Patent Rules (SOR/2019-251)

Marginal note:Divisional application — within 12 months

78 Paragraph 28.4(6)(b) of the Act does not apply in respect of a divisional application, in relation to a previously regularly filed application, if the filing date of the original application is deemed under subsection 28.4(6) of the Act to be within 12 months after the filing date of that previously regularly filed application for a patent.

Request for Examination

Marginal note:Contents of request

79 A request for examination of an application for a patent, referred to in subsection 35(1) of the Act, must contain

• (a) the name and postal address of the person making the request;

• (b) the name of the applicant, if the person making the request is not the applicant; and

• (c) the application number or other information sufficient to identify the application.

Marginal note:Fee for examination of application

• 80 (1) For the purposes of subsection 35(1) of the Act, the prescribed fee for the examination of an application for a patent is

  • (a) the small entity fee set out in subparagraph 10(a)(i) or (ii) of Schedule 2, as applicable, and, for each claim in excess of 20 that is included in the application on the day on which the request for examination is made, the small entity fee set out in paragraph 10(b) of that Schedule, 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) within the applicable time prescribed by section 81, or

    • (ii) if a notice is required to be sent under paragraph 35(3)(b) of the Act, before the notice is sent or, if the notice has been sent, before the end of two months after the date of the notice; and

  • (b) in any other case, the standard fee set out in subparagraph 10(a)(i) or (ii) of Schedule 2, as applicable, and, for each claim in excess of 20 that is included in the application on the day on which the request for examination is made, the standard fee set out in paragraph 10(b) of that Schedule.

• 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 subsection (1).

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

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

Marginal note:Prescribed time — subsection 35(2) of Act

• 81 (1) For the purposes of subsection 35(2) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before

  • (a) in respect of an application for a patent other than a divisional application, the end of a period of four years after the filing date of the application; and

  • (b) in respect of a divisional application, the later of

    • (i) the end of the time that is applicable under this subsection in respect of the original application, and

    • (ii) the end of a period of three months after the presentation date of the divisional application.

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

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

Marginal note:Late fee

82 For the purposes of subsection 35(3) of the Act, the prescribed late fee is the fee set out in item 11 of Schedule 2.

Marginal note:Prescribed time — subsection 35(5) and paragraph 73(1)(e) of Act

• 83 (1) For the purposes of subsection 35(5) and paragraph 73(1)(e) of the Act, the prescribed time for making a request for examination and for paying the fee is any time before the end of a period of three months after the date of the notice referred to in that subsection or that paragraph.

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

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

Marginal note:Date of payment

83.1 If an amount paid for the examination of an application for a patent is less than the prescribed fee set out in subsection 80(1) and an amendment is made to the application on or after the day on which the request for examination is made to reduce the number of claims such that the amount paid is greater than or equal to the amount of that prescribed fee, the fee is considered to have been paid on the day on which the amendment is made.

Examination

Marginal note:Advancing examination

• 84 (1) In respect of an application for a patent that is open to public inspection at the Patent Office, the Commissioner must advance out of its routine order the examination of the application under subsection 35(1) of the Act on the request of

  • (a) any person, if they pay the fee set out in item 12 of Schedule 2 and file with the Commissioner a statement indicating that failure to advance the examination of the application is likely to prejudice that person’s rights; or

  • (b) the applicant, if the applicant files with the Commissioner a statement indicating that the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or to conserve the natural environment or natural resources.

• Marginal note:Exception

  (2) In respect of a request made under subsection (1) by an applicant, the Commissioner must not advance the examination of the application for a patent out of its routine order or, if the examination is advanced, must return it to its routine order if

  • (a) the Commissioner has, under subsection 3(1), extended the time fixed for doing anything in respect of the application; or

  • (b) the application is or was deemed to be abandoned.

Marginal note:Notice — invention in foreign application

• 85 (1) If, in the course of examining an application for a patent, an examiner has reasonable grounds to believe that an application for a patent disclosing the same invention has been filed, in or for any country other than Canada, by an inventor of that invention or a person claiming through them, the examiner may by notice requisition the applicant

  • (a) to submit the following information or, if any of the information is not known to the applicant, to so indicate:

    • (i) any prior art cited in respect of the foreign application for a patent,

    • (ii) the application number of the foreign application for a patent, the filing date and, if the patent has been granted, the patent number, and

    • (iii) particulars of any opposition, re-examination, impeachment or similar proceedings in respect of the foreign application or any patent granted on the basis of that application;

  • (b) to submit a copy of any document related to the information referred to in paragraph (a) or, if the document is not available to the applicant, to so indicate; and

  • (c) to submit an English or French translation of any document, or part of a document, related to the information referred to in paragraph (a), that is not in either English or French or, if such a translation is not available to the applicant, to so indicate.

• Marginal note:Notice — invention previously published or patented

  (2) If, in the course of examining an application for a patent, an examiner has reasonable grounds to believe that an invention disclosed in an application for a patent was, before the filing date of the application, published or the subject of a patent, the examiner may by notice requisition the applicant to identify the first publication of or patent for that invention or, if that information is not known to the applicant, to so indicate.

Marginal note:Continued examination

• 85.1 (1) If three notices have been sent to the applicant under either or both of subsections 86(2) and (5) since the examination of an application for a patent under subsection 35(1) of the Act began, and a notice of allowance or conditional notice of allowance has not been set aside under subsection (4) before the third notice is sent, the examiner must, by notice, inform the applicant of the need to make a request for continued examination and pay the prescribed fee.

• Marginal note:Continued examination — subsequent request

  (2) If two notices have been sent to the applicant under either or both of subsections 86(2) and (5) since the most recent request for continued examination was made, the examiner must, by notice, inform the applicant of the need to make a request for continued examination and pay the prescribed fee.

• Marginal note:Time limit for making request

  (3) The applicant must make a request for continued examination and pay the prescribed fee not later than four months after the day on which a notice is sent under subsection (1) or (2) to inform the applicant of the need to make the request and pay the fee.

• Marginal note:Notice set aside

  (4) A notice of allowance or conditional notice of allowance that is sent to the applicant under subsection 86(1), (1.1), (6) or (10) is set aside if the applicant makes a request for continued examination and pays the prescribed fee not later than the earlier of

  • (a) four months after the day on which the notice of allowance or conditional notice of allowance is sent; and

  • (b) the day 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, the day before the day on which the final fee is paid again.

• Marginal note:Fee for continued examination

  (5) The prescribed fee for the continued examination is

  • (a) the small entity fee set out in item 13 of Schedule 2, 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) before the end of the applicable time, referred to in subsection (3) or (4), for the payment of the fee; or

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

• Marginal note:Interpretation — number of notices

  (6) For greater certainty, a notice sent under subsection 86(2) or (5) that is withdrawn by an examiner or by the Commissioner does not count as a notice for the purposes of subsection (1) or (2).

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

  (7) Subsection 3(1) does not apply in respect of the times referred to in subsection (3) or (4).

Marginal note:Notice — application found allowable by examiner

• 86 (1) If an examiner has reasonable grounds to believe that an application for a patent complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.

• Marginal note:Conditional notice of allowance

  (1.1) If an examiner has reasonable grounds to believe that, but for certain minor defects, an application for a patent would comply with the Act and these Rules, the Commissioner may by notice inform the applicant that the application has been found to be allowable subject to certain amendments being made and require the applicant to, not later than four months after the day on which the notice is sent, make those amendments, or submit arguments as to why the application does comply, and pay the final fee set out in item 14 of Schedule 2.

• Marginal note:Notice of defects

  (2) If an examiner has reasonable grounds to believe that an application for a patent does not comply with the Act or these Rules, the examiner must by notice inform the applicant of the application’s defects and requisition the applicant to amend the application in order to comply with the Act and these Rules, or to submit arguments as to why the application does comply, not later than four months after the date of the notice.

• Marginal note:Rejection for defect

  (3) If an applicant replies in good faith to the requisition made under subsection (2), on or before the date set out in subsection (4), but the examiner, after receiving the reply, has reasonable grounds to believe that the application for a patent still does not comply with the Act or these Rules in respect of any of the defects referred to in the requisition and that the applicant will not amend the application to comply with the Act and these Rules, the examiner may reject the application.

• Marginal note:Date

  (4) For the purpose of subsection (3), the date is the last day of the period referred to in subsection (2) or, if the application for a patent is deemed to be abandoned under paragraph 73(1)(a) of the Act for failure to reply in good faith to a requisition made under subsection (2), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

• Marginal note:Final action

  (5) If an examiner rejects an application for a patent, the examiner must send a notice bearing the notation “Final Action” or “Décision finale”, indicating the outstanding defects and requisitioning the applicant to amend the application in order to comply with the Act and these Rules, or to submit arguments as to why the application does comply, not later than four months after the date of the notice.

• Marginal note:Notice — application found allowable after final action

  (6) If an applicant, on or before the date set out in subsection (8), replies in good faith to a requisition made under subsection (5) and the examiner has reasonable grounds to believe that the application for a patent complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.

• Marginal note:Rejection not withdrawn after final action

  (7) If an applicant replies in good faith to a requisition made under subsection (5) on or before the date set out in subsection (8) but, after that date, the examiner still has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules,

  • (a) the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;

  • (b) any amendments made to that application during the period beginning on the date of the final action notice and ending on the date set out in subsection (8) are considered never to have been made; and

  • (c) the application must be reviewed by the Commissioner.

• Marginal note:Date

  (8) For the purposes of subsections (6) and (7), the date is four months after the date of the notice referred to in subsection (5) or, if the application for a patent is deemed to be abandoned under paragraph 73(1)(a) of the Act for failure to reply in good faith to a requisition made under subsection (5), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

• Marginal note:Additional defects

  (9) If, during the review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of defects other than those indicated in the final action notice, the Commissioner must by notice inform the applicant of those defects and invite the applicant to submit arguments, not later than one month after the date of the notice, as to why the application does comply.

• Marginal note:Notice — rejection withdrawn

  (10) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.

• Marginal note:Notice requiring certain amendments

  (11) If, after review of a rejected application for a patent, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules and certain amendments are necessary in order to make the application allowable, the Commissioner must by notice inform the applicant that those amendments must be made not later than three months after the date of the notice.

• Marginal note:Notice — application found allowable after amendments

  (12) If the applicant complies with the notice sent under subsection (11), the Commissioner must by notice inform the applicant that the rejection is withdrawn and that the application has been found to be allowable and require the payment of the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice.

• Marginal note:Right to hearing

  (13) Before refusing an application for a patent under section 40 of the Act, the Commissioner must give the applicant an opportunity to be heard.

• Marginal note:Withdrawal of notice of allowance

  (14) If, after a notice of allowance is sent but before a patent is issued, the examiner has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules, the Commissioner must, subject to subsection (14.2),

  • (a) by notice, inform the applicant that the application does not comply with the Act or these Rules and that the notice of allowance is withdrawn; and

  • (b) if the final fee has been paid, refund it.

• Marginal note:Withdrawal of conditional notice of allowance — other defects

  (14.1) If, after a conditional notice of allowance is sent but before a patent is issued, the examiner has reasonable grounds to believe that the application for a patent does not comply with the Act or these Rules in respect of defects other than those referred to in that notice, the Commissioner must, subject to subsection (14.2),

  • (a) by notice, inform the applicant that the application does not comply with the Act or these Rules and that the conditional notice of allowance is withdrawn; and

  • (b) if the final fee has been paid, refund it.

• Marginal note:Exception to subsections (14) and (14.1)

  (14.2) The Commissioner is not required to take the actions referred to in subsection (14) or (14.1) if the examiner has reasonable grounds to believe that the defects in the application for a patent would not affect the readability, clarity or validity of the patent, if it were granted.

• Marginal note:Withdrawal of conditional notice of allowance after reply

  (15) If an applicant replies in good faith to a conditional notice of allowance on or before the date set out in subsection (16) but the examiner, after receiving the reply, has reasonable grounds to believe that the application for a patent still does not comply with the Act or these Rules in respect of any of the defects referred to in that notice, the Commissioner must

  • (a) by notice, inform the applicant that the application does not comply with the Act or these Rules and that the conditional notice of allowance is withdrawn; and

  • (b) if the final fee has been paid, refund it.

• Marginal note:Date

  (16) For the purposes of subsection (15), the date is the last day of the period referred to in subsection (1.1) or, if the application for a patent is deemed to be abandoned under subsection 73(2) of the Act in the circumstances referred to in paragraph 132(1)(g), the day on which the conditions for reinstatement set out in subsection 73(3) of the Act are met in respect of that abandonment.

• Marginal note:Suspension of examination — abandoned application

  (17) The examination of an application for a patent under subsection 35(1) of the Act is suspended for any period during which the application is deemed to be abandoned under section 73 of the Act.

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

  (18) Subsection 3(1) does not apply in respect of the times referred to in subsection (1), (1.1), (6), (10) or (12).