Patent Rules (SOR/2019-251)

Claims

Marginal note:Form

60 The claims must be clear and concise and must be fully supported by the description independently of any document referred to in the description.

Marginal note:Numbering of claims

61 If there is more than one claim, the claims must be numbered consecutively in Arabic numerals beginning with the number “1”.

Marginal note:No references to description or drawings

• 62 (1) Subject to subsections (2) to (4), the claims must not, except when necessary, rely, in respect of the features of the invention, on references to the description or the drawings and, in particular, they must not rely on such references as “as described in Part of the description” or “as illustrated in figure of the drawings”.

• Marginal note:Reference characters

  (2) If the application for a patent contains drawings, the features mentioned in the claims may be followed by the reference characters, placed between parentheses, that appear in the drawings and relate to those features.

• (3) [Repealed, SOR/2022-120, s. 10]

• Marginal note:Deposit of biological material

  (4) If the description refers to a deposit of biological material, the claims may refer to that deposit.

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.