed in Canada — on which the request for priority is based, the examiner may by notice require the applicant of the pending application to do one of the following not later than four months after the date of the notice:

  • (a) to submit to the Commissioner a copy of that previously regularly filed application, certified by the patent office where it was filed, as well as a certificate from that office indicating the filing date; or

  • (b) to make a copy of that previously regularly filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose, and inform the Commissioner that it is so available.

• Marginal note:Request for priority considered withdrawn

  (2) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than four months after the date of the notice referred to in subsection (1), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless, before the end of that time,

  • (a) a request is made to the patent office where the previously regularly filed application was filed to provide the copy and certificate referred to in paragraph (1)(a); and

  • (b) the applicant submits to the Commissioner a request that the Commissioner restore the right of priority on the basis of that previously regularly filed application and a statement indicating the patent office to which the request referred to in paragraph (a) was made and the date of that request.

• Marginal note:Applicant considered to comply

  (3) If the conditions set out in paragraphs (2)(a) and (b) are met by the applicant in respect of a previously regularly filed application for a patent, the applicant is considered to have complied with subsection (1) in respect of that application.

• Marginal note:Submission of copy and certificate

  (4) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a previously regularly filed application for a patent and if the patent office where that application was filed provides the copy and certificate referred to in paragraph (1)(a), the applicant or the patentee, as applicable, must submit the copy and certificate to the Commissioner not later than three months after the day on which they were provided.

• Marginal note:Request for priority considered withdrawn

  (5) If the applicant or patentee fails to comply with subsection (4) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in that subsection in respect of that application.

• Marginal note:Exception

  (6) Subsections (1) to (5) do not apply in respect of a previously regularly filed application on the basis of which an applicant requests priority if the pending category 3 application is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application and if the requirements of Rule 17.1(a), (b) or (b-bis) of the Regulations under the PCT are complied with in respect of that previously regularly filed application.

Marginal note:Prescribed time — subsection 35(2) of Act

• 197 (1) For the purposes of subsection 35(2) of the Act, in respect of a category 3 application, the prescribed time for making a request for examination and for paying the fee is any time before

  • (a) in the case of such an application that is not a divisional application, the end of a period of five years after the filing date of the application; and

  • (b) in the case of such an application that is a divisional application, the later of

    • (i) the end of the time that is applicable under this subsection in respect of the original application, and

    • (ii) the end of a period of three months after the presentation date of the divisional application or, if the presentation date precedes October 30, 2019, the end of a period of six months after the presentation date of the divisional application.

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

  (2) Subsection 3(1) does not apply to the times prescribed by subsection (1).

Marginal note:Exception to subsection 84(1)

198 If a request is made by an applicant under subsection 84(1) in relation to a category 3 application, the Commissioner must not, despite that subsection, advance the examination of that application out of its routine order or, if the examination has been advanced, must return it to its routine order if

• (a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application;

• (b) after April 30, 2011, the Commissioner has, under subsection 26(1) of the former Rules, extended the time fixed for doing anything in respect of the application;

• (c) after April 30, 2011, the application is or was deemed to be abandoned under

  • (i) subsection 73(1) of the Act, or

  • (ii) subsection 73(1) of the Act, as it read immediately before October 30, 2019; or

• (d) on or after October 30, 2019, the application is or was deemed to be abandoned under subsection 73(2) of the Act.

Marginal note:Rejection for defects

• 199 (1) If an applicant of a category 3 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 3 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, and 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 require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of notice sent under this subsection.

• Marginal note:Rejection not withdrawn after final action

  (3) If an applicant of a category 3 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 to that application 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 earlier of

    • (i) 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

    • (ii) the last day of the period determined by the Commissioner, if any, under paragraph 73(1)(a) of the Act, as it read immediately before October 30, 2019, and

  • (b) if the category 3 application is deemed to be abandoned under paragraph 73(1)(a) of the Act, as it read immediately before October 30, 2019, for failure to reply in good faith to a 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 73(3) of the Act, as it read immediately before October 30, 2019, are met in respect of that abandonment.

• Marginal note:Notice — application found allowable after amendments

  (5) If the applicant of a category 3 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of specific 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 that the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of 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

200 If a category 3 application is rejected by an examiner under subsection 199(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 199(4) of these Rules, 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) 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:Request to furnish sample to independent expert

• 201 (1) A notice referred to in subsection 104(4) of the former Rules that was filed in respect of a category 3 application is considered to be a request referred to in section 95 of these Rules.

• Marginal note:Independent expert considered to be nominated

  (2) An independent expert who was nominated under subsection 109(1) of the former Rules is considered to be nominated under section 96 of these Rules.