Patent Rules (SOR/2019-251)

Marginal note:Dependent claim

• 63 (1) Subject to subsection (2), a claim that includes all the features of one or more other claims (referred to in this section as a “dependent claim”) must refer by number to the other claim or claims and must state the additional features claimed.

• Marginal note:Reference to preceding claim

  (2) A dependent claim may only refer to a preceding claim or claims.

• Marginal note:Reference to claims in the alternative only

  (3) A dependent claim that refers to more than one claim must refer to those claims in the alternative only.

• Marginal note:Limitations

  (4) A dependent claim is considered to include all the limitations contained in the claim to which it refers or, if the dependent claim refers to more than one claim, any particular alternative of the dependent claim is considered to include all the limitations contained in the particular claim in respect of which it is considered.

Non-compliant Application for a Patent

Marginal note:Prescribed date — requirements not met

64 For the purposes of subsection 27(6) of the Act, the prescribed date is the last day of a period of three months after the date of the notice referred to in that subsection.

Marginal note:Notice

65 If, after the filing date, an application for a patent does not comply with the Act or these Rules, the Commissioner may by notice require the applicant to modify the application in order to meet those requirements not later than three months after the date of the notice.

Marginal note:Prescribed date — application fee not paid

• 66 (1) For the purposes of subsection 27(7) of the Act, the prescribed date is the last day of a period of three months after the date of the notice referred to in that subsection.

• Marginal note:Application considered withdrawn

  (2) If an applicant fails to comply with a notice given under subsection 27(7) of the Act, the application for a patent is considered to be withdrawn.

Reference to Previously Filed Application for a Patent

Marginal note:Prescribed period

• 67 (1) For the purpose of section 27.01 of the Act, the prescribed period begins on the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act and ends at the earlier of

  • (a) the end of a period of two months after that date or, if a notice is sent under subsection 28(2) of the Act, the earlier of

    • (i) the end of a period of two months after the date of the notice, and

    • (ii) the end of a period of six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act, and

  • (b) the filing date.

• Marginal note:Prescribed requirements

  (2) The prescribed requirements for the purposes of section 27.01 of the Act are the following:

  • (a) the statement referred to in subsection 27.01(1) of the Act must indicate the name of the country or office of filing of the previously filed application for a patent and

    • (i) if the number of the previously filed application for a patent is known to the applicant or to a patent agent appointed in respect of the application, the statement must indicate the number of the previously filed application, and

    • (ii) if the number of the previously filed application for a patent is not known to the applicant or to a patent agent appointed in respect of the application, the statement must indicate

      • (A) the provisional number for the previously filed application given by that office,

      • (B) the date on which the previously filed application was sent to that office, and the statement must be accompanied by a copy of the request portion of the application, or

      • (C) the reference number given to the previously filed application by the applicant and indicated in it, the name and postal address of the applicant, the title of the invention and the date on which the previously filed application was sent to that office; and

  • (b) if the previously filed application for a patent was not filed in Canada, the applicant must, not later than two months after the date of the submission of that statement, either

    • (i) submit to the Commissioner a copy of the previously filed application for a patent, or

    • (ii) make a copy of the previously filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose and inform the Commissioner that it is so available.

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

  (3) Subsection 3(1) does not apply in respect of the times referred to in subsection (1) or (2).

Maintenance Fees — Application for a Patent

Marginal note:Prescribed fee

• 68 (1) Subject to subsection (2), for the purposes of subsection 27.1(1) of the Act, the prescribed fee to maintain an application for a patent in effect is, for an anniversary date set out item 8 of Schedule 2, other than such an anniversary date that, in the case of a PCT national phase application, falls before the national phase entry date of that application,

  • (a) the small entity fee set out in that item for that anniversary date, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)

    • (i) on or before that anniversary date, or

    • (ii) if a notice is required to be sent under paragraph 27.1(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of a period of six months after that anniversary date and the end of a period of two months after the date of the notice; and

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

• Marginal note:Exception

  (2) For the purposes of subsection 27.1(1) of the Act, the prescribed fee to maintain a divisional application in effect is, for the period beginning on its filing date and ending on its presentation date, the total of

  • (a) the small entity fees set out in item 8 of Schedule 2 for the anniversary dates falling in that period, if the small entity status condition set out in subsection 44(2) is met and a small entity declaration is filed in respect of the application in accordance with subsection 44(3)

    • (i) on or before the presentation date, or

    • (ii) if a notice is required to be sent under paragraph 27.1(2)(b) of the Act, before the notice is sent or, if the notice is sent, before the later of the end of a period of six months after the presentation date and the end of a period of two months after the date of the notice, and

  • (b) in any other case, the standard fees set out in that item for the anniversary dates falling in that period.

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

  (3) Subsection 3(1) does not apply in respect of the times referred to in subsection (1) or (2).

Marginal note:Dates

69 For the purposes of subsection 27.1(1) and paragraph 73(1)(c) of the Act, the prescribed dates are

• (a) for a fee referred to in subsection 68(1) of these Rules, the anniversary date for which it is paid; and

• (b) for the fee referred to in subsection 68(2) of these Rules, the presentation date of the divisional application.

Marginal note:Late fee

70 For the purposes of subsection 27.1(2) of the Act, the prescribed late fee is the fee set out in item 9 of Schedule 2.

Filing Date

Marginal note:Prescribed documents and information

71 The documents and information prescribed for the purposes of subsection 28(1) of the Act are

• (a) an explicit or implicit indication that the granting of a Canadian patent is being sought;

• (b) information allowing the identity of the applicant to be established;

• (c) information allowing the Commissioner to contact the applicant; and

• (d) a document, in any language, that on its face appears to be a description.

Addition to Specification or Addition of Drawing

Marginal note:Notice of missing parts of application

• 72 (1) If, within two months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act, the Commissioner finds that a part of the description appears to be missing from the application for a patent, or that the application refers to a drawing that appears to be missing from the application, the Commissioner must by notice inform the applicant accordingly.

• Marginal note:Prescribed period for addition

  (2) For the purposes of subsection 28.01(1) of the Act, the additions referred to in that subsection may be made not later than two months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act or, if the Commissioner notifies the applicant under subsection (1), before the earlier of

  • (a) the end of a period of two months after the date of the notice, and

  • (b) the end of a period of six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act.

• Marginal note:Prescribed Requirements

  (3) For the purposes of paragraph 28.01(2)(d) of the Act, the prescribed requirements are that the applicant, within the period prescribed by subsection (2),

  • (a) if the previously regularly filed application for a patent was not filed in Canada, must either

    • (i) submit to the Commissioner a copy of that application, or

    • (ii) make a copy of that application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose and inform the Commissioner that it is so available;

  • (b) if that previously regularly filed application for a patent is partly or entirely in a language other than English or French, must submit to the Commissioner a translation in English or French of any part of the application that is in a language other than English or French; and

  • (c) must submit to the Commissioner an indication as to where, in that previously regularly filed application for a patent or in the translation referred to in paragraph (b), the addition is included.

• Marginal note:Prescribed period for withdrawal

  (4) For the purposes of subsection 28.01(2) of the Act, the addition may be withdrawn not later than two months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Act or, if the Commissioner notifies the applicant under subsection (1), not later than two months after the date of the notice.

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

  (5) Subsection 3(1) does not apply in respect of the times referred to in this section.

• Marginal note:Exceptions

  (6) Subsection 28.01(1) of the Act does not apply to a divisional application filed under subsection 36(2) or (2.1) of the Act or to an application for a patent in respect of which a statement is submitted under section 27.01 of the Act.

• Marginal note:Prohibited addition

  (7) An applicant must not, under subsection 28.01(1) of the Act, add to the claims included in their application for a patent.

Request for Priority

Marginal note:Requirements

• 73 (1) For the purposes of subsection 28.4(2) of the Act, the request for priority must be made in the petition of the pending application for a patent, or in a document other than the abstract, the specification or the drawings included in that application, before the earlier of

  • (a) the later of

    • (i) the end of a period of 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request is based, and

    • (ii) the end of a period of four months after the filing date of the pending application, 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, unless that approval is withdrawn in time to permit the Commissioner to stop technical preparations to open the application to public inspection.

• Marginal note:Time to submit information

  (2) The information required under subsection 28.4(2) of the Act must be submitted to the Commissioner within the time prescribed by subsection (1).

• Marginal note:PCT national phase application

  (2.1) For greater certainty, in respect of an international application that has become a PCT national phase application, a priority claim made in accordance with the requirements of the Patent Cooperation Treaty before the application’s national phase entry date is considered to be a request for priority made in accordance with subsection (1), and the applicant is considered to have submitted the information required under subsection 28.4(2) of the Act in accordance with subsection (2).

• Marginal note:Requirement

  (3) A request for priority in respect of a pending application for a patent may be based on a previously regularly filed application only if the filing date of the pending application is, or under subsection 28.4(6) of the Act is deemed to be, within 12 months after the filing date of the previously regularly filed application.

• Marginal note:Correction — error in filing date

  (4) An error in a filing date submitted under subsection 28.4(2) of the Act may be corrected on request submitted before the earlier of

  • (a) the end of the time prescribed by subsection (1), as determined using the corrected filing date, and

  • (b) the end of the time prescribed by subsection (1), as determined using the uncorrected filing date.

• Marginal note:Correction — name or number

  (5) An error in the name of a country or office of filing or in the number of an application for a patent submitted under subsection 28.4(2) of the Act may be corrected on request submitted on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again.

• Marginal note:Withdrawal of request for priority

  (6) If a request for priority in respect of a previously regularly filed application for a patent is withdrawn before the end of a period of 16 months after the filing date of that application, the time prescribed by subsection (1) must be determined as if the request for priority had never been made on the basis of that application.

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

  (7) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

Marginal note:Requirements

• 74 (1) If an applicant for a patent has requested priority in respect of a pending application for a patent on the basis of one or more previously regularly filed applications for a patent — other than an application for a patent previously regularly filed in Canada — the applicant must, not later than the day referred to in subsection (2), with respect to each previously regularly filed application,

  • (a) submit to the Commissioner a copy of the previously regularly filed application certified by the patent office with which it was filed and a certificate from that office showing the filing date; or

  • (b) make a copy of the previously regularly filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose and inform the Commissioner that it is so available.

• Marginal note:Date

  (2) For the purposes of subsection (1), the day is the latest of

  • (a) the last day of a period of 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request for priority is based,

  • (b) the last day of a period of four months after the filing date of the pending application for a patent, and

  • (c) if the pending application for a patent is a PCT national phase application, the national phase entry date of that application.

• Marginal note:Withdrawal of request for priority

  (3) If a request for priority is withdrawn with respect to a previously regularly filed application for a patent before the end of a period of 16 months after the filing date of that application, the time prescribed by subsection (1) must be determined as if the request for priority had never been made on the basis of that application.

• Marginal note:Notice

  (4) If the applicant does not comply with the requirements of paragraph (1)(a) or (b) within the time prescribed by subsection (1), the Commissioner must by notice require the applicant to comply with the requirements of paragraph (1)(a) or (b) not later than two months after the date of the notice.

• Marginal note:Applicant considered to comply

  (5) If the applicant complies with the requirements of paragraph (1)(a) or (b) after the time prescribed by subsection (1) but before a notice is sent under subsection (4) or, if a notice is sent, not later than two months after the date of the notice, the applicant is considered to have complied with subsection (1).

• Marginal note:Request for priority considered withdrawn

  (6) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than two months after the date of the notice referred to in subsection (4), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless

  • (a) before the end of the time prescribed by subsection (1), a request is made to the patent office where the previously regularly filed application was filed to provide the copy and certificate referred to in paragraph (1)(a); and

  • (b) not later than two months after the date of the notice referred to in subsection (4), the applicant submits to the Commissioner a request that the Commissioner restore the right of priority on the basis of that previously regularly filed application and a statement indicating the patent office to which the request referred to in paragraph (a) was made and the date of that request.

• Marginal note:Applicant considered to comply

  (7) If the conditions set out in paragraphs (6)(a) and (b) are met in respect of a previously regularly filed application for a patent, the applicant is considered to have complied with subsection (1) in respect of that application.

• Marginal note:Submission of copy and certificate

  (8) If the conditions set out in paragraphs (6)(a) and (b) are met in respect of a previously regularly filed application for a patent and if the patent office where that application was filed provides the copy and certificate referred to in paragraph (1)(a), the applicant or the patentee, as applicable, must submit the copy and certificate to the Commissioner not later than three months after the day on which they were provided.

• Marginal note:Request for priority considered withdrawn

  (9) If the applicant or patentee fails to comply with subsection (8) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in that subsection in respect of that application.

• Marginal note:Divisional application

  (10) The applicant of a divisional application is considered to have complied with subsection (1) in respect of a previously regularly filed application for a patent if, on or before the presentation date of the divisional application, the applicant of the original application is considered to have complied with subsection (1) in respect of that previously regularly filed application.

• Marginal note:Request for priority

  (11) A request for priority in respect of a divisional application is considered to have been withdrawn in respect of a previously regularly filed application for a patent if, in respect of the original application, a request for priority is, on or before the presentation date of the divisional application, considered to have been withdrawn under subsection (6) or (9) in respect of that previously regularly filed application.

• Marginal note:Exception

  (12) Subsections (1) to (11) do not apply in respect of a previously regularly filed application on the basis of which an applicant requests priority, if the pending application for a patent is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application and if the requirements of Rule 17.1(a), (b) or (b-bis) of the Regulations under the PCT are complied with in respect of that previously regularly filed application.