Government of Canada / Gouvernement du Canada
Symbol of the Government of Canada

Search

Patent Rules (SOR/2019-251)

Full Document:  

Regulations are current to 2020-11-17 and last amended on 2019-10-30. Previous Versions

PART 3Transitional Provisions (continued)

DIVISION 6Other Rules (continued)

Marginal note:Extension of period — section 208

 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 — whether that time has expired or not — 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

 If, under paragraph 73(1)(a) of the Act, as it read immediately before the coming-into-force date, 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

 If, before the coming-into-force date, 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.

Marginal note:Communication sent before refusal

  •  (1) In respect of a communication in relation to an application preceding the coming-into-force date, or in relation to a patent granted on the basis of such an application, the reference to “four months” in subsections 11(1) and (2) is to be read as a reference to “six months” if the refusal to recognize the person to whom that communication is sent as a patent agent or an attorney occurred on the coming-into-force date or within six months following that date.

  • Marginal note:Communication sent before removal

    (2) In respect of a communication in relation to an application preceding the coming-into-force date, or in relation to a patent granted on the basis of such an application, the reference to “four months” in subsection 11(3) is to be read as a reference to “six months” if the name of the person to whom that communication is sent is removed from the register of patent agents on the coming-into-force date or within “six months” following that date.

Marginal note:Documents not in English or French

 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 181(1) or 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, 143 or 180 of the former Rules, in a language other than English or French.

Marginal note:Patent agent deemed to be appointed

 If, before the coming-into-force date, 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

 If, before the coming-into-force date, 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 preceding coming-into-force date

 In respect of an application preceding the coming-into-force date — other than a divisional application that has a presentation date on or after the coming-into-force date — 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 the coming-into-force date — and in respect of which subsection 26(9) does not apply,

  • (a) if, immediately before these Rules come into force, 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, immediately before these Rules come into force was the authorized correspondent under the former Rules, is deemed to be appointed as the common representative; and

  • (b) if, immediately before these Rules come into force, 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 the coming-into-force date 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 coming-into-force date

 In respect of a patent — other than a reissued patent — granted before the coming-into-force date 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 immediately before these Rules come into force,

    • (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 the coming-into-force date 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 coming-into-force date

 In respect of a patent that is reissued before the coming-into-force date 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 immediately before these Rules come into force,

    • (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 the coming-into-force date 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 coming-into-force date

 In respect of a patent — other than a reissued patent — granted on or after the coming-into-force date, on the basis of an application preceding the coming-into-force date, 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 the coming-into-force date 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.

 
Date modified: