Patent Rules (SOR/2019-251)

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:Reissue, disclaimer or participation in re-examination

  (2) In any business before the Patent Office for the purpose of 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: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: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.

Marginal note:Named patent agent

• 41.1 (1) In any business before the Patent Office in respect of which a patent agent acts under subsection 36(1) or (5), or represents a patentee under subsection 37(2), written communications on behalf of the applicant or patentee must be submitted to the Commissioner or the Patent Office by a named patent agent.

• Marginal note:Notice

  (2) If the patent agent is not named, the Commissioner must by notice inform the sender that the Commissioner will not have regard to the communication unless, not later than three months after the date of the notice, the patent agent who submitted the communication provides their name to the Commissioner and requests that the Commissioner have regard to the communication.

• Marginal note:Date communication received

  (3) If the name of the patent agent and the request referred to in subsection (2) are provided to the Commissioner within the time limit set out in that subsection, the original communication is considered to have been received on the day on which it was actually received by the Commissioner or the Patent Office.

Government-owned Patents

Marginal note:Notice to applicant

42 If the Governor in Council orders, under subsection 20(17) of the Act, that an invention described in an application for a patent must be treated for the purposes of section 20 of the Act as if it had been assigned or agreed to be assigned to the Minister of National Defence, the Commissioner must, as soon as the Commissioner is informed of the order, notify the applicant.

Marginal note:Inspection of defence-related application for patent

43 The Commissioner must permit a public servant who is authorized in writing by the Minister of National Defence, or an officer of the Canadian Forces who is authorized in writing by the Minister of National Defence, to inspect a pending application for a patent that relates to an instrument or munition of war to do so and to obtain a copy of the application.

Presentation of Application for a Patent

General

Marginal note:Application fee

• 44 (1) For the purposes of subsection 27(2) of the Act, the prescribed application fee is

  • (a) the small entity fee set out in item 6 of Schedule 2, if the small entity status condition set out in subsection (2) is met and a small entity declaration is filed in respect of the application for a patent in accordance with subsection (3),

    • (i) on or before the filing date of the application or, in the case of a divisional application, on or before the presentation date of the divisional application, or

    • (ii) if a notice is required to be given under subsection 27(7) of the Act, before the notice is given or, if the notice has been given, not later than three months after the date of the notice; and

  • (b) in any other case, the standard fee set out in that item.

• Marginal note:Small entity status condition

  (2) The small entity status condition is that

  • (a) in respect of an application for a patent — other than a PCT national phase application or a divisional application — the applicant of the application on the filing date is, on that date, an entity that has 50 employees or less or is a university, other than

    • (i) an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees, or

    • (ii) an entity that has transferred or licensed, or has an obligation other than a contingent obligation to transfer or license, any right or interest in a claimed invention to an entity, other than a university, that has more than 50 employees;

  • (b) in respect of an international application, the applicant of the application on the national phase entry date is, on that date, an entity that has 50 employees or less or is a university, other than an entity referred to in subparagraph (a)(i) or (ii); and

  • (c) in respect of a divisional application, the applicable requirements of this subsection are met in respect of the original application.

• Marginal note:Small entity declaration

  (3) A small entity declaration must

  • (a) be filed with the Commissioner in the petition or in a document other than the abstract, the specification or the drawings, that identifies the application for a patent to which the declaration relates;

  • (b) contain a statement to the effect that the applicant believes that the small entity status condition set out in subsection (2) is met in respect of that application for a patent;

  • (c) be signed by a patent agent appointed in respect of that application or

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

    • (ii) if there is a single applicant and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the applicant and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,

    • (iii) if there are joint applicants, any one of the applicants, or

    • (iv) if there are joint applicants and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the applicants and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and

  • (d) indicate the name of the applicant and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

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

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