Patent Rules (SOR/2019-251)

Marginal note:Application of certain provisions of former Rules to patents granted on basis of category 3 application

• 207 (1) Subsection 3(8) and sections 100 and 101 of the former Rules and item 31 of Schedule II to those Rules continue to apply in respect of the applicable fee payable to maintain the rights accorded by a patent granted on the basis of a category 3 application, if the time — not including the period of grace — referred to in that item for the payment of that fee ends before October 30, 2019.

• Marginal note:Extension of time

  (2) The Commissioner is authorized to extend the time for payment of the fee referred to in subsection 3(8) of the former Rules in respect of a patent issued on the basis of a category 3 application — after that time, including a period of grace, has expired — 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:Maintenance fee — patent

208 In respect of a patent granted on the basis of a category 1 application, the reference to “set out in item 25 of Schedule 2” in subsection 112(1) is to be read as a reference to “set out in item 1 of Schedule 3”.

Marginal note:Patent not invalid

• 209 (1) 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 58 of the former Rules was not paid.

• Marginal note:Exception

  (2) Subsection (1) does not apply in respect of a patent that was granted before October 30, 2019 or a reissued patent if the original patent was granted before that date.

DIVISION 6Other Rules

Marginal note:Exception — national phase entry date

• 210 (1) For the purposes of these Rules, if the applicant of an international application for which the international filing date, as defined in section 141, precedes October 30, 2019 has, before October 30, 2019, complied with the requirements of subsection 58(1) and, if applicable, subsection 58(2) of the former Rules, the national phase entry date in respect of that application is the date on which the applicant complied with those requirements, or, if the applicant complied with those requirements on different dates, the latest of those dates.

• Marginal note:Fee considered paid

  (2) If the Commissioner has, under section 190 of these Rules or subsection 26(3) of the former Rules, extended the time for the payment of a fee referred to in subsection 3(5) or (7) of the former Rules, and the fee is paid before the end of the extended period, for the purposes of subsection (1), that fee is considered to have been paid on the day on which the amount of the small entity fee was paid.

• Marginal note:Exception — national phase entry date

  (3) In these Rules, if the applicant of an international application for which the international filing date, as defined in section 141, precedes October 30, 2019 has, on or after October 30, 2019, complied with the requirements of subparagraphs 154(3)(a)(ii) to (iv) and paragraph 154(3)(b), the national phase entry date in respect of that application is the date on which the applicant complied with those requirements, or, if the applicant complied with those requirements on different dates, the latest of those dates.

• Marginal note:Small entity declaration

  (4) For the purpose of subsection (3), an applicant is not considered to have paid the fee referred to in clause 154(3)(a)(iii)(A) or 154(3)(b)(i)(A) or (ii)(A) until the small entity declaration has been filed.

Marginal note:Extension of time — section 208

211 The Commissioner is authorized to extend the time for the payment of a fee referred to in subsection 112(1), as modified by section 208, 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) are met.

Marginal note:Extension of period established by Commissioner

212 If, under paragraph 73(1)(a) of the Act, as it read immediately before October 30, 2019, the Commissioner established a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is authorized to extend that period for up to six months after the requisition was made — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee set out in item 1 of Schedule 2 is paid.

Marginal note:Extension of time fixed by former Rules

213 If, before October 30, 2019, a requisition referred to in section 23, 25, 37 or 94 of the former Rules was sent by notice by the Commissioner, the Commissioner is authorized to extend the time period to reply in good faith under that section to the requisition — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee referred to in item 1 of Schedule 2 to these Rules is paid.

214 [Repealed, SOR/2023-113, s. 10]

Marginal note:Documents not in English or French

215 Despite section 15, the Commissioner must have regard to any document or part of a document that is submitted or made available in a language other than English or French under subsection 196(1) of these Rules, or provided under subsection 29(1) or paragraph 58(1)(a) of the former Rules or filed under section 89 or 180 of the former Rules, in a language other than English or French.

Marginal note:Patent agent deemed to be appointed

216 If, before October 30, 2019, a patent agent was appointed in the petition or in a notice to that effect signed by the applicant and submitted to the Commissioner, the appointment of the patent agent is deemed to have been made in accordance with section 27.

Marginal note:Associate patent agent deemed to be appointed

217 If, before October 30, 2019, an associate patent agent was appointed in the petition or in a notice that was signed by the patent agent who appointed the associate patent agent and submitted to the Commissioner, the appointment of the associate patent agent is deemed to have been made in accordance with section 28.

Marginal note:Representation — application filed before October 30, 2019

218 In respect of an application for a patent for which the filing date is before October 30, 2019 — other than a divisional application that has a presentation date on or after October 30, 2019 — for which there are joint applicants and in respect of which no common representative is appointed under paragraph 26(3)(a) or (c), in respect of which no correction or decision referred to in subsection 26(6) was made — other than a decision made before October 30, 2019 — and in respect of which subsection 26(9) does not apply,

• (a) if, before October 30, 2019, no patent agent residing in Canada is appointed

  • (i) subsections 26(4) to (6) do not apply, and

  • (ii) subject to subsection 26(11), the joint applicant who, before October 30, 2019 was the authorized correspondent under the former Rules, is deemed to be appointed as the common representative; and

• (b) if, before October 30, 2019, a patent agent residing in Canada is appointed,

  • (i) if the appointment of that patent agent has been revoked, the joint applicant whose name appears first when listed in alphabetical order at the time of the revocation is, subject to subsection 26(11), deemed to be appointed as the common representative, and

  • (ii) in any other case,

    • (A) subsections 26(4) to (6) and paragraph 27(7)(a) do not apply,

    • (B) any appointment of a patent agent by the applicants 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 applicants 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 applicants or by that patent agent.

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

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

  • (i) subsection 26(7) 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(7) 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 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.