Patent Rules (SOR/2019-251)

Marginal note:Patent agent — member of firm

28.1 If all the patent agents at the same firm have been appointed under section 27 or 28, the following rules apply:

• (a) a patent agent who becomes a member of the firm after the appointment is deemed to be appointed beginning on the day on which they become a member of the firm;

• (b) a person who is a member of the firm who becomes a patent agent after the appointment is deemed to have been appointed beginning on the day on which they become a patent agent;

• (c) the appointment of a patent agent who ceases to be a member of the firm is deemed to be revoked on the day on which they cease to be a member of the firm; and

• (d) the appointment of a patent agent whose licence is suspended, revoked or surrendered is deemed to be revoked on the day on which their licence is suspended, revoked or surrendered.

Marginal note:Appointment document — one patent agent

• 29 (1) A document appointing one patent agent must include the name and postal address of that patent agent.

• Marginal note:Appointment document — all the patent agents

  (2) A document appointing all the patent agents at the same firm must include the name and postal address of the firm. An appointment document that includes only the name and postal address of the firm is sufficient to appoint all the patent agents at that firm.

Marginal note:Written communications

29.1 If all the patent agents at the same firm have been appointed or are deemed to have been appointed under section 27 or 28, any written communication sent by the Commissioner or the Patent Office to the firm is considered to have been sent to all of the patent agents at the firm.

Marginal note:Patent agent by default — transfer

30 The patent agent or all the patent agents at the same firm who were appointed, other than as an associate patent agent, to represent an applicant or patentee before the Patent Office are, unless otherwise indicated in a request to record a transfer under subsection 49(2) or (3) of the Act, deemed to have been appointed by the transferee in respect of the patent or the application that is the subject of the recording.

Marginal note:Notice requiring appointment of patent agent

31 If an applicant for a patent is required under subsection 27(2) to appoint a patent agent but no patent agent is appointed, the Commissioner must by notice to the applicant require that, not later than three months after the date of the notice, the applicant appoint a patent agent.

Marginal note:Successor patent agent

• 32 (1) A patent agent who, in respect of a patent or application for a patent, demonstrates to the Commissioner that they are the successor to a patent agent or all the patent agents at the same firm who were appointed under section 27 or 28 and who have since withdrawn from practice is deemed to be appointed under section 27 or 28, as the case may be, in respect of that patent or application.

• Marginal note:Successor patent agents

  (2) All the patent agents at the same firm who, in respect of a patent or application for a patent, demonstrate to the Commissioner that they are the successors to a patent agent or all the patent agents at the same firm who were appointed under section 27 or 28 and who have since withdrawn from practice are deemed to be appointed under section 27 or 28, as the case may be, in respect of that patent or application.

Representation

Marginal note:Effect of act by common representative

33 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to a common representative, has the effect of an act done by or in relation to all of the applicants or patentees.

Marginal note:Effect of act by patent agent

34 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to a patent agent, other than an associate patent agent, who is appointed in respect of that application or patent, has the same effect as an act done by or in relation to the applicant for a patent, a patentee or other person who appointed the patent agent.

Marginal note:Effect of act by associate patent agent

35 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to an associate patent agent appointed in respect of that application or patent, has the same effect as an act done by or in relation to the applicant for a patent, a patentee or other person who appointed the patent agent who appointed the associate patent agent.

Marginal note:Prosecuting or maintaining in effect application for patent

• 36 (1) Subject to subsections (2) to (5), only the following persons are authorized to act in any business before the Patent Office for the purpose of prosecuting or maintaining in effect an application for a patent:

  • (a) if, in respect of the application, a patent agent is appointed or there is a requirement under subsection 27(2) to appoint a patent agent, the patent agent who is appointed; and

  • (b) in any other case,

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

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

• Marginal note:Exceptions

  (2) For the purposes of filing an application for a patent, paying a fee under subsection 27(2) or section 27.1 of the Act, paying the additional fee for late payment referred to in subsection 154(4) of these Rules or complying with the requirements of subsection 154(1), (2) or (3) of these Rules,

  • (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and

  • (b) if there are joint applicants, they must be represented by one of the applicants or by a person authorized by one of the applicants.

• Marginal note:Exceptions

  (3) For the purpose of submitting a request to record a transfer under subsection 49(2) of the Act,

  • (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and

  • (b) if there are joint applicants,

    • (i) in the case where the transfer is a transfer of the right or interest of a single joint applicant, the joint applicants must be represented by that joint applicant or by the common representative, or by a person authorized by that joint applicant or by the common representative, and

    • (ii) in any other case, the joint applicants must be represented by the common representative or by a person authorized by the common representative.

• Marginal note:Exceptions

  (4) For the purposes of submitting a request to record a name change under section 125,

  • (a) if there is a single applicant, they must represent themselves or be represented by a person authorized by the applicant; and

  • (b) if there are joint applicants, they must be represented by the common representative or by a person authorized by the common representative.

• Marginal note:Exceptions

  (5) For the purposes of section 27.01 or 28.01 of the Act, for the purpose of paying a fee in respect of an application for a patent — other than a fee under subsection 27(2) or section 27.1 of the Act or a fee referred to in subsection 154(1), (2), (3) or (4) of these Rules — or for the purpose of taking any of the actions required by subparagraphs 73(3)(a)(i) to (iv) of the Act to reinstate an application for a patent deemed to be abandoned under paragraph 73(1)(c) of the Act,

  • (a) if there is a single applicant, they may represent themselves; and

  • (b) if there are joint applicants, they may be represented by the common representative.

Marginal note:Procedure relating to patent

• 37 (1) Subject to subsection (2), in any business before the Patent Office for the purpose of a procedure relating to a patent,

  • (a) if there is a single patentee, they must represent themselves or be represented by any person authorized by them; and

  • (b) if there are joint patentees,

    • (i) for the purpose of paying a fee under section 46 of the Act, the patentees must be represented by one of the patentees or by a person authorized by one of the patentees,

    • (ii) for the purpose of submitting a request to record a transfer under subsection 49(3) of the Act,

      • (A) in the case where the transfer is a transfer of the right or interest of a single joint patentee, the joint patentees must be represented by that joint patentee or by the common representative, or by a person authorized by that joint patentee or by the common representative, and

      • (B) in any other case, the joint patentees must be represented by the common representative or a person authorized by the common representative, and

    • (iii) for any other purpose, the patentees must be represented by the common representative or by a person authorized by the common representative.

• Marginal note:Exceptions

  (2) In any business before the Patent Office for the purposes of making observations under subsection 117.11(7), granting an additional term under section 46.1 of the Act, reissuing a patent under section 47 of the Act, making a disclaimer under section 48 of the Act, filing a reply under subsection 48.2(5) of the Act or participating in a re-examination proceeding under section 48.3 of the Act,

  • (a) if there is a single patentee, they must represent themselves or be represented by a patent agent who has been appointed in respect of that business; and

  • (b) if there are joint patentees, the patentees must be represented by the common representative or by a patent agent who has been appointed in respect of that business.

Marginal note:Clarification

38 For greater certainty, sections 33 to 37 do not apply to the act of signing

• (a) a small entity declaration;

• (b) a notice of appointment of a common representative or a patent agent;

• (c) a notice of revocation of an appointment of a patent agent; or

• (d) a document authorizing a foreign practitioner to appoint or revoke the appointment of a patent agent, have an interview with an examiner or sign a small entity declaration.

Marginal note:Interview with examiner

39 Only the following persons may have an interview with an examiner regarding an application for a patent:

• (a) if, in respect of that application, a patent agent is appointed or there is a requirement under subsection 27(2) to appoint a patent agent,

  • (i) the patent agent who is appointed, and

  • (ii) with the permission of the patent agent who is appointed,

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

    • (B) if there is a single applicant and a document authorizing a foreign practitioner to have an interview with an examiner is signed by the applicant, that foreign practitioner,

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

    • (D) if there are joint applicants and a document authorizing a foreign practitioner to have an interview with an examiner is signed by the common representative, that foreign practitioner; and

• (b) in any other case,

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

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

Marginal note:Notice of disregarded communication

• 40 (1) If, in any business for the purpose of prosecuting or maintaining in effect an application for a patent or for the purpose of a procedure relating to a patent, a joint applicant or joint patentee who is not the common representative of the joint applicants or joint patentees sends a written communication to the Commissioner in respect of any business for which the common representative is entitled to represent the applicants or the patentees, the Commissioner must by notice inform that joint applicant or joint patentee that the Commissioner will not have regard to that communication unless, not later than three months after the date of the notice, that joint applicant or joint patentee is appointed in accordance with paragraph 26(3)(a) to represent the applicants or patentees as the common representative and requests that the Commissioner have regard to the communication.

• Marginal note:Communication of notice

  (1.1) The notice referred to in subsection (1) must also be sent to the common representative of the joint applicants or joint patentees.

• Marginal note:Exception

  (2) Subsection (1) does not apply to a communication in respect of any business under subsection 36(2), (3) or (4) or to a communication in respect of any business for the purpose of a procedure relating to a patent, other than a communication in respect of business referred to in subsection 37(2).

• Marginal note:Communication deemed received

  (3) If, not later than three months after the date of the notice referred to in subsection (1), the joint applicant or joint patentee who sent a written communication to the Commissioner is appointed under paragraph 26(3)(a) to represent the applicants or patentees as their common representative and requests that the Commissioner have regard to the communication, the communication is deemed to have been received from the common representative on the date on which it was originally received from the joint applicant or joint patentee.

Marginal note:Notice of disregarded communication

• 41 (1) If a patent agent who is not appointed to represent an applicant or patentee in respect of a patent or an application for a patent communicates in writing with the Commissioner on behalf of that applicant or patentee for the purpose of prosecuting or maintaining in effect that application or for the purpose of a procedure relating to that patent and the communication identifies that patent agent, the Commissioner must by notice inform the patent agent that the Commissioner will not have regard to that communication unless, not later than three months after the date of the notice, the patent agent is appointed to represent that applicant or patentee in respect of that application or patent and requests that the Commissioner have regard to the communication.

• Marginal note:Communication of notice

  (1.1) The notice must also be sent to the applicant or to the patentee.

• Marginal note:Exception

  (2) Subsection (1) does not apply to a communication in respect of any business under subsection 36(2), (3) or (4) or to a communication in respect of any business for the purpose of a procedure relating to a patent, other than a communication in respect of any business referred to in subsection 37(2).

• Marginal note:Communication deemed received

  (3) If, not later than three months after the date of the notice referred to in subsection (1), the patent agent is appointed to represent that applicant or patentee in respect of that patent or application for a patent and requests that the Commissioner have regard to the communication, the communication is deemed to have been received from the applicant or patentee on the date on which the communication was originally received from the patent agent.