Patent Rules (SOR/2019-251)

Interpretation

Marginal note:Definitions

• 1 (1) The following definitions apply in these Rules.

  Act

  Act means the Patent Act. (Loi)

  Administrative Instructions

  Administrative Instructions[Repealed, SOR/2022-120, s. 1]

  Administrative Instructions under the PCT

  Administrative Instructions under the PCT means the Administrative Instructions under the Patent Cooperation Treaty, including any modifications made from time to time. (Instructions administratives du PCT)

  associate patent agent

  associate patent agent means a patent agent appointed by another patent agent under section 28. (coagent)

  Budapest Treaty

  Budapest Treaty means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, done at Budapest on April 28, 1977, including any amendments and revisions made from time to time to which Canada is a party. (Traité de Budapest)

  common representative

  common representative means an applicant or patentee appointed under section 26, 218, 219 or 220. (représentant commun)

  description

  description means, except in Form 1 of Schedule 1, the part of a specification other than the claims. (description)

  foreign practitioner

  foreign practitioner means an individual whose name is included in the Register of Patent Agents under section 19 of the College of Patent Agents and Trademark Agents Regulations. (professionnel étranger)

  international application

  international application means an application for a patent filed under the Patent Cooperation Treaty. (demande internationale)

  international depositary authority

  international depositary authority has the same meaning as in Article 2(viii) of the Budapest Treaty. (autorité de dépôt internationale)

  national phase entry date

  national phase entry date means the date determined under subsection 155(2) or section 210, as applicable. (date d’entrée en phase nationale)

  patent agent

  patent agent[Repealed, SOR/2021-131, s. 2]

  Patent Cooperation Treaty

  Patent Cooperation Treaty means the Patent Cooperation Treaty, done at Washington on June 19, 1970, including any amendments, modifications and revisions made from time to time to which Canada is a party. (Traité de coopération en matière de brevets)

  PCT national phase application

  PCT national phase application means an international application in respect of which the applicant

  • (a) has complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2); or

  • (b) has, before October 30, 2019, complied with the requirements of subsection 58(1) and, if applicable, subsection 58(2) of the Patent Rules, as they read immediately before that date. (demande PCT à la phase nationale)

  PCT sequence listing standard

  PCT sequence listing standard means Standard ST.26 of the World Intellectual Property Organization, Recommended Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings using XML (eXtensible Markup Language), as amended from time to time. (norme PCT de listages des séquences)

  presentation date

  presentation date means the date determined under subsection 103(2) or 202(2), as applicable. (date de soumission)

  Regulations under the Budapest Treaty

  Regulations under the Budapest Treaty means the Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, including any amendments made from time to time. (Règlement d’exécution du Traité de Budapest)

  Regulations under the PCT

  Regulations under the PCT means the Regulations under the Patent Cooperation Treaty, including any amendments made from time to time. (Règlement d’exécution du PCT)

  sequence listing

  sequence listing has the same meaning as in the PCT sequence listing standard. (listage des séquences)

• Marginal note:Definition of drawing

  (2) For the purposes of the Act and these Rules, drawing includes a photograph.

• Marginal note:Reference to period

  (3) A reference to a period of time in these Rules is, if the period is extended under section 3 or subsection 160(2) of these Rules or subsection 78(1) of the Act, to be read as a reference to the period as extended.

Marginal note:Clarification

2 For greater certainty, for the purposes of these Rules,

• (a) an application for the reissue of a patent is not considered to be an application for a patent; and

• (b) a patent granted on the basis of a divisional application that results from the division of an original application is not a patent granted on the basis of the original application.

PART 1Rules of General Application

Extension of Time

Marginal note:Time fixed by Rules

• 3 (1) Subject to these Rules, the Commissioner is authorized to extend any period of time fixed by these Rules for doing anything — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the end of that period, the extension is applied for and, except in the case of the period of time fixed by subsection 86(9), the fee set out in item 1 of Schedule 2 is paid.

• Marginal note:Clarification

  (2) For greater certainty, for the purpose of subsection (1), a period of time fixed by the Act that is dependent on a date that is prescribed by these Rules is not considered to be a period of time fixed by these Rules.

• Marginal note:Other authorized extensions

  (3) The Commissioner is authorized to extend the period of time for the payment of a fee referred to in subsection 44(1), 68(1) or (2), 80(1), 85.1(5), 86(1), (1.1), (6), (10) or (12) or 112(1), paragraph 112(5)(a) or (c) or 154(1)(c), subsection 154(2) or subparagraph 154(3)(a)(iii) or (b)(i) or (ii) after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if

  • (a) the amount of the small entity fee was paid before the end of that period;

  • (b) it is later determined that the standard fee should have been paid;

  • (c) the applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and the application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid;

  • (d) the applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee that was applicable on the day on which the small entity fee was paid; and

  • (e) the applicant or patentee pays the fee set out in item 1 of Schedule 2.

• Marginal note:Extension — erroneous information

  (4) The Commissioner is authorized to extend any period of time for the payment of a fee set out in Schedule 2 or 3 after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if

  • (a) the Commissioner provided erroneous information in writing concerning the amount of the fee;

  • (b) the applicant or patentee paid an insufficient amount as a result of that erroneous information;

  • (c) the applicant or patentee identifies the source of the erroneous information that was relied on and files a statement that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the amount paid was insufficient, unless the Commissioner considers that the circumstances do not justify requiring the statement and the application; and

  • (d) the applicant or patentee pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made, unless the Commissioner waives payment of the difference under section 139.1.

Marginal note:Time fixed by subsection 18(2) of Act

4 The Commissioner is authorized to extend the period of time fixed by subsection 18(2) of the Act — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the end of that period, the extension is applied for and the fee set out in item 1 of Schedule 2 is paid.

Marginal note:Prescribed days

5 The following days are prescribed for the purposes of subsection 78(1) of the Act:

• (a) Saturday;

• (b) Sunday;

• (c) January 1 or, if January 1 falls on a Saturday or a Sunday, the following Monday;

• (d) Good Friday;

• (e) Easter Monday;

• (f) the Monday before May 25;

• (g) June 24 or, if June 24 falls on a Saturday or a Sunday, the following Monday;

• (h) July 1 or, if July 1 falls on a Saturday or a Sunday, the following Monday;

• (i) the first Monday in August;

• (j) the first Monday in September;

• (j.1) September 30 or, if September 30 falls on a Saturday or a Sunday, the following Monday;

• (k) the second Monday in October;

• (l) November 11 or, if November 11 falls on a Saturday or a Sunday, the following Monday;

• (m) December 25 and 26 or

  • (i) if December 25 falls on a Friday, that Friday and the following Monday, and

  • (ii) if December 25 falls on a Saturday or a Sunday, the following Monday and Tuesday; and

• (n) any day on which the Patent Office is closed to the public for all or part of the day during ordinary business hours.

Prescribed Fee

Marginal note:Small entity declaration filed after payment

5.1 Despite any provision of these Rules that sets out a small entity fee and a standard fee in respect of a patent or an application for a patent, if a patentee or applicant pays the standard fee and a small entity declaration is later filed in respect of that patent or application, the applicable fee is the standard fee.

Marginal note:Extension of time for payment of fee

5.2 For greater certainty, if the Commissioner extends the period of time for the payment of a fee under subsection 3(3) or (4), the applicable fee is

• (a) in the case of an extension under subsection 3(3), the standard fee that was payable on the day on which the small entity fee was paid; or

• (b) in the case of an extension under subsection 3(4), the fee that was payable on the day on which the insufficient payment was made.

Communications

Marginal note:Written communications to Commissioner

6 Written communications intended for the Commissioner or the Patent Office must be addressed to the “Commissioner of Patents”.

Marginal note:Postal address

• 7 (1) A person who is doing business before the Patent Office must provide the Commissioner with their postal address and a written communication sent by the Commissioner or the Patent Office to that person at that address is, unless the communication is withdrawn, considered to have been sent to that person on the date that it bears.

• Marginal note:Email address

  (2) If a person who is doing business before the Patent Office provides the Commissioner with their email address and authorizes the sending of communications to that address, a written communication sent by the Commissioner or the Patent Office as an email attachment to that person at that address is, unless the communication is withdrawn, considered to have been sent to that person on the date borne by the communication.

Marginal note:One patent or application for patent per communication

• 8 (1) A written communication intended for the Commissioner or the Patent Office must not relate to more than one patent or one application for a patent.

• Marginal note:Exceptions

  (2) Subsection (1) does not apply in respect of a written communication relating to

  • (a) a change in a name or an address;

  • (b) a transfer;

  • (c) a request to register a document;

  • (d) a fee to maintain in effect an application for a patent or the rights accorded by a patent;

  • (e) an appointment, or revocation of an appointment, of a patent agent; or

  • (f) a correction of an error, if the error and correction are the same in each patent or application for a patent.

Marginal note:Minimum content of written communications — applications

• 9 (1) A written communication in respect of an application for a patent that is intended for the Commissioner or the Patent Office must include the name of the applicant and the application number or, if the application number is not known, information that allows the application to be identified.

• Marginal note:Minimum content of written communications — patents

  (2) A written communication in respect of a patent that is intended for the Commissioner or the Patent Office must include the name of the patentee and the patent number.

Marginal note:Manner of submitting documents, information or fees

• 10 (1) Unless they are submitted by electronic means under subsection 8.1(1) of the Act, any documents, information or fees must be submitted to the Commissioner or the Patent Office by physical delivery to the Patent Office or to an establishment that is designated by the Commissioner as being accepted for that purpose.

• Marginal note:Date of receipt — physical delivery to Patent Office

  (2) Documents, information or fees that are submitted to the Commissioner or the Patent Office by physical delivery to the Patent Office are deemed to have been received by the Commissioner

  • (a) if they are delivered when the Office is open to the public, on the day on which they are delivered; and

  • (b) if they are delivered when the Office is closed to the public, on the first day on which the Office is next open to the public.

• Marginal note:Date of receipt — physical delivery to designated establishment

  (3) Documents, information or fees that are submitted to the Commissioner or the Patent Office by physical delivery to a designated establishment are deemed to have been received by the Commissioner

  • (a) if they are delivered when the establishment is open to the public,

    • (i) in the case where the Patent Office is open to the public for all or part of the day on which they are delivered, on that day, and

    • (ii) in any other case, on the first day on which the Patent Office is next open to the public; and

  • (b) if they are delivered when the establishment is closed to the public, on the first day on which the Patent Office is next open to the public that falls on or after the day on which the establishment is next open to the public.

• Marginal note:Date of receipt — submission by electronic means

  (4) Documents, information or fees that are submitted by electronic means under subsection 8.1(1) of the Act are deemed to have been received by the Commissioner on the day on which, according to the local time of the place where the Patent Office is located, the Patent Office receives them.