Patent Rules (SOR/2019-251)

Marginal note:Power to appoint associate patent agent

• 28 (1) A patent agent appointed by an applicant for a patent, a patentee or other person to represent them before the Patent Office in respect of a patent or an application for a patent may appoint one patent agent or all the patent agents at the same firm as an associate patent agent in respect of that patent or application.

• (2) [Repealed, SOR/2021-131, s. 8]

• Marginal note:Manner of appointment

  (3) The appointment of one patent agent or all the patent agents at the same firm as an associate patent agent 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 patent agent appointing the associate patent agent 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 if the petition is submitted by a patent agent;

  • (c) in respect of a PCT national phase application, in a notice to that effect submitted to the Commissioner by a patent agent 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 if the petition is submitted by a patent agent.

• Marginal note:Associate patent agent by default — patents

  (4) Any associate patent agent appointed in respect of an application for a patent under subsection (3) is 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 of appointment — one associate patent agent acting alone

  (5) The appointment, including a deemed appointment, of one patent agent as an associate patent agent in respect of a patent or an application for a patent is revoked if

  • (a) in the case where the associate patent agent was appointed by one patent agent who was appointed under subsection 27(3) or (4),

    • (i) a notice of revocation signed by the associate patent agent or the patent agent is submitted to the Commissioner,

    • (ii) the associate patent agent’s licence is suspended, revoked or surrendered, or

    • (iii) the appointment of the patent agent is revoked; and

  • (b) in the case where the associate patent agent was appointed by one of the patent agents at the same firm who were appointed under subsection 27(3) or (4),

    • (i) a notice of revocation signed by the associate patent agent or by one of the patent agents at the firm is submitted to the Commissioner,

    • (ii) the associate patent agent’s licence is suspended, revoked or surrendered, or

    • (iii) the appointment of all the patent agents at the firm is revoked.

• Marginal note:Revocation of appointment — associate patent agent

  (5.1) The appointment, including a deemed appointment, as an associate patent agent, of all the patent agents at the same firm in respect of a patent or an application for a patent is revoked if

  • (a) in the case where they were appointed by one patent agent who was appointed under subsection 27(3) or (4),

    • (i) a notice of revocation signed by one of the patent agents at the firm acting as an associate patent agent or by the patent agent who appointed them is submitted to the Commissioner,

    • (ii) the licence of each of the patent agents acting as an associate patent agent is suspended, revoked or surrendered, or

    • (iii) the appointment of the patent agent is revoked; and

  • (b) in the case where they were appointed by one of the patent agents at the same firm who were appointed under subsection 27(3) or (4),

    • (i) a notice of revocation signed by one of the patent agents at the firm acting as an associate patent agent, or by one of the patent agents at the firm that appointed them, is submitted to the Commissioner,

    • (ii) the licence of each of the patent agents acting as an associate patent agent is suspended, revoked or surrendered, or

    • (iii) the appointment under subsection 27(3) or (4) of all the patent agents at the firm is revoked.

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.