Patent Rules (SOR/2019-251)

Marginal note:Representation — patent reissued before October 30, 2019

220 In respect of a patent that is reissued before October 30, 2019 for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

• (a) if, immediately before the original patent was granted, no patent agent residing in Canada was appointed in respect of the application on which the original patent was based and if the joint applicant who, immediately before the original patent was granted, was the authorized correspondent under the former Rules, is a patentee of the reissued patent before October 30, 2019,

  • (i) subsection 26(8) does not apply, and

  • (ii) subject to subsection 26(11), that applicant is deemed to be appointed as the common representative; and

• (b) in any other case,

  • (i) subsection 26(8) and paragraph 27(7)(a) do not apply,

  • (ii) any appointment of a patent agent by the patentees on or after October 30, 2019 may, despite subsection 27(3), be made only by a notice to that effect signed by all of the patentees and submitted to the Commissioner, and

  • (iii) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Representation — patent granted on or after October 30, 2019

221 In respect of a patent, other than a reissued patent, granted on or after October 30, 2019, on the basis of an application for a patent for which the filing date is before October 30, 2019, for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was granted, no common representative was appointed in respect of that application,

• (a) subsection 26(7) and paragraph 27(7)(a) do not apply;

• (b) any appointment of a patent agent on or after October 30, 2019 may, despite subsection 27(3), be made by the patentees only by a notice to that effect signed by all of the patentees and submitted to the Commissioner; and

• (c) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Representation — patent reissued on or after October 30, 2019

222 In respect of a patent that is reissued — on the basis of an application for a patent for which the filing date is before October 30, 2019 — on or after October 30, 2019 for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was reissued, no common representative was appointed in respect of the original patent,

• (a) subsection 26(8) and paragraph 27(7)(a) do not apply;

• (b) any appointment of a patent agent on or after October 30, 2019 may, despite subsection 27(3), be made by the patentees only by a notice to that effect signed by all of the patentees and submitted to the Commissioner; and

• (c) an appointment of a patent agent may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Non-application of section 37

223 Section 37 does not apply in respect of business before the Patent Office for the purpose of a procedure commenced before October 30, 2019.

Marginal note:Small entity declaration for patent or application

• 224 (1) A small entity declaration filed before October 30, 2019 in respect of a patent or an application for a patent in accordance with section 3.01 of the former Rules is considered to be filed in accordance with subsection 44(3) or 112(3) of these Rules, as applicable.

• Marginal note:Small entity declaration — patent

  (2) A small entity declaration filed in respect of a patent in accordance with section 3.02 of the former Rules before October 30, 2019 is considered to be filed in accordance with subsection 122(4) of these Rules.

Marginal note:Exception to section 54 — filing date before June 2, 2007

• 225 (1) In respect of an application for a patent, other than a PCT national phase application, that has a filing date before June 2, 2007, the applicant, instead of complying with the requirements of section 54, may comply with

  • (a) the requirements of section 37 of the former Rules;

  • (b) the requirements of section 77 of the Patent Rules, as they read immediately before October 1, 2010; or

  • (c) the requirements of sections 37 and 77 of the Patent Rules, as they read immediately before June 2, 2007.

• Marginal note:Exception — compliance with other requirements

  (2) In respect of a PCT national phase application for which the filing date is before June 2, 2007, the applicant may, instead of complying with the requirements of section 54, comply with the requirements of paragraph (1)(a), (b) or (c) or file a declaration as to the applicant’s entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17 of the Regulations under the PCT.

Marginal note:Exception to section 54 — filing date before October 1, 2010

• 226 (1) In respect of an application for a patent, other than a PCT national phase application, for which the filing date is June 2, 2007 or later but before October 1, 2010, the applicant, instead of complying with the requirements of section 54, may comply with

  • (a) the requirements of section 37 of the former Rules; or

  • (b) the requirements of section 77 of the Patent Rules, as they read immediately before October 1, 2010.

• Marginal note:Exception — compliance with other requirements

  (2) In respect of a PCT national phase application for which the filing date is June 2, 2007 or later but before October 1, 2010, the applicant may, instead of complying with the requirements of section 54, comply with the requirements of paragraph (1)(a) or (b) or file a declaration as to the applicant’s entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17 of the Regulations under the PCT.

Marginal note:Exception to section 54 — filing date before October 30, 2019

227 In respect of an application for a patent for which the filing date is October 1, 2010 or later but before October 30, 2019, the applicant, instead of complying with the requirements of section 54, may comply with the requirements of section 37 of the former Rules.

Marginal note:Clarification

228 For greater certainty, the dates prescribed by sections 69 and 113 do not include any dates that precede October 30, 2019.

Marginal note:Final fee paid before October 30, 2019

229 If, before October 30, 2019, the applicant of an application for a patent for which the filing date is before that date, paid, in respect of that application, the applicable final fee set out in item 6 of Schedule II to the former Rules and that fee was not refunded before that date,

• (a) the reference to “on or before the day on which the final fee set out in item 14 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” in subsection 73(5), paragraph 100(2)(a), section 105 and paragraph 106(a) is to be read, in respect of that application, as a reference to “on or before the day on which the applicable final fee set out in item 6 of Schedule II to the former Rules is paid or, if the final fee is refunded, on or before the day on which the final fee set out in item 14 of Schedule 2 is paid”; and

• (b) the reference to “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” in section 127 is to be read as “after the day on which the applicable final fee set out in item 6 of Schedule II to the former Rules is paid or, if the final fee is refunded, after the day on which the final fee set out in item 14 of Schedule 2 is paid”.

Marginal note:Notice of allowance considered not sent

230 For greater certainty, a notice of allowance is considered not to have been sent if it was deemed not to have been sent before October 30, 2019.

Marginal note:Non-application of section 89

231 Section 89 does not apply in respect of an application for a patent for which the presentation date preceded October 30, 2019.

Marginal note:Periods prescribed by subsection 128(1)

• 232 (1) For greater certainty, the periods prescribed by paragraph 128(1)(a), (b) or (d) do not include any period that begins less than six months after October 30, 2019.

• Marginal note:Periods prescribed by subsection 128(1)

  (2) A period prescribed by paragraph 128(1)(a) or (b) or paragraph 128(1)(d), as it read immediately before the day on which this subsection comes into force, that began before that day but did not end on or before that day is deemed to have ended on that day if, on or before that day,

  • (a) the small entity fee was paid even though the fee referred to in paragraph 128(1)(a) or that paragraph 128(1)(d) should have been paid, and a small entity declaration was 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;

  • (b) an insufficient amount was paid for the fee referred to in subsection 80(1) for the examination of the application of the patent and the Commissioner sent a notice to the applicant acknowledging that the request for examination was made in accordance with subsection 35(2) of the Act; or

  • (c) the Commissioner provided erroneous information in writing concerning the amount of a fee referred to in paragraph 128(1)(a) or that paragraph 128(1)(d) and the applicant or patentee paid an insufficient amount that was equal to the amount specified in the erroneous information.

Marginal note:Publication in Canadian Patent Office Record

233 For the purposes of paragraph 130(1)(c), an application that was advertised in the Canadian Patent Office Record before October 30, 2019 is considered to have been advertised on the website of the Canadian Intellectual Property Office on the day on which it was advertised in the Canadian Patent Office Record.

Marginal note:Non-application of subparagraph 154(3)(a)(i)

234 Subparagraph 154(3)(a)(i) does not apply in respect of an international application for which the international filing date, as defined in section 141, precedes October 30, 2019.

Marginal note:Exception to section 162

235 If the right of priority in respect of a previously regularly filed application, on which the request for priority in relation to a pending application is based, was restored under Rule 26bis.3 of the Regulations under the PCT before October 30, 2019, section 162 does not apply in respect of that previously regularly filed application.

Marginal note:Filing date before December 1, 2020

236 The fees set out in paragraph 8(e) of Schedule 2 do not apply in respect of an application for a patent for which the filing date is before December 1, 2020.

Marginal note:Non-application of paragraph 84(2)(c)

237 Paragraph 84(2)(c) does not apply in respect of a request for continued examination made before the day on which this section comes into force.