Patent Act (R.S.C., 1985, c. P-4)

Reissue of Patents

Marginal note:Issue of new or amended patents

• 47 (1) Whenever any patent is deemed defective or inoperative by reason of insufficient description and specification, or by reason of the patentee’s claiming more or less than they had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, the Commissioner may, on the surrender of the patent within four years from its date and the payment of a further prescribed fee, cause a new patent, in accordance with an amended description and specification made by the patentee, to be issued to them for the same invention for the then unexpired term referred to in section 44 or 45 — and, if applicable, for the then unexpired additional term granted under section 46.1 — of the original patent.

• Marginal note:Certificate of supplementary protection

  (1.1) Subsection (1) also applies in the case where the original patent is set out in a certificate of supplementary protection and the original patent’s term referred to in section 44 or 45 has expired — or, if applicable, both that term and the additional term granted under section 46.1 have expired — except that in that case the issuance of the new patent, whose term or terms remain expired, is for the purpose of establishing the rights, privileges and liberties granted under the certificate.

• Marginal note:Effect of new patent

  (2) The surrender referred to in subsection (1) takes effect only on the issue of the new patent, and the new patent and the amended description and specification have the same effect in law, on the trial of any action thereafter commenced for any cause subsequently accruing, as if the amended description and specification had been originally filed in their corrected form before the issue of the original patent, but, in so far as the claims of the original and reissued patents are identical, the surrender does not affect any action pending at the time of reissue or abate any cause of action then existing, and the reissued patent to the extent that its claims are identical with the original patent constitutes a continuation thereof and has effect continuously from the date of the original patent.

• Marginal note:Separate patents for separate parts

  (3) The Commissioner may entertain separate applications and cause patents to be issued for distinct and separate parts of the invention patented, on payment of the fee for a reissue for each of the reissued patents.

Disclaimers

Marginal note:Patentee may disclaim anything included in patent by mistake

• 48 (1) Whenever, by any mistake, accident or inadvertence, and without any wilful intent to defraud or mislead the public, a patentee has

  • (a) made a specification too broad, claiming more than that of which the patentee or the person through whom the patentee claims was the inventor, or

  • (b) in the specification, claimed that the patentee or the person through whom the patentee claims was the inventor of any material or substantial part of the invention patented of which the patentee was not the inventor, and to which the patentee had no lawful right,

  the patentee may, on payment of a prescribed fee, make a disclaimer of the parts that the patentee does not claim to hold by virtue of the patent or a transfer of the patent.

• Marginal note:Form and attestation of disclaimer

  (2) A disclaimer shall be filed in the prescribed form and manner.

• (3) [Repealed, 1993, c. 15, s. 44]

• Marginal note:Pending suits not affected

  (4) No disclaimer affects any action pending at the time when it is made, unless there is unreasonable neglect or delay in making it.

• (5) [Repealed, 2014, c. 39, s. 133]

• Marginal note:Effect of disclaimer

  (6) A patent shall, after disclaimer as provided in this section, be deemed to be valid for such material and substantial part of the invention, definitely distinguished from other parts thereof claimed without right, as is not disclaimed and is truly the invention of the disclaimant, and the disclaimant is entitled to maintain an action or suit in respect of that part accordingly.

Re-examination

Marginal note:Request for re-examination

• 48.1 (1) Any person may request a re-examination of any claim of a patent by filing with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, and by paying a prescribed fee.

• Marginal note:Pertinency of request

  (2) A request for re-examination under subsection (1) shall set forth the pertinency of the prior art and the manner of applying the prior art to the claim for which re-examination is requested.

• Marginal note:Notice to patentee

  (3) Forthwith after receipt of a request for re-examination under subsection (1), the Commissioner shall send a copy of the request to the patentee of the patent in respect of which the request is made, unless the patentee is the person who made the request.

Marginal note:Establishment of re-examination board

• 48.2 (1) Forthwith after receipt of a request for re-examination under subsection 48.1(1), the Commissioner shall establish a re-examination board consisting of not fewer than three persons, at least two of whom shall be employees of the Patent Office, to which the request shall be referred for determination.

• Marginal note:Determination to be made by board

  (2) A re-examination board shall, within three months following its establishment, determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request for re-examination.

• Marginal note:Notice

  (3) Where a re-examination board has determined that a request for re-examination does not raise a substantial new question affecting the patentability of a claim of the patent concerned, the board shall so notify the person who filed the request and the decision of the board is final for all purposes and is not subject to appeal or to review by any court.

• Marginal note:Idem

  (4) Where a re-examination board has determined that a request for re-examination raises a substantial new question affecting the patentability of a claim of the patent concerned, the board shall notify the patentee of the determination and the reasons therefor.

• Marginal note:Filing of reply

  (5) A patentee who receives notice under subsection (4) may, within three months of the date of the notice, submit to the re-examination board a reply to the notice setting out submissions on the question of the patentability of the claim of the patent in respect of which the notice was given.

Marginal note:Re-examination proceeding

• 48.3 (1) On receipt of a reply under subsection 48.2(5) or in the absence of any reply within three months after notice is given under subsection 48.2(4), a re-examination board shall forthwith cause a re-examination to be made of the claim of the patent in respect of which the request for re-examination was submitted.

• Marginal note:Patentee may submit amendments

  (2) In any re-examination proceeding under subsection (1), the patentee may propose any amendment to the patent or any new claims in relation thereto but no proposed amendment or new claim enlarging the scope of a claim of the patent shall be permitted.

• Marginal note:Time limitation

  (3) A re-examination proceeding in respect of a claim of a patent shall be completed within twelve months of the commencement of the proceedings under subsection (1).

Marginal note:Certificate of board

• 48.4 (1) On conclusion of a re-examination proceeding in respect of a claim of a patent, the re-examination board shall issue a certificate

  • (a) cancelling any claim of the patent determined to be unpatentable;

  • (b) confirming any claim of the patent determined to be patentable; or

  • (c) incorporating in the patent any proposed amended or new claim determined to be patentable.

• Marginal note:Certificate attached to patent

  (2) A certificate issued in respect of a patent under subsection (1) shall be attached to the patent and made part thereof by reference, and a copy of the certificate shall be sent by registered mail to the patentee.

• Marginal note:Effect of certificate

  (3) For the purposes of this Act, where a certificate issued in respect of a patent under subsection (1)

  • (a) cancels any claim but not all claims of the patent, the patent shall be deemed to have been issued, from the date of grant, in the corrected form;

  • (b) cancels all claims of the patent, the patent shall be deemed never to have been issued; or

  • (c) amends any claim of the patent or incorporates a new claim in the patent, the amended claim or new claim shall be effective, from the date of the certificate, for the unexpired term — and, if applicable, for the unexpired additional term — of the patent.

• Marginal note:Appeals

  (4) Subsection (3) does not apply until the time for taking an appeal has expired under subsection 48.5(2) and, if an appeal is taken, subsection (3) applies only to the extent provided in the final judgment on the appeal.

Marginal note:Appeals

• 48.5 (1) Any decision of a re-examination board set out in a certificate issued under subsection 48.4(1) is subject to appeal by the patentee to the Federal Court.

• Marginal note:Limitation

  (2) No appeal may be taken under subsection (1) after three months from the date a copy of the certificate is sent by registered mail to the patentee.

Transfers

Marginal note:Patent, application and right or interest in invention

• 49 (1) A patent, an application for a patent, and the right or interest in an invention are transferable, in whole or in part.

• Marginal note:Recording of transfer of application

  (2) The Commissioner shall, subject to the regulations, record the transfer of an application for a patent on the request of the applicant or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the application.

• Marginal note:Recording of transfer of patent

  (3) The Commissioner shall, subject to the regulations, record the transfer of a patent on the request of the patentee or, upon receipt of evidence satisfactory to the Commissioner of the transfer, on the request of a transferee of the patent.

• Marginal note:Transfer void

  (4) A transfer of a patent that has not been recorded is void against a subsequent transferee if the transfer to the subsequent transferee has been recorded.

• Marginal note:Removal of recording

  (5) The Commissioner shall remove the recording of the transfer of an application for a patent or the transfer of a patent on receipt of evidence satisfactory to the Commissioner that the transfer should not have been recorded.

• Marginal note:Limitation

  (6) The Commissioner is not authorized to remove the recording of a transfer of a patent for the reason only that the transferor had previously transferred the patent to another person.

50 [Repealed, 2014, c. 39, s. 134]

51 [Repealed, 2014, c. 39, s. 134]

Marginal note:Jurisdiction of Federal Court

52 The Federal Court has jurisdiction, on the application of the Commissioner or of any person interested, to order that any entry in the records of the Patent Office relating to the title to a patent be varied or expunged.

Standard-Essential Patents

Marginal note:Subsequent patentee or holder bound

• 52.1 (1) A licensing commitment in respect of a standard-essential patent that binds the patentee, binds any subsequent patentee and any holder of any certificate of supplementary protection that sets out that patent.

• Marginal note:Subsequent holder bound

  (2) If a certificate of supplementary protection sets out a standard-essential patent, a licensing commitment that binds the holder of that certificate of supplementary protection, binds any subsequent holder of the certificate of supplementary protection.

• Marginal note:Application

  (3) Subsections (1) and (2) apply despite any other Act of Parliament and any decision or order made under such an Act.

Marginal note:Regulations

52.2 The Governor in Council may make regulations, for the purposes of section 52.1, respecting what constitutes, or does not constitute, a licensing commitment or a standard-essential patent.

Legal Proceedings in Respect of Patents

Marginal note:Void in certain cases, or valid only for parts

• 53 (1) A patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.

• Marginal note:Exception

  (2) Where it appears to a court that the omission or addition referred to in subsection (1) was an involuntary error and it is proved that the patentee is entitled to the remainder of his patent, the court shall render a judgment in accordance with the facts, and shall determine the costs, and the patent shall be held valid for that part of the invention described to which the patentee is so found to be entitled.

• (3) [Repealed, 2017, c. 6, s. 38]

Marginal note:Admissible in evidence

• 53.1 (1) In any action or proceeding respecting a patent, a written communication, or any part of such a communication, may be admitted into evidence to rebut any representation made by the patentee in the action or proceeding as to the construction of a claim in the patent if

  • (a) it is prepared in respect of

    • (i) the prosecution of the application for the patent,

    • (ii) a disclaimer made in respect of the patent, or

    • (iii) a request for re-examination, or a re-examination proceeding, in respect of the patent; and

  • (b) it is between

    • (i) the applicant for the patent or the patentee; and

    • (ii) the Commissioner, an officer or employee of the Patent Office or a member of a re-examination board.

• Marginal note:Divisional application

  (2) For the purposes of this section, the prosecution of a divisional application is deemed to include the prosecution of the original application before that divisional application is filed.

• Marginal note:Reissued patent

  (3) For the purposes of this section, a written communication is deemed to be prepared in respect of the prosecution of the application for a reissued patent if it is prepared in respect of

  • (a) the prosecution of the application for the patent that was surrendered and from which the reissued patent results; or

  • (b) the application for reissuance.