Patent Rules (SOR/2019-251)

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for a patent to be open to public inspection before the expiry of the confidentiality period, unless that approval is withdrawn in time to permit the Commissioner to stop technical preparations to open the application to public inspection.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.

Marginal note:Withdrawal of request for priority

• 75 (1) For the purposes of subsection 28.4(3) of the Act, a request for priority may be withdrawn by filing a request to that effect with the Commissioner.

• Marginal note:Effective date

  (2) The effective date of the withdrawal of a request for priority is the date on which the request is received by the Commissioner.

Marginal note:Notice to submit translation

• 76 (1) If a previously regularly filed application for a patent in respect of which a request for priority in respect of a pending application for a patent is based is partly or entirely in a language other than English or French and if, for the purposes of examining the pending application, an examiner takes into account the previously regularly filed application, the examiner may by notice require the applicant of the pending application to submit to the Commissioner an English or French translation of the whole or a specified part of the previously regularly filed application not later than four months after the date of the notice.

• Marginal note:Translation not accurate

  (2) If the examiner has reasonable grounds to believe that a translation submitted under subsection (1) is not accurate, the examiner may by notice require the applicant of the pending application for a patent to submit to the Commissioner not later than four months after the date of the notice either

  • (a) a statement by the translator that, to the best of the translator’s knowledge, the translation is accurate; or

  • (b) a new English or French translation, as applicable, together with a statement by the translator that, to the best of the translator’s knowledge, the new translation is accurate.

• Marginal note:Request for priority considered withdrawn

  (3) If the applicant of the pending application for a patent does not comply with a notice under subsection (1) or (2) 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 subsection (1) or (2), as applicable, in respect of that previously regularly filed application.

Restoration of Right of Priority

Marginal note:Prescribed time

• 77 (1) For the purposes of paragraph 28.4(6)(b) of the Act,

  • (a) in respect of a pending application, or a co-pending application, that is not a PCT national phase application, the applicant must meet the conditions set out in subparagraphs 28.4(6)(b)(i) to (iii) of the Act not later than two months after the filing date of the pending application or the co-pending application, as the case may be; and

  • (b) in respect of a pending application, or a co-pending application, that is a PCT national phase application,

    • (i) the applicant must meet the conditions referred to in subparagraphs 28.4(6)(b)(i) and (ii) of the Act not later than one month after the national phase entry date of that application, and

    • (ii) the applicant must meet the condition referred to in subparagraph 28.4(6)(b)(iii) of the Act before the earlier of

      • (A) the end of the time prescribed by subsection 73(1), and

      • (B) the end of one month after the national phase entry date of that application.

• Marginal note:Prescribed Requirements

  (2) For the purposes of subparagraph 28.4(6)(b)(iii) of the Act, the prescribed requirements are that the applicant

  • (a) must make a request for priority in the petition or in a document other than the abstract, the specification or the drawings; and

  • (b) must submit to the Commissioner the filing date and the name of the country or office of filing of the previously regularly filed application for a patent.

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

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