Patent Rules (SOR/2019-251)

Marginal note:Final fee

• 87 (1) The prescribed final fee in respect of an application for a patent is

  • (a) if the small entity status condition set out in subsection 44(2) is met and if a small entity declaration is filed in respect of the application in accordance with subsection 44(3) before the end of the applicable time for the payment of the fee, the sum of the following:

    • (i) the small entity fee set out in paragraph 14(a) of Schedule 2,

    • (ii) the fee set out in paragraph 14(b) of Schedule 2 for each page of specification and drawings in excess of 100 pages other than pages of a sequence listing submitted in electronic form, and

    • (iii) the small entity fee set out in paragraph 14(c) of Schedule 2 for each claim in excess of 20 that is included in the application at any time during the period beginning on the day after the day on which the request for examination is made or, if section 83.1 applies in respect of the application, on the day after the day on which the amendment referred to in that section is made and ending on the day on which the final fee is paid and in respect of which the fee set out in paragraph 10(b) of Schedule 2 was not paid in connection with the request for examination; and

  • (b) in any other case, the sum of the following:

    • (i) the standard fee set out in paragraph 14(a) of Schedule 2,

    • (ii) the fee set out in paragraph 14(b) of Schedule 2 for each page of specification and drawings in excess of 100 pages other than pages of a sequence listing submitted in electronic form, and

    • (iii) the standard fee set out in paragraph 14(c) of Schedule 2 for each claim in excess of 20 that is included in the application at any time during the period beginning on the day after the day on which the request for examination is made or, if section 83.1 applies in respect of the application, on the day after the day on which the amendment referred to in that section is made and ending on the day on which the final fee is paid and in respect of which the fee set out in paragraph 10(b) of Schedule 2 was not paid in connection with the request for examination.

• Marginal note:Claims defined in the alternative

  (1.1) A claim that defines the subject-matter of an invention in the alternative, including a dependent claim within the meaning of section 63 that refers to more than one preceding claim, counts as a single claim for the purposes of subparagraphs (1)(a)(iii) and (b)(iii).

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

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

Divisional Applications

Marginal note:Definition of one invention

88 For the purposes of section 36 of the Act, one invention includes a group of inventions linked in such a manner that they form a single general inventive concept.

Marginal note:Requirements

• 89 (1) An application for a patent is a divisional application only if

  • (a) the application on its presentation date contains a petition that includes a statement to the effect that the application is a divisional application that results from the division of an original application filed in Canada;

  • (b) the original application number is submitted to the Commissioner not later than three months after the presentation date;

  • (c) the applicant, or if there are joint applicants, at least one of the joint applicants, was an applicant of the original application at any time during the period beginning on the filing date of the original application and ending on the presentation date;

  • (d) the application on its presentation date contains one or more claims; and

  • (e) if the applicant of the original application is required, under subsection 15(2) or (3), to provide a translation in respect of that application, that applicant has provided the translation to the Commissioner not later than the presentation date.

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

  (2) Subsection 3(1) does not apply to the time referred to in paragraph (1)(b).

Marginal note:Time for filing if original application refused

90 Unless a shorter time is applicable under subsection 36(2), (2.1) or (3) of the Act, if an application for a patent is refused by the Commissioner under section 40 of the Act, the time for filing a divisional application resulting from the division of that application is any time before

• (a) if an appeal is not taken under section 41 of the Act, the end of a period of six months after the notice as provided for in section 40 of the Act is mailed;

• (b) if an appeal is taken under section 41 of the Act and no appeal is taken to the Federal Court of Appeal from the final judgment of the Federal Court on that appeal, the later of

  • (i) the end of the period referred to in paragraph (a), and

  • (ii) the end of a period of two months after the day on which final judgment is rendered in the appeal by the Federal Court or, if the appeal is discontinued, the end of a period of two months after the day on which the appeal is discontinued;

• (c) if an appeal is taken under section 41 of the Act and the final judgment of the Federal Court in that appeal is appealed to the Federal Court of Appeal and no appeal is taken to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal in that appeal, the later of

  • (i) the end of a period of two months after the day on which the final judgment of the Federal Court of Appeal is rendered in the appeal or, if the appeal to the Federal Court of Appeal is discontinued, the end of a period of two months after the day on which the appeal is discontinued, and

  • (ii) if an application is made in accordance with the Supreme Court Act for leave to appeal to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal, the end of a period of two months after the day on which the application is dismissed or granted; and

• (d) if an appeal is taken under section 41 of the Act and the final judgment of the Federal Court in that appeal is appealed to the Federal Court of Appeal and an appeal is taken to the Supreme Court of Canada from the final judgment of the Federal Court of Appeal in that appeal, the end of a period of two months after the day on which the final judgment of the Supreme Court is rendered in the appeal or, if the appeal to the Supreme Court is discontinued, the end of a period of two months after the day on which the appeal is discontinued.

Marginal note:Clarification

91 For greater certainty, the specification and the drawings contained in a divisional application, other than a divisional application resulting from a PCT national phase application, must not contain matter that is not in the specification and the drawings contained in the original application on its filing date, or if the original application is itself a divisional application, on its presentation date, unless

• (a) the matter may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application; or

• (b) it is admitted in the specification contained in the divisional application that the matter is prior art.

Marginal note:Actions considered taken — divisional application

92 If, on or before the presentation date of a divisional application, any of the following measures has been taken with respect to the original application, the same measure is considered to have been taken, with respect to the divisional application, on the date the action was taken in respect of the original application:

• (a) a small entity declaration has been filed;

• (b) a request for priority has been made and has not been withdrawn;

• (c) information required under subsection 28.4(2) of the Act has been submitted to the Commissioner in respect of a request for priority;

• (d) a copy or an English or French translation of a previously regularly filed application for a patent, or a certificate showing its filing date, has been submitted to the Commissioner;

• (e) a copy of a previously regularly filed application for a patent has been made available to the Commissioner in a digital library;

• (f) information required by paragraph 93(1)(b) in respect of a deposit of biological material has been submitted to the Commissioner; or

• (g) a request has been submitted under subsection 95(1).

Deposit of Biological Material

Marginal note:Conditions

• 93 (1) For the purpose of subsection 38.1(1) of the Act, the following conditions apply to a deposit of biological material:

  • (a) the deposit of biological material must be made by the applicant or their predecessor in title with an international depositary authority on or before the filing date of the application for a patent;

  • (b) the applicant must, before the day on which the application for a patent becomes open to public inspection at the Patent Office, inform the Commissioner of the name of the international depositary authority and the accession number given by the authority to the deposit;

  • (c) the information required by paragraph (b) must be included in the description;

  • (d) in the case where a sample of the biological material is transferred to a substitute authority under Rule 5 of the Regulations under the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by that authority not later than

    • (i) in respect of an application for a patent other than a PCT national phase application, three months after the day on which the authority issues a receipt, and

    • (ii) in respect of a PCT national phase application, the later of three months after the day on which the authority issues a receipt and three months after the national phase entry date of that application;

  • (e) in the case where the depositor is notified under Article 4 of the Budapest Treaty of the inability of the international depositary authority to furnish samples, a new deposit must be made in accordance with that Article; and

  • (f) in the case where a new deposit of the biological material is made with another international depositary authority under Article 4(1)(b)(i) or (ii) of the Budapest Treaty, the applicant or patentee must inform the Commissioner of the accession number given to the deposit by that authority not later than

    • (i) in respect of an application for a patent other than a PCT national phase application, three months after the day on which the authority issues a receipt, and

    • (ii) in respect of a PCT national phase application, the later of three months after the day on which the authority issues a receipt and three months after the national phase entry date of that application.

• Marginal note:PCT national phase application

  (1.1) In respect of an international application that has become a PCT national phase application and that is published by the International Bureau of the World Intellectual Property Organization under Article 21 of the Patent Cooperation Treaty on or before its national phase entry date, the requirement set out in paragraph (1)(b) is considered to be met only if the information referred to in that paragraph was furnished in accordance with the requirements of the Patent Cooperation Treaty before the day on which the international application is published.

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

  (2) Subsection 3(1) does not apply to the time referred to in paragraph (1)(b).

Marginal note:Inclusion of date of deposit of biological material

94 If a specification refers to a deposit of biological material and the deposit is taken into consideration by an examiner in determining whether the specification complies with subsection 27(3) of the Act and the date of that deposit is not already included in the description, the examiner may by notice requisition the applicant to amend the description to include the date of that deposit.

Marginal note:Request to furnish sample to independent expert

• 95 (1) If the specification contained in an application for a patent refers to a deposit of biological material, the applicant may, before the day on which the application becomes open to public inspection at the Patent Office, submit to the Commissioner a request that, until a patent has been issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, the Commissioner only authorize in respect of that application the furnishing of a sample of the deposited biological material to an independent expert nominated under section 96.

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

  (2) Subsection 3(1) does not apply to the time for submitting the request referred to in subsection (1).

Marginal note:Nomination of independent expert

• 96 (1) If an applicant submits a request under section 95, the Commissioner must, on the request of any person and with the agreement of the applicant, nominate an independent expert.

• Marginal note:No agreement on nomination

  (2) If the Commissioner and the applicant cannot agree on the nomination of an independent expert, the request under section 95 is considered not to have been submitted.

Marginal note:Form for submitting request

• 97 (1) The Commissioner must publish on the website of the Canadian Intellectual Property Office a form for submitting a request for the furnishing of a sample of deposited biological material, the contents of which must be the same as the contents of the form referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty.

• Marginal note:Certification

  (2) Subject to section 98, if a specification contained in a Canadian patent, or in an application for a patent filed in Canada that is open to public inspection at the Patent Office, refers to a deposit of biological material by the applicant and if a person submits a request to the Commissioner on the form referred to in subsection (1), the Commissioner must make the certification referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty in respect of that person if

  • (a) a patent has been issued on the basis of the application or the application has been refused, withdrawn or deemed to be abandoned and is no longer subject to reinstatement; or

  • (b) the Commissioner has received an undertaking by that person

    • (i) not to make any sample of biological material furnished by the international depositary authority or any material derived from such a sample available to any other person before either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, and

    • (ii) to use the sample of biological material furnished by the international depositary authority and any material derived from such a sample solely for the purpose of experiments that relate to the subject-matter of the application until either a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement.

• Marginal note:Copy of request and certification to be sent

  (3) Except in the case where subsection 98(2) applies, if the Commissioner makes a certification under subsection (2), the Commissioner must send a copy of the request together with the certification to the person who submitted the request.

Marginal note:Person authorized to submit request

• 98 (1) If an applicant submits a request under section 95, until a patent is issued on the basis of the application or the application is refused, withdrawn or deemed to be abandoned and no longer subject to reinstatement, a request under section 97 may only be submitted by an independent expert nominated under section 96.

• Marginal note:Copy of request and certification to be sent

  (2) If the Commissioner makes a certification under subsection 97(2) in respect of an independent expert nominated by the Commissioner, the Commissioner must send a copy of the request together with the certification to the applicant and to the person who requested the nomination of the expert.

Amendment to Specification and Drawings

Marginal note:No amendment before submission of translation

99 If an applicant is required to submit a translation under subsection 15(2) or (3), the specification and the drawings contained in the application for a patent must not be amended by the applicant before they submit the translation to the Commissioner.