Patent Rules (SOR/2019-251)

Marginal note:Prescribed date — withdrawn application

18 For the purposes of subsection 10(5) of the Act, the prescribed date is the earlier of

• (a) the day that is two months before the expiry date of the confidentiality period referred to in subsection 10(2) of the Act, and

• (b) if applicable, the day on which the applicant submits their approval under subsection 10(2) of the Act for the application for a patent to be open to public inspection before the expiry of the confidentiality period.

19 [Repealed, SOR/2021-131, s. 6]

20 [Repealed, SOR/2021-131, s. 6]

21 [Repealed, SOR/2021-131, s. 6]

22 [Repealed, SOR/2021-131, s. 6]

23 [Repealed, SOR/2021-131, s. 6]

24 [Repealed, SOR/2021-131, s. 6]

25 [Repealed, SOR/2021-131, s. 6]

Appointment of Common Representative

Marginal note:Power of joint applicants to appoint common representative

• 26 (1) If, in respect of an application for a patent, there are joint applicants, one applicant may be appointed by the other applicants as their common representative.

• Marginal note:Power of joint patentees to appoint common representative

  (2) If, in respect of a patent, there are joint patentees, one patentee may be appointed by the other patentees as their common representative.

• Marginal note:Manner of appointment

  (3) The appointment of a common representative must be made by one of the following methods:

  • (a) in respect of a patent or an application for a patent, in a notice to that effect that is signed by the other applicants or patentees and submitted to the Commissioner;

  • (b) in respect of an application for a patent — other than a divisional application or an international application — that includes a petition on the filing date, in that petition; and

  • (c) in respect of a PCT national phase application, in a notice to that effect that is submitted to the Commissioner on or before the national phase entry date of that application.

• Marginal note:Common representative by default — application for patent

  (4) Subject to subsections (6), (9) and (11), in respect of an application for a patent — other than a divisional application — in relation to which there are joint applicants and no common representative is appointed under subsection (3), the following person is deemed to be appointed as the common representative:

  • (a) in respect of an application for a patent, other than a PCT national phase application,

    • (i) in the case where the application included a petition on the filing date, the first person named as an applicant in that petition,

    • (ii) in the case where, on the filing date, the application did not include a petition but did include a single other document naming the joint applicants, the joint applicant whose name appears first in that document, and

    • (iii) in any other case, the joint applicant whose name appears first when listed in alphabetical order on the filing date; and

  • (b) in respect of a PCT national phase application,

    • (i) if joint applicants are named in the corresponding request under Article 4 of the Patent Cooperation Treaty, if more than one applicant complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2), and if the first person named as an applicant in that request is one of those applicants, the first person named as an applicant in that request, and

    • (ii) in any other case, the joint applicant who complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2), and whose name appears first when listed in alphabetical order.

• Marginal note:Common representative by default — divisional application

  (5) Subject to subsections (6), (9) and (11), in respect of a divisional application, in relation to which there are joint applicants and no common representative is appointed under paragraph (3)(a), the following person is deemed to be appointed as the common representative:

  • (a) if, at the end of the day on the presentation date of the divisional application, the person who was the common representative in respect of the original application was an applicant of the divisional application, that person; and

  • (b) in any other case, the first person named as an applicant in the petition contained in the divisional application on its presentation date.

• Marginal note:Common representative by default — correction or decision

  (6) Subject to subsections (9) and (11), in respect of an application for a patent in relation to which there are joint applicants and no common representative is appointed under subsection (3), if a correction has been made with respect to the naming of applicants under section 104 or subsection 154(6) and the correction has changed the identity of the applicants, or if a decision is made by the Commissioner under subsection 31(2), (3) or (4) of the Act, other than a decision refusing an application under one of those subsections, the joint applicant whose name appears first when listed in alphabetical order after that correction or decision — or if there is more than one correction or decision, or both a correction and a decision, after the most recent of those corrections or decisions — is deemed to be appointed as the common representative.

• Marginal note:Common representative by default — patent

  (7) Subject to subsections (9) and (11), in respect of a patent — other than a reissued patent — in relation to which there are joint patentees and no common representative is appointed under paragraph (3)(a), the person who, immediately before the patent was granted, was the common representative in respect of the application on the basis of which the patent was granted, is deemed to be appointed as the common representative in respect of the patent.

• Marginal note:Common representative by default — reissued patent

  (8) Subject to subsections (9) and (11), in respect of a reissued patent, in relation to which there are joint patentees and no common representative is appointed under paragraph (3)(a), the person who was the common representative in respect of the original patent immediately before the patent was reissued is deemed to be appointed as the common representative in respect of the reissued patent.

• Marginal note:Common representative by default — transfer of rights of single applicant or patentee

  (9) Subject to subsection (11), in the case where, under section 49 of the Act, the Commissioner, on or after the applicable date referred to in subsection (10), recorded the transfer of all or part of the rights of an applicant in an application for a patent or all or part of the rights of a patentee in a patent, as set out in the records of the Patent Office immediately before the transfer is recorded, that applicant was the only applicant of the application immediately before the transfer was recorded, or that patentee was the only patentee of the patent immediately before the transfer was recorded, no other person has been a single applicant of that application or a single patentee of that patent since that transfer was recorded and no common representative has been appointed under subsection (3) in respect of that application or that patent, the following person is deemed to be appointed as the common representative in respect of that patent or application:

  • (a) if, immediately after the transfer is recorded, the person who transferred those rights is still an applicant of the application or a patentee of the patent, that person; and

  • (b) if, immediately after the transfer is recorded, the person who transferred those rights is no longer an applicant of the application or a patentee of the patent, the transferee whose name appears first in the request to record the transfer.

• Marginal note:Applicable date

  (10) For the purposes of subsection (9), the applicable date is

  • (a) in respect of an application for a patent, other than a PCT national phase application or a divisional application, the filing date of the application;

  • (b) in respect of a PCT national phase application, the national phase entry date;

  • (c) in respect of a divisional application, the presentation date of the application;

  • (d) despite paragraphs (a) to (c), in respect of an application in relation to which one or more corrections or decisions referred to in subsection (6) have been made, the date of that correction or decision or, if there is more than one correction or decision, or both a correction and a decision, the date of the most recent of those corrections or decisions;

  • (e) in respect of a patent, other than a reissued patent, the date on which the patent was granted; and

  • (f) in respect of a reissued patent, the date on which the patent was reissued.

• Marginal note:Common representative by default — transfer of rights of common representative

  (11) If, under section 49 of the Act, the Commissioner records the transfer of all of the rights of a common representative in a patent or an application for a patent, as set out in the records of the Patent Office immediately before the transfer is recorded, and, immediately after the transfer is recorded, there is still more than one applicant for the patent or more than one patentee for the patent but no other common representative is appointed under paragraph (3)(a), the following person is deemed to be appointed as the common representative in respect of that patent or application:

  • (a) if the rights of the common representative are transferred to a single person, that person; and

  • (b) if the rights of the common representative are transferred to more than one person, the transferee whose name appears first in the request to record the transfer.

• Marginal note:Revocation of appointment

  (12) An appointment of a common representative, including a deemed appointment, is revoked by the subsequent appointment of another common representative under paragraph (3)(a) or subsection (11).

Appointment of Patent Agents

Marginal note:Power to appoint patent agent

• 27 (1) An applicant for a patent, a patentee or other person may appoint either one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of a patent or an application for a patent.

• Marginal note:Mandatory appointment of patent agent

  (2) An applicant for a patent must appoint one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of their application for a patent if

  • (a) the application is filed by a person other than the inventor;

  • (b) there is more than one inventor and the application is not filed jointly by all of the inventors; or

  • (c) a transfer, in whole or in part, of the application has been recorded by the Commissioner under section 49 of the Act.

• Marginal note:Manner of appointment

  (3) The appointment of one patent agent or all the patent agents at the same firm by an applicant for a patent or a patentee must be made by one of the following methods:

  • (a) in respect of a patent or an application for a patent, in a notice to that effect that is submitted to the Commissioner and signed by

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

    • (ii) if there is a single applicant or patentee and a document authorizing a foreign practitioner to appoint a patent agent is signed by the applicant or patentee and submitted at the same time to the Commissioner, that foreign practitioner,

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

    • (iv) if there are joint applicants or patentees and a document authorizing a foreign practitioner to appoint a patent agent is signed by the common representative and submitted at the same time to the Commissioner, that foreign practitioner;

  • (b) in respect of an application for a patent — other than a divisional application or an international application — that includes a petition on the filing date, in that petition;

  • (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner on or before the national phase entry date of that application; and

  • (d) in respect of a divisional application, in the petition included in the application on its presentation date.

• Marginal note:Manner of appointment by another person

  (4) The appointment, other than as an associate patent agent, of one patent agent or all the patent agents at the same firm, by a person other than an applicant for a patent or a patentee to represent them before the Patent Office in respect of a patent or an application for a patent must be made in a notice to that effect submitted to the Commissioner and signed by

  • (a) that person; or

  • (b) if a document signed by that person authorizing a foreign practitioner to appoint a patent agent is submitted at the same time to the Commissioner, that foreign practitioner.

• Marginal note:Consent to appointment

  (5) If a person, other than a patent agent, submits to the Commissioner a document appointing, other than as an associate patent agent, one patent agent or all the patent agents at the same firm, the appointment is not effective until evidence of consent to that appointment by that one patent agent or by any of the patent agents at that firm is submitted to the Commissioner.

• Marginal note:Patent agent by default — patent

  (6) The patent agent or all the patent agents at the same firm appointed in respect of an application for a patent under subsection 27(3) or (4) are deemed, unless the appointment document indicates otherwise, to have also been appointed in respect of any patent granted on the basis of the application.

• Marginal note:Revocation — appointment by applicant or patentee

  (7) The appointment, including a deemed appointment, of one patent agent or all the patent agents at the same firm in respect of a patent or an application for a patent by an applicant for a patent or a patentee is revoked if

  • (a) a notice to that effect is submitted to the Commissioner and signed by that one patent agent or any of the patent agents at that firm or by

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

    • (ii) if there is a single applicant or patentee and a document authorizing a foreign practitioner to revoke the appointment is signed by the applicant or patentee and is submitted at the same time to the Commissioner, that foreign practitioner,

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

    • (iv) if there are joint applicants or patentees and a document signed by the common representative authorizing a foreign practitioner to revoke the appointment is submitted at the same time to the Commissioner, that foreign practitioner; or

  • (b) the licence of that one patent agent, or each of the patent agents at that firm, is suspended, revoked or surrendered.

• Marginal note:Revocation — appointment by another person

  (8) The appointment, including a deemed appointment, other than as an associate patent agent, of one patent agent or all the patent agents at the same firm, in respect of a patent or an application for a patent by a person other than an applicant for a patent or a patentee is revoked if

  • (a) a notice to that effect, signed by that person, by that one patent agent or by any of the patent agents at that firm, is submitted to the Commissioner;

  • (b) a document signed by that person authorizing a foreign practitioner to revoke the appointment is submitted to the Commissioner at the same time as a notice revoking the appointment signed by that foreign practitioner; or

  • (c) the licence of that one patent agent, or each of the patent agents at that firm, is suspended, revoked or surrendered.