Patent Rules (SOR/2019-251)

Communications

Marginal note:Written communications to Commissioner

6 Written communications intended for the Commissioner or the Patent Office must be addressed to the “Commissioner of Patents”.

Marginal note:Postal address

• 7 (1) A person who is doing business before the Patent Office must provide the Commissioner with their postal address and a written communication sent by the Commissioner or the Patent Office to that person at that address is, unless the communication is withdrawn, considered to have been sent to that person on the date that it bears.

• Marginal note:Email address

  (2) If a person who is doing business before the Patent Office provides the Commissioner with their email address and authorizes the sending of communications to that address, a written communication sent by the Commissioner or the Patent Office as an email attachment to that person at that address is, unless the communication is withdrawn, considered to have been sent to that person on the date borne by the communication.

Marginal note:One patent or application for patent per communication

• 8 (1) A written communication intended for the Commissioner or the Patent Office must not relate to more than one patent or one application for a patent.

• Marginal note:Exceptions

  (2) Subsection (1) does not apply in respect of a written communication relating to

  • (a) a change in a name or an address;

  • (b) a transfer;

  • (c) a request to register a document;

  • (d) a fee to maintain in effect an application for a patent or the rights accorded by a patent;

  • (e) an appointment, or revocation of an appointment, of a patent agent; or

  • (f) a correction of an error, if the error and correction are the same in each patent or application for a patent.

Marginal note:Minimum content of written communications — applications

• 9 (1) A written communication in respect of an application for a patent that is intended for the Commissioner or the Patent Office must include the name of the applicant and the application number or, if the application number is not known, information that allows the application to be identified.

• Marginal note:Minimum content of written communications — patents

  (2) A written communication in respect of a patent that is intended for the Commissioner or the Patent Office must include the name of the patentee and the patent number.

Marginal note:Manner of submitting documents, information or fees

• 10 (1) Unless they are submitted by electronic means under subsection 8.1(1) of the Act, any documents, information or fees must be submitted to the Commissioner or the Patent Office by physical delivery to the Patent Office or to an establishment that is designated by the Commissioner as being accepted for that purpose.

• Marginal note:Date of receipt — physical delivery to Patent Office

  (2) Documents, information or fees that are submitted to the Commissioner or the Patent Office by physical delivery to the Patent Office are deemed to have been received by the Commissioner

  • (a) if they are delivered when the Office is open to the public, on the day on which they are delivered; and

  • (b) if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.

• Marginal note:Date of receipt — physical delivery to designated establishment

  (3) Documents, information or fees that are submitted to the Commissioner or the Patent Office by physical delivery to a designated establishment are deemed to have been received by the Commissioner

  • (a) if they are delivered when the establishment is open to the public,

    • (i) in the case where the Patent Office is open to the public for all or part of the day on which they are delivered, on that day, and

    • (ii) in any other case, on the first day on which the Patent Office is next open to the public; and

  • (b) if they are delivered when the establishment is closed to the public, on the first day on which the Patent Office is next open to the public that falls on or after the day on which the establishment is next open to the public.

• Marginal note:Date of receipt — submission by electronic means

  (4) Documents, information or fees that are submitted by electronic means under subsection 8.1(1) of the Act are deemed to have been received by the Commissioner on the day on which, according to the local time of the place where the Patent Office is located, the Patent Office receives them.

Marginal note:Communication sent — suspension, revocation or surrender

11 Despite sections 34 and 35, if a patent agent’s licence is suspended, revoked or surrendered, any communication respecting a patent or an application for a patent that is sent by the Commissioner or the Patent Office to that patent agent is considered not to have been sent to the patentee or applicant if

• (a) it is sent within four months before the date of the suspension, revocation or surrender and no reply is provided before that date; or

• (b) it is sent on the date of the suspension, revocation or surrender.

Marginal note:Acknowledgment by Commissioner

12 A written communication submitted to the Commissioner in respect of a filing under section 34.1 of the Act and a written communication submitted to the Commissioner before the granting of a patent with the stated or apparent intention of protesting against the granting of that patent must be acknowledged, but information must not be given as to the action taken unless the application for the patent is open to public inspection at the Patent Office.

Presentation of Documents to Commissioner or Patent Office

Marginal note:Manner of submission

• 13 (1) Subject to subsection (2), documents submitted in paper form in connection with a patent and an application for a patent must

  • (a) be submitted on sheets of white paper that are free of creases and folds and that are 21.6 cm x 27.9 cm (8.5” x 11”) or 21 cm x 29.7 cm (A4 format);

  • (b) be submitted in a manner that permits direct reproduction by the Patent Office; and

  • (c) be free of interlineations, cancellations or corrections.

• Marginal note:Exception

  (2) Certified copies of documents and documents concerning transfers referred to in section 49 of the Act may be submitted on sheets of paper that are not larger than 21.6 cm x 35.6 cm (8.5” x 14”).

Marginal note:Layout

• 14 (1) Subject to subsection (2), the contents of each page of a document must be in an upright position.

• Marginal note:Exception

  (2) If it aids in presentation, figures, tables and chemical or mathematical formulas may appear sideways.

Marginal note:Documents in English or French

• 15 (1) All documents or information submitted or made available to the Commissioner or the Patent Office must be in English or French, except for

  • (a) a document submitted or made available under paragraph 67(2)(b) or 72(3)(a) or subsection 74(1);

  • (b) the specification and the drawings included in an application for a patent on its filing date that are contained in a document referred to in paragraph 71(d);

  • (c) a document submitted under paragraph 85(1)(b);

  • (d) a copy of an international application submitted under paragraph 154(1)(a);

  • (e) text matter contained in a sequence listing; or

  • (f) a document or information that is deemed to have been received by the Commissioner under section 156.

• Marginal note:Translation — previously filed application for patent

  (2) If a copy of a previously filed application for a patent is submitted or made available under paragraph 67(2)(b) and all or part of that application is in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of the application or part of the application in question.

• Marginal note:Translation — specification and drawings

  (3) If all or part of the text matter of the specification or the drawings that are contained in a document referred to in paragraph 71(d) that is submitted for the purposes of subsection 28(1) of the Act are in a language other than English or French, the applicant must submit to the Commissioner an English or French translation of that text matter.

• Marginal note:Sequence listing — English and French

  (3.1) If a sequence listing contains text matter that is both in English and in French, only the following version of the text matter is taken into account for the purpose of interpreting the scope of protection sought or obtained:

  • (a) if the sequence listing contains an indication that either English or French is the original language of that text matter, the version that is in that original language; and

  • (b) in any other case, the version that is in the same language as the claims.

• Marginal note:Sequence listing — other language

  (3.2) Language-dependent free text that is contained in a sequence listing and that is in a language other than English or French is not taken into account for the purpose of interpreting the scope of protection sought or obtained.

• Marginal note:Notice requiring translation

  (4) If an applicant does not submit a translation required by subsection (2) or (3), the Commissioner must by notice require the applicant to submit the translation to the Commissioner not later than two months after the date of the notice.

• Marginal note:Translation replaces original

  (5) A translation submitted under subsection (2) or (3), or submitted after the notice referred to in subsection (4) is sent, replaces the text matter that was in a language other than English or French.

• Marginal note:Restriction

  (6) A translation of all or part of the text matter in a specification or a drawing, submitted under subsection (2) or (3), or submitted after the notice referred to in subsection (4) is sent, must not contain any matter not reasonably to be inferred from the specification or the drawings contained in the application on its filing date.

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

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

Confidentiality

Marginal note:Information respecting application for patent

16 Unless otherwise required by law, the Commissioner and the Patent Office must not provide any information in respect of an application for a patent that is not open to public inspection at the Patent Office to any person other than

• (a) the applicant or, if there are joint applicants, any of the applicants;

• (b) a patent agent appointed in respect of that application; or

• (c) a person authorized by

  • (i) the applicant, if there is a single applicant,

  • (ii) the common representative, if there are joint applicants, or

  • (iii) a patent agent appointed in respect of that application.

Marginal note:Prescribed date — withdrawal of request for priority

17 For the purposes of subsection 10(4) of the Act, if a request for priority is withdrawn with respect to a previously regularly filed application for a patent, the prescribed date is the earlier of

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

• (b) 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.