Patent Act (R.S.C., 1985, c. P-4)

39 to 39.26 [Repealed, 1993, c. 2, s. 3]

Refusal of Patents

Marginal note:Refusal by Commissioner

40 Whenever the Commissioner is satisfied that an applicant is not by law entitled to be granted a patent, he shall refuse the application and, by registered letter addressed to the applicant or his registered agent, notify the applicant of the refusal and of the ground or reason therefor.

Marginal note:Appeal to Federal Court

41 Every person who has failed to obtain a patent by reason of a refusal of the Commissioner to grant it may, at any time within six months after notice as provided for in section 40 has been mailed, appeal from the decision of the Commissioner to the Federal Court and that Court has exclusive jurisdiction to hear and determine the appeal.

Grant of Patents

Marginal note:Contents of patent

42 Every patent granted under this Act shall contain the title or name of the invention, with a reference to the specification, and shall, subject to this Act, grant to the patentee and the patentee’s legal representatives for the term of the patent referred to in section 44 or 45 and, if applicable, for the additional term granted under section 46.1, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction.

Form and Term of Patents

Marginal note:Form and duration of patents

• 43 (1) Subject to section 46, every patent granted under this Act shall be issued under the seal of the Patent Office, and shall bear on its face the filing date of the application for the patent, the date on which the application became open to public inspection under section 10, the date on which the patent is granted and issued and any prescribed information.

• Marginal note:Validity of patent

  (2) After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid and avail the patentee and the legal representatives of the patentee for the term referred to in section 44 or 45 and, if applicable, for the additional term granted under section 46.1.

Marginal note:Term of patents based on applications filed on or after October 1, 1989

44 Subject to section 46, where an application for a patent is filed under this Act on or after October 1, 1989, the term of the patent is 20 years from the filing date.

Marginal note:Term of patents based on applications filed before October 1, 1989

45 Subject to section 46, where an application for a patent is filed under this Act before October 1, 1989, the term of the patent is 17 years from the date on which the patent is issued.

Marginal note:Maintenance fees

• 46 (1) To maintain the rights accorded by a patent issued under this Act in effect during the term referred to in section 44 or 45, the prescribed fees shall be paid on or before the prescribed dates.

• Marginal note:Late fee and notice

  (2) If a prescribed fee is not paid on or before the applicable prescribed date,

  • (a) the prescribed late fee shall be paid, in addition to the prescribed fee; and

  • (b) the Commissioner shall send a notice to the patentee stating that the term will be deemed to have expired if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.

• Marginal note:Prescribed fee deemed paid on prescribed date

  (3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent, the prescribed fee and late fee are paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the prescribed fee shall be deemed to have been paid on the applicable prescribed date.

• Marginal note:Term deemed expired on prescribed date

  (4) If the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the term shall be deemed to have expired on the applicable prescribed date.

• Marginal note:Subsection (4) deemed never to have produced its effects

  (5) Subject to the regulations, if the term is deemed to have expired under subsection (4), that subsection is deemed never to have produced its effects if

  • (a) the patentee, within the prescribed time,

    • (i) makes a request to the Commissioner for the term to never have been deemed to have expired,

    • (ii) states, in the request, the reasons for the failure to pay the prescribed fee and late fee before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, and

    • (iii) pays the prescribed fee, the late fee and any additional prescribed fee; and

  • (b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the patentee of this determination.

• Marginal note:Powers of the Federal Court

  (6) If subsection (5) applies, the Federal Court may, by order, declare the term to have expired on the applicable prescribed date if the Federal Court determines either

  • (a) that the statement of the reasons referred to in subparagraph (5)(a)(ii) contains a material allegation that is untrue, or

  • (b) that, if paragraph (5)(b) applies, the failure referred to in subparagraph (5)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.

Additional Term

Marginal note:Grant of additional term

• 46.1 (1) The Commissioner shall grant an additional term for a patent if

  • (a) the patent was issued after the later of

    • (i) the fifth anniversary of the applicable day set out in subsection (2), and

    • (ii) the third anniversary of the first day, without taking subsection 35(4) into account, on which a request for examination has been made under section 35 in respect of the application for the patent, the prescribed fee referred to in subsection 35(1) has been paid and, if applicable, the prescribed late fee referred to in paragraph 35(3)(a) has been paid;

  • (b) the filing date for the application for the patent is on or after December 1, 2020; and

  • (c) the patentee applies for the additional term in accordance with the regulations, and pays the prescribed fee, within three months after the day on which the patent is issued.

• Marginal note:Applicable day

  (2) For the purposes of subparagraph (1)(a)(i), the applicable day is

  • (a) in the case of a patent issued on the basis of a divisional application, the prescribed day;

  • (b) in the case of a patent issued on the basis of a PCT national phase application, as defined in subsection 1(1) of the Patent Rules, the prescribed day; or

  • (c) in any other case, the filing date of the application for the patent.

• Marginal note:Beginning of additional term

  (3) The additional term begins on the expiry of the term referred to in section 44, without taking into account section 46, but only if the patent remains valid until, and is not void before, the expiry of that term.

• Marginal note:Duration of additional term

  (4) The Commissioner shall determine the duration of the additional term, which shall be equal to the number of days between the later of the anniversaries set out in paragraph (1)(a) and the day on which the patent is issued minus the number of days that is determined under the regulations.

• Marginal note:Limitation

  (5) Despite subsection (1), no additional term shall be granted under this section if the determination of the duration under subsection (4) produces a result of zero or a negative value.

• Marginal note:Limitation — section 46.2

  (6) The additional term is subject to section 46.2.

• Marginal note:Certificate

  (7) The Commissioner shall issue a certificate of additional term setting out the number of the patent as recorded in the Patent Office, the duration of the additional term and any other prescribed information and shall send the certificate to the patentee.

• Marginal note:Reissued patent

  (8) For the purposes of this section and sections 46.3 and 46.4, if a patent is reissued under section 47, the patent is deemed to have been issued on the day on which the original patent was issued and the application for the patent is deemed to be the application for the original patent.

Marginal note:Maintenance fees

• 46.2 (1) To maintain the rights accorded by a patent during an additional term granted under section 46.1 in effect, the prescribed fees shall be paid on or before the prescribed dates.

• Marginal note:Late fee and notice

  (2) If a prescribed fee is not paid on or before the applicable prescribed date,

  • (a) the prescribed late fee shall be paid, in addition to the prescribed fee; and

  • (b) the Commissioner shall send a notice to the patentee stating that the additional term will be deemed to have expired if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.

• Marginal note:Prescribed fee deemed paid on prescribed date

  (3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent, the prescribed fee and late fee are paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the prescribed fee shall be deemed to have been paid on the applicable prescribed date.

• Marginal note:Additional term deemed expired on prescribed date

  (4) If the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the additional term shall be deemed to have expired on the applicable prescribed date.

• Marginal note:Subsection (4) deemed never to have produced its effects

  (5) Subject to the regulations, if the additional term is deemed to have expired under subsection (4), that subsection is deemed never to have produced its effects if

  • (a) the patentee, within the prescribed time,

    • (i) makes a request to the Commissioner for the additional term to never have been deemed to have expired,

    • (ii) states, in the request, the reasons for the failure to pay the prescribed fee and late fee before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, and

    • (iii) pays the prescribed fee, the late fee and any additional prescribed fee; and

  • (b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the patentee of this determination.

• Marginal note:Powers of the Federal Court

  (6) If subsection (5) applies, the Federal Court may, by order, declare the additional term to have expired on the applicable prescribed date if the Federal Court determines either

  • (a) that the statement of the reasons referred to in subparagraph (5)(a)(ii) contains a material allegation that is untrue; or

  • (b) that, if paragraph (5)(b) applies, the failure referred to in subparagraph (5)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.

Marginal note:Reconsideration of duration

• 46.3 (1) The Commissioner may reconsider the duration of an additional term granted under section 46.1 on the Commissioner’s own initiative or on application by any person.

• Marginal note:Application

  (2) An application for reconsideration shall be made in accordance with the regulations and accompanied by payment of the prescribed fee.

• Marginal note:Notice to patentee

  (3) Notice of a reconsideration shall be given to the patentee in accordance with the regulations.

• Marginal note:Shortening of duration

  (4) On reconsideration, the Commissioner shall shorten the duration of the additional term in accordance with subsection 46.1(4) if the Commissioner is satisfied that the duration is longer than is authorized under that subsection, and shall dismiss the reconsideration in any other case.

• Marginal note:Amended certificate

  (5) If the Commissioner shortens the duration of the additional term, the Commissioner shall issue an amended certificate of additional term and send it to the patentee.

• Marginal note:Stay

  (6) The Commissioner may stay a reconsideration under this section pending the conclusion of any court proceeding.

Marginal note:Federal Court

• 46.4 (1) A person may bring an action in the Federal Court against a patentee for an order to shorten the duration of an additional term granted under section 46.1.

• Marginal note:Power to shorten duration

  (2) If the Court finds that the duration is longer than is authorized under subsection 46.1(4), the Court shall, by order, shorten the duration in accordance with that subsection, and in doing so may exercise any power, or perform any duty or function, of the Commissioner.

• Marginal note:Copy to Commissioner and amended certificate

  (3) If the Court shortens the duration, an officer of the Court’s registry shall send a certified copy of the Court’s order to the Commissioner, and the Commissioner shall issue an amended certificate of additional term and send it to the patentee.