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Canadian Patent Rules

JUS-96-460-01

copyright 1998-2004 Donald M. Cameron, Ogilvy Renault
Department of Justice Canada Version


RULES RESPECTING THE PATENT ACT

short title

1. These Rules may be cited as the Patent Rules.

interpretation

2. In these Rules,

"Act" means the Patent Act; (Loi)

"amino acid sequence" means

(a) an unbranched sequence of four or more contiguous amino acids, and

(b) any peptide or protein that includes abnormal linkages, cross links and end caps, non-peptidyl bonds or the like; (séquence d'acides aminés)

"amino acids" means those L-amino acids commonly found in naturally occurring proteins and such amino acids when they have been modified; (acides aminés)

"application" means, except as otherwise provided by these Rules, an application for a patent or for the reissue of a patent; (demande)

"associate patent agent" means a patent agent appointed by another patent agent in accordance with section 21; (coagent)

"authorized correspondent" means, in respect of an application,

(a) where the application was filed by the inventor, where no transfer of the inventor's right to the patent or of the whole interest in the invention has been registered in the Patent Office and where no patent agent has been appointed

(i) the sole inventor,

(ii) one of two or more joint inventors authorized by all such inventors to act on their joint behalf, or

(iii) where there are two or more joint inventors and no inventor has been authorized in accordance with subparagraph (ii), the first inventor named in the petition or, in the case of PCT national phase applications, the first inventor named in the international application,

(b) where an associate patent agent has been appointed or is required to be appointed pursuant to section 21, the associate patent agent, or

(c) where paragraphs (a) and (b) do not apply, a patent agent appointed pursuant to section 20; (correspondant autorisé)

"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, to which Canada is a party; (Traité de Budapest)

"claims" means claims referred to in subsection 27(4) of the Act or in subsection 34(2) of the Act as it read immediately before October 1, 1989; (revendications)

"description" means the part of a specification other than the claims, referred to in section 80; (description)

"divisional application" means an application filed in accordance with subsection 36(2) or (2.1) of the Act; (demande complémentaire)

"international application" means an application filed under the Patent Cooperation Treaty; (demande internationale)

"international depositary authority" means an international depositary authority within the meaning of Article 2(viii) of the Budapest Treaty; (autorité de dépôt internationale)

"nucleotide sequence" means an unbranched sequence of 10 or more contiguous nucleotides; (séquence de nucléotides)

"nucleotides" means those nucleotides that can be represented using the symbols set out in section 115 and such nucleotides when they have been modified; (nucléotides)

"patent agent" means any person or firm whose name is entered on the register of patent agents pursuant to section 15; (agent de brevets)

"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)

"Patent Office" means the Patent Office established by section 3 of the Act; (Bureau des brevets)

"PCT national phase application" means an international application in respect of which the applicant has complied with the requirements of subsection 58(1) and, where applicable, subsection 58(2); (demande PCT à la phase nationale)

"period of grace" means a period of grace within the meaning of Article 5bis(1) of the Paris Convention for the Protection of Industrial Property, made on March 20, 1883 and any amendments and revisions to which Canada is a party. (délai de grâce)

"petition" means a petition referred to in section 27 of the Act; (pétition)

"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; (Règlement d'exécution du Traité de Budapest)

"Regulations under the PCT" means the Regulations under the Patent Cooperation Treaty; (Règlement d'exécution du PCT)

"sequence listing" means, in respect of an invention, a part of the description describing nucleotide or amino acid sequences and giving other related information required by sections 113 to 130; (listage des séquences)

"small entity" in respect of an invention, means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that

(a) has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees, or

(b) has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity that employs 50 or fewer employees or that is a university, and has knowledge of any subsequent transfer or license of, or of any subsisting contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees; (petite entité)

"specification" means a specification of an invention in accordance with subsections 27(3) and (4) of the Act; (mémoire descriptif)

"the Act as it read immediately before October 1, 1989" means the provisions of the Patent Act as it read immediately before October 1, 1989 subject, where applicable, to any amendments to the Patent Act coming into force

(a) after October 1, 1989 and before October 1, 1996, or

(b) after October 1, 1996; (Loi dans sa version antérieure au 1er octobre 1989)

"transfer" means a change in ownership of a patent, of an application or of an interest in an invention and includes an assignment. (transfert)

PART I

RULES OF GENERAL APPLICATION

Fees

3. Where a person takes any proceeding or requests that any service be rendered by the Commissioner or by the Patent Office, the person shall pay to the Commissioner the appropriate fee, if any, set out in Schedule II for that proceeding or service.

4. (1) The Commissioner shall, upon request, refund fees in accordance with subsections (2) to (15).

(2) Where an application is not accepted by the Commissioner because it does not meet the requirements referred to in section 93, 147 or 178 entitling it to a filing date, the fee paid shall be refunded, less $25.

(3) Where an application is submitted to the Commissioner by mistake and the Commissioner is notified before the application has been assigned a number that the application is to be withdrawn, the fee paid on the withdrawn application shall be refunded, less $25.

(4) Where, through inadvertence, more than one application is filed for the same invention, by or on behalf of the same person, and where any one of such applications is withdrawn before examination, any fee paid on the withdrawn application shall be refunded, less one-half of the filing fee.

(5) Where the Commissioner sends a notice to the applicant pursuant to subsection 94(1) and the applicant does not comply with the requisition set out in that notice, any fee paid pursuant to that subsection shall be refunded, less $25.

(6) Where a fee is paid by an applicant or a patentee on the basis that it is not a small entity, no refund shall be made solely for the reason that it is later determined that it was at the time of payment a small entity.

(7) Where a fee to register any document relating to a patent or an application is received and the document is not submitted, the fee paid shall be refunded.

(8) Where a request for the reinstatement of an abandoned application is received and the applicant does not comply with the requirements for reinstatement, any fee paid for reinstatement shall be refunded, less one-half of the reinstatement fee.

(9) Where a request for the reinstatement of an abandoned application is refused, any fee paid for reinstatement shall be refunded.

(10) A final fee referred to in subsection 30(1) or (5) shall be refunded if

(a) it is received during the prosecution of an application and the application is subsequently refused or abandoned;

(b) a request for its return is received before the start of technical preparations for issue; or

(c) it is submitted by a person who is not the authorized correspondent.

(11) Where a candidate for the Patent Agents' Examination withdraws the candidate's name by written notice to the Commissioner received

(a) before March 1 of the year of the examination, the fee paid shall be refunded; or

(b) on or after March 1 of the year of the examination and before the date of the examination, the fee paid shall be refunded, less $25.

(12) When the fee received with a request for a copy of a document is insufficient and the request is cancelled, the fee paid shall be refunded.

(13) When an application referred to in section 68 of the Act and presented under subsection 65(1) of the Act is not advertised in the Canadian Patent Office Record, any fee paid for advertising the application shall be refunded.

(14) Subject to subsections (2) to (13) and (15), any fee paid by mistake for copies of a document that the Patent Office does not have or paid in excess of the fee prescribed shall be refunded.

(15) No refund shall be made if the amount of the refund amounts to less than $1 or if the refund results from the exchange on foreign currency.

Communications

5. (1) All correspondence intended for the Commissioner or the Patent Office shall bear the indication: "The Commissioner of Patents".

(2) Subject to subsection (3), correspondence addressed to the Commissioner shall be considered to be received by the Commissioner on the day that it is delivered to one of the following establishments, where the delivery is made during the business hours of that establishment:

(a) the Patent Office; or

(b) an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered.

(3) Where correspondence addressed to the Commissioner is delivered outside of business hours to an establishment referred to in paragraph (2)(a) or (b), it shall be considered to be received by the Commissioner on the next working day.

(4) Subject to subsection (5), where the Commissioner has, in accordance with section 8.1 of the Act, specified in the Canadian Patent Office Record that correspondence may be transmitted by facsimile, correspondence transmitted by facsimile shall be considered to be received by the Commissioner on the day that it is transmitted, where the facsimile is transmitted to the Commissioner before midnight, local time, where the Patent Office is situated.

(5) Where correspondence is transmitted by facsimile on a day that the Patent Office is closed for business, it shall be considered to be received by the Commissioner on the next working day.

6. (1) Except as provided by the Act or these Rules, for the purpose of prosecuting or maintaining an application the Commissioner shall only communicate with, and shall only have regard to communications from, the authorized correspondent.

(2) For the purpose of appointing, in respect of an application, a patent agent or an associate patent agent or of revoking the appointment of a patent agent or an associate patent agent, the Commissioner shall have regard to communications from any of the applicant, the patent agent and the associate patent agent.

(3) Interviews with members of the Patent Office staff in respect of an application may be held during the business hours of the Patent Office by

(a) the authorized correspondent;

(b) the applicant, with the permission of the authorized correspondent; or

(c) an appointed non-resident patent agent, with the permission of the associate patent agent.

7. Communications addressed to the Commissioner in relation to an application shall include

(a) the name of the applicant or inventor;

(b) the application number, if one has been assigned by the Patent Office; and

(c) the title of the invention.

8. (1) Subject to subsection (2), communications addressed to the Commissioner in relation to an application or a patent shall relate to one application or patent only.

(2) Subsection (1) does not apply in respect of communications relating to

(a) a transfer, a licence or a security interest;

(b) a change in the name or address of an applicant, a patentee, a patent agent, an associate patent agent or a representative for service; or

(c) fees to maintain an application in effect or to maintain the rights accorded by a patent.

9. An authorized correspondent shall provide the Commissioner with its complete address and any communication sent by the Commissioner or by the Patent Office to the authorized correspondent at that address shall be considered to be sent on the date that it bears.

10. Communications addressed to the Commissioner pursuant to section 34.1 of the Act and communications addressed to the Commissioner with the stated or apparent intention of protesting against the granting of a patent shall be acknowledged, but, subject to section 10 of the Act or of the Act as it read immediately before October 1, 1989, no information shall be given as to the action taken.

11. Except as provided by section 11 of the Act, the Commissioner and the Patent Office shall not provide any information respecting an application that is not open to public inspection to any person other than the authorized correspondent, the applicant or a person authorized by the authorized correspondent or the applicant to receive the information.

Entry of Patent Agents on Register of Patent Agents

12. (1) Subject to subsection 14(2), for the purpose of having their name entered on the register of patent agents, a person is eligible to sit for the qualifying examination for patent agents referred to in section 14 if, on March 31 of the year in which the person proposes to sit for the examination,

(a) the person resides in Canada and has been employed for a period of at least 12 months on the examining staff of the Patent Office; or

(b) the person resides in Canada and has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications, for a period of at least 12 months.

(2) A person referred to in paragraph (l)(b) shall file with the Commissioner an affidavit or statutory declaration setting out the person's experience and responsibilities in the area of patent law and practice.

13. (1) An Examining Board is hereby established for the purpose of preparing, administering and marking the qualifying examination for patent agents referred to in section 14.

(2) The members of the Examining Board shall be appointed by the Commissioner, and the chairperson and at least three other members shall be employees of the Patent Office and at least five members shall be patent agents nominated by the Patent and Trademark Institute of Canada.

14. (1) The Examining Board shall administer a qualifying examination for patent agents every year in the month of April.

(2) The Commissioner shall give notice in the Canadian Patent Office Record of the date of the qualifying examination and shall indicate in the notice that any person who proposes to sit for the examination shall, within the time specified in the notice, notify the Commissioner in writing and pay the fee set out in item 34 of Schedule II.

(3) The Commissioner shall designate the place or places where the qualifying examination is to be held and shall notify by registered mail, at least two weeks before the date of the examination, every person who has complied with the requirements set out in subsection (2).

15. The Commissioner shall enter on the register of patent agents, on payment of the fee set out in item 33 of Schedule II, the name of

(a) any resident of Canada who has demonstrated a good knowledge of Canadian patent law and practice by passing the qualifying examination for patent agents relating to patent law and practice;

(b) any resident of a country other than Canada who is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

(c) any firm, if the name of at least one member of the firm is entered on the register.

16. (1) During the period beginning on January 1 and ending on March 31 in every year

(a) every person who is a resident of Canada and whose name is entered on the register of patent agents shall pay the fee set out in item 35 of Schedule II in order to maintain the person's name on the register;

(b) every person who is a resident of another country and whose name is entered on the register of patent agents shall, in order to maintain the person's name on the register, file a statement, signed by the person, indicating the person's country of residence and stating that the person is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

(c) every firm whose name is entered on the register of patent agents shall, in order to maintain its name on the register, file a statement indicating each member of the firm whose name is entered on the register, signed by a duly authorized member of the firm whose own name is entered on the register.

(2) The Commissioner shall send to every patent agent who fails to comply with subsection (1) a notice requiring compliance within the three-month period after the date of the notice.

(3) The Commissioner shall remove from the register of patent agents the name of any patent agent who

(a) fails to comply with a notice sent pursuant to subsection (2); or

(b) no longer meets the requirements by virtue of which the name of the patent agent was entered on the register.

(4) The removal by the Commissioner of the name of a person from the register of patent agents constitutes a refusal to recognize that person as a patent agent for the purposes of section 16 of the Act.

17. Where the name of a patent agent has been removed from the register of patent agents pursuant to subsection 16(3), it may be reinstated on the register if the patent agent

(a) applies to the Commissioner, in writing, for reinstatement within the one-year period after the date on which the name of the patent agent was removed from the register;

(b) pays the fee set out in item 36 of Schedule II for applying for reinstatement on the register;

(c) pays the fee referred to in paragraph 16(1)(a) for maintaining the name of the patent agent on the register or files the statement referred to in paragraph 16(1)(b) or (c), as the case may be; and

(d) meets the requirements referred to in section 15 for entry of the name of the patent agent on the register.

18. Any decision of the Commissioner, pursuant to section 16 of the Act, to refuse to recognize a person as a patent agent shall be forthwith entered in the register of patent agents and published in the Canadian Patent Office Record, and a copy shall be sent by registered mail to the person referred to in the decision.

19. (1) When the Commissioner makes a decision pursuant to section 16 of the Act that a person be refused recognition as a patent agent, any correspondence respecting an application sent by the Commissioner or by the Patent Office to that person within the six-month period preceding the date of the decision and to which no reply has been made by that date is deemed not to have been sent to the applicant.

(2) An application filed by a person who has been refused recognition as a patent agent by the Commissioner or an application that includes an appointment of such a person as patent agent of the applicant or as associate patent agent shall be treated by the Commissioner as an application filed by the applicant or by the patent agent who appointed the associate patent agent.

Appointment of Patent Agents

20. (1) An applicant who is not an inventor shall appoint a patent agent to prosecute the application for the applicant.

(2) The appointment of a patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the applicant.

(3) The appointment of a patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the applicant or that patent agent.

21. (1) Every patent agent who does not reside in Canada and who is appointed as the patent agent for an applicant in respect of an application shall appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

(2) Every patent agent who resides in Canada and who is appointed as the patent agent for an applicant in respect of an application may appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

(3) The appointment of an associate patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the patent agent who appointed the associate patent agent.

(4) The appointment of an associate patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the associate patent agent or the patent agent who appointed the associate patent agent.

22. Any act by or in relation to a patent agent or an associate patent agent shall have the effect of an act by or in relation to the applicant.

23. Where an applicant is not the inventor and no patent agent residing in Canada has been appointed or any such appointment has been revoked, the Commissioner shall by notice requisition either that the applicant appoint a patent agent residing in Canada or, where a non-resident patent agent has been appointed, that the non-resident patent agent appoint an associate patent agent, within the three-month period after the date of the notice.

24. Where a patent agent withdraws from practice, any patent agent who is the successor to that patent agent and who has so established to the Commissioner, shall be considered to be the appointed patent agent until another patent agent is appointed, in respect of any application in which the patent agent who has withdrawn from practice has been appointed.

Time

25. Except where other times are provided by the Act or these Rules, the time within which action must be taken by an applicant where the Commissioner, by notice, requisitions the applicant to take any action necessary for compliance with the Act or these Rules is the three-month period after the requisition is made.

26. (1) Subject to subsection (2) and any other provision of these Rules, except in respect of Part V, the Commissioner is authorized to extend the time fixed by these Rules or by the Commissioner under the Act for doing anything, subject to both the extension being applied for and the fee set out in item 22 of Schedule II being paid before the expiry of that time, where the Commissioner is satisfied that the circumstances justify the extension.

(2) Where, for the purposes of paragraph 73(1)(a) of the Act, the Commissioner establishes a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is not authorized to extend the time for replying beyond six months after the requisition is made.

27. (1) Except in respect of Part V, the Commissioner is authorized to extend the time fixed by subsection 18(2) of the Act, subject to the fee set out in item 22 of Schedule II being paid, where the Commissioner is satisfied that the circumstances justify the extension.

(2) Except in respect of Part V, where the applicant is sent a notice in accordance with subsection 30(7), the Commissioner is authorized to extend the time fixed by paragraph 73(1)(f) of the Act where the Commissioner is satisfied that the circumstances justify the extension.

Examination

28. (1) Subject to subsection (2), the Commissioner may advance an application for examination out of its routine order upon the request of any person who pays the fee set out in item 4 of Schedule II, where the Commissioner determines that failure to advance the application is likely to prejudice that person's rights.

(2) In respect of an application filed on or after October 1, 1989, subsection (1) only applies if the application is open to public inspection under section 10 of the Act and a request for examination has been made pursuant to subsection 35(1) of the Act.

29. (1) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application for a patent describing the same invention has been filed, in or for any country, on behalf of the applicant or on behalf of any other person claiming under an inventor named in the application being examined, the examiner may requisition from the applicant any of the following information and a copy of any related document:

(a) an identification of any prior art cited in respect of the applications;

(b) the application numbers, filing dates and, if granted, the patent numbers;

(c) particulars of conflict, opposition, re-examination or similar proceedings; and

(d) where a document is not in either English or French, a translation of the document, or a part of the document, into English or French.

(2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an invention disclosed in the application was, before the filing date of the application, published or the subject of a patent, the examiner may requisition the applicant to identify the first publication of or patent for that invention.

(3) Subsections (1) and (2) do not apply to any information or document that is not available or known to the applicant, provided that the applicant states the reasons why the information or document is not available or known.

30.(1) Where an examiner, after examining an application, has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.

(2) Where an examiner examining an application in accordance with section 35 of the Act or the Act as it read immediately before October 1, 1989 has reasonable grounds to believe that an application does not comply with the Act or these Rules, the examiner shall inform the applicant of the application's defects and shall requisition the applicant to amend the application in order to comply or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

(3) Where an applicant has replied in good faith to a requisition referred to in subsection (2) within the time provided but the examiner has reasonable grounds to believe that the application still does not comply with the Act or these Rules in respect of one or more 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.

(4) Where an examiner rejects an application, the notice shall bear the notation "Final Action" or "Décision finale", shall indicate the outstanding defects and shall requisition the applicant to amend the application in order to comply with the Act and these Rules or to provide arguments as to why the application does comply, within the six-month period after the requisition is made or, except in respect of Part V, within any shorter period established by the Commissioner in accordance with paragraph 73(1)(a) of the Act.

(5) Where in accordance with subsection 30(4) the applicant amends the application or provides arguments and the examiner has reasonable grounds to believe that the application complies with the Act and these Rules, the Commissioner shall notify the applicant that the rejection is withdrawn and that the application has been found allowable and shall requisition the payment of the applicable final fee set out in paragraph 6(a) or (b) of Schedule II within the six-month period after the date of the notice.

(6) Where the rejection is not withdrawn pursuant to subsection (5), the rejection shall be reviewed by the Commissioner and the applicant shall be given an opportunity to be heard.

(7) Where, after a notice is sent in accordance with subsection (1) or (5) but before a patent is issued, the Commissioner has reasonable grounds to believe that the application does not comply with the Act or these Rules, the Commissioner shall notify the applicant, shall return the application to the examiner for further examination, and if the final fee has been paid shall refund it.

(8) After the applicant is sent a notice in accordance with subsection (7), sections 32 and 33 do not apply unless a further notice is sent to the applicant in accordance with subsection (1) or (5).

Amendments

31. An application that has been rejected by an examiner shall not be amended after the expiry of the time for responding to the examiner's requisition, made pursuant to subsection 30(4), except

(a) where the rejection is withdrawn in accordance with subsection 30(5);

(b) where the Commissioner is satisfied after review that the rejection is not justified and the applicant has been so informed;

(c) where the Commissioner has informed the applicant that the amendment is necessary for compliance with the Act and these Rules; or

(d) by order of the Federal Court or the Supreme Court of Canada.

32. (1) Except as otherwise provided by the Act or these Rules, after the applicant is sent a notice pursuant to subsection 30(1) or (5), no amendment, other than an amendment to correct a clerical error that is obvious on the face of the application, may be made to the application unless the fee set out in item 5 of Schedule II is paid.

(2) Except as otherwise provided by the Act or these Rules, after the applicant is sent a notice pursuant to subsection 30(1) or (5), no amendment may be made to the application that would necessitate a further search by the examiner in respect of the application or that would make the application not comply with the Act or these Rules.

33. Except as otherwise provided by the Act or these Rules, no amendment may be made to an application after payment of the final fee referred to in subsection 30(1) or (5).

34. Amendments to an application shall be made by inserting new pages in place of the pages altered by the amendments and shall be accompanied by a statement explaining their nature and purpose.

35. Clerical errors in any document relating to an application, other than a specification, a drawing or a document effecting a transfer or a change of name, which are due to the fact that something other than what was obviously intended was written, may be corrected by the applicant.

Unity of Invention

36. For the purposes of section 36 of the Act or of the Act as it read immediately before October 1, 1989, an application does not claim more than one invention if the subject-matters defined by the claims are so linked as to form a single general inventive concept.

Transfers and Changes of Name

37. Where an applicant who files an application in Canada or who complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2) is not the inventor, the following must be registered in the Patent Office:

(a) evidence, by way of affidavit, statutory declaration or copies of documents effecting transfers or changes of name, that the applicant is a legal representative of the inventor; and

(b) copies of documents effecting transfers relevant to the applicant's entitlement to file the application, unless copies of those transfers are registered for the purposes of paragraph (a).

38. No transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the currently recognized owner to the new owner has been registered in the Patent Office in respect of that patent or application.

39. No change in the name of the owner of a patent or an application shall be recognized by the Commissioner unless evidence of the change in the name of the owner, by way of affidavit, statutory declaration or a copy of a document effecting the change, has been registered in the Patent Office in respect of that patent or application.

40. Registration of a transfer shall not of itself operate as a revocation of an appointment of a patent agent or of an appointment of a representative.

41. A patent shall not be granted to a transferee of an application unless the request for registration of the transfer is filed on or before the date on which the final fee is paid in accordance with subsection 30(1) or (5) or, if the final fee is refunded in accordance with subsection 30(7), on or before the date on which the final fee is paid again in accordance with subsection 30(1) or (5).

Registration of Documents

42. Subject to sections 49 and 50 of the Act, the Commissioner shall, upon request and on payment of the fee set out in item 21 of Schedule II, register in the Patent Office any document relating to a patent or an application.

Reissue

43. An application for reissue pursuant to section 47 of the Act shall follow the form and the instructions for its completion set out in Form 1 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

Disclaimer

44. A disclaimer pursuant to section 48 of the Act or of the Act as it read immediately before October 1, 1989 shall follow the form and the instructions for its completion set out in Form 2 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

Re-Examination

45. Except when made by the patentee, a request pursuant to section 48.1 of the Act for a re-examination of any claim of a patent, and the prior art, shall be filed in duplicate.

Secret Applications and Patents

46. Where the Minister of National Defence gives a certificate in accordance with subsection 20(7) of the Act in relation to an application, all entries in any way concerning the application that may appear in any ordinary register maintained in the Patent Office are wholly obliterated, and no further entry concerning the application or any patent granted on the basis of the application shall be made in any such register until that Minister waives the benefits of that section with respect to such application or patent.

47. Where the Governor in Council orders under subsection 20(17) of the Act that an invention described in an application shall be treated for the purposes of section 20 of the Act as if it had been assigned or agreed to be assigned to the Minister of National Defence, the Commissioner shall, as soon as the Commissioner is informed of the order, notify the applicant by registered mail.

48. The Commissioner shall permit any public servant authorized in writing by the Minister of National Defence, or any officer of Her Majesty's Canadian Forces authorized in writing by the Minister of National Defence, to inspect any pending application that relates to any instrument or munition of war and to obtain a copy of any such application.

Abuse of Rights under Patents

49. (1) In this section, "application" means an application referred to in section 68 of the Act presented to the Commissioner under subsection 65(1) of the Act.

(2) Every application shall be accompanied by the fee set out in item 16 of Schedule II.

(3) For the purposes of subsection 69(1) of the Act, the prescribed time is the four-month period after

(a) the date on which the person or the patentee has been served with copies of the application and declarations referred to in subsection 68(1) of the Act; or

(b) where the person or the patentee has not been so served, the later of the date on which the application is advertised in the Canada Gazette and the date on which the application is advertised in the Canadian Patent Office Record.

PART II

PATENT COOPERATION TREATY

Definition

50. In this Part, "priority date" has the same meaning as in Article 2(xi) of the Patent Cooperation Treaty. (date de priorité)

Application of Treaty

51. The provisions of the Patent Cooperation Treaty and the Regulations under the PCT shall apply in respect of

(a) an international application filed with the Commissioner;

(b) an international application in which Canada is designated in accordance with the Patent Cooperation Treaty; and

(c) an international application in which Canada is designated and elected in accordance with the Patent Cooperation Treaty.

Canada as Receiving Office

52. Where an international application is filed with the Commissioner and the applicant or, where there is more than one applicant, at least one of the applicants is a national or resident of Canada, the Commissioner shall act as a receiving Office as defined in Article 2(xv) of the Patent Cooperation Treaty.

53. An international application, in order to be filed with the Commissioner, shall be written in either English or French.

54. (1) Subject to subsection (2), correspondence addressed to the Commissioner in respect of an international application shall be considered to be received by the Commissioner on the day on which it is delivered to one of the following establishments, where the delivery is made during the business hours of that establishment:

(a) the Patent Office; or

(b) an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered.

(2) Where correspondence addressed to the Commissioner is delivered outside of business hours to an establishment referred to in paragraph (2)(a) or (b), it shall be considered to be received by the Commissioner on the next working day.

(3) Subject to subsection (4), correspondence transmitted by facsimile to the Commissioner in respect of an international application shall be considered to be received by the Commissioner on the day on which it is transmitted, where the facsimile is transmitted to the Commissioner before midnight, local time at the head office of the Patent Office.

(4) Where correspondence is transmitted by facsimile on a day that the Patent Office is closed for business, it shall be considered to be received by the Commissioner on the next working day.

55. (1) An applicant who files an international application with the Commissioner shall pay the transmittal fee referred to in Rule 14 of the Regulations under the PCT and set out in item 9 of Schedule II, within the one-month period after the date on which the international application is received by the Commissioner.

(2) Fees payable pursuant to Rules 15, 16 and 16bis of the Regulations under the PCT shall be paid in Canadian currency.

(3) Money received under Rules 15, 16 and 16bis of the Regulations under the PCT shall be deposited in the account entitled the Patent Cooperation Treaty Fund within the account entitled the Canadian Intellectual Property Office Revolving Fund and shall be paid out of that account for purposes in accordance with those Rules.

Canada as Designated or Elected Office

56. Where an international application in which Canada is designated is filed, the Commissioner shall act as the designated Office as defined in Article 2(xiii) of the Patent Cooperation Treaty.

57. Where an international application in which Canada is designated is filed and the applicant has elected Canada as a country in respect of which the international preliminary examination report referred to in Article 35 of the Patent Cooperation Treaty shall be established, the Commissioner shall act as an elected Office as defined in Article 2(xiv) of the Patent Cooperation Treaty.

National Phase in Canada

58. (1) An applicant who designates Canada, or who designates and elects Canada, in an international application shall, within the time prescribed by subsection (3),

(a) where the International Bureau of the World Intellectual Property Organization has not published the international application, provide the Commissioner with a copy of the international application;

(b) where the international application is not in English or French, provide the Commissioner with a translation of the international application into either English or French; and

(c) pay the basic national fee set out in item 10 of Schedule II.

(2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date shall, within the time prescribed by subsection (3), pay any fee set out in item 30 of Schedule II that would have been payable in accordance with section 99 or 154 had the international application been filed in Canada as a Canadian application on the international filing date.

(3) An applicant shall comply with the requirements of subsection (1) and, where applicable, subsection (2) not later than on the expiry of

(a) other than in the cases referred to in paragraph (b),

(i) the 20-month period after the priority date, or

(ii) where the applicant pays the additional fee for late payment set out in item 11 of Schedule II, the 32-month period after the priority date; or

(b) where an election of Canada has been made before the expiry of the nineteenth month after the priority date,

(i) the 30-month period after the priority date, or

(ii) where the applicant pays the additional fee for late payment set out in item 11 of Schedule II, the 42-month period after the priority date.

(4) Where the applicant provides a translation of the international application into either English or French in accordance with paragraph (1)(b) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful.

(5) Where the applicant who complies with the requirements of subsection (1) is not the applicant originally identified in the international application, the Commissioner shall requisition evidence that the applicant who complies with the requirements of that subsection is the legal representative of the originally identified applicant where the documents already in the Patent Office do not provide such evidence.

(6) For the purposes of subsection (2), "international filing date" means the date accorded to an international application by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty.

(7) For greater certainty, section 26 does not apply in respect of the times specified in subsection (3).

Application of Canadian Legislation

59. When an international application becomes a PCT national phase application, the application shall thereafter be deemed to be an application filed in Canada and the Act and these Rules shall thereafter apply in respect of that application.

60. For the purposes of section 11 of the Act, an international application in which Canada is designated is deemed to be pending in Canada only when it becomes a PCT national phase application.

61. The requirement in subsection 27(2) of the Act that an application contain a petition does not apply to PCT national phase applications.

62. (1) In respect of a PCT national phase application, where, on or before the expiry of the time specified in subsection (2), the application does not contain the information and documents listed below, the application is deemed to be abandoned for the purposes of subsection 73(2) of the Act:

(a) the name and address of the inventor;

(b) a sequence listing, where required by paragraph 111(a);

(c) a copy of a sequence listing in computer readable form complying with section 131, where required by paragraph 111(b);

(d) an appointment of a patent agent, where required by section 20;

(e) an appointment of an associate patent agent, where required by section 21; and

(f) an appointment of a representative, where required by section 29 of the Act.

(2) The time by which the information and documents referred to in subsection (1) must be submitted is the expiry of the latest of

(a) the 26-month period after the priority date;

(b) where the election of Canada has been made before the expiry of the nineteenth month after the priority date, the 36-month period after the priority date; and

(c) the six-month period after the applicant complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2).

(3) For greater certainty, section 26 does not apply in respect of the time specified in subsection (2).

63. An international application in which Canada is designated, or in which Canada is designated and elected, shall not be considered to be an application mentioned in paragraph 28.2(1)(c) of the Act or to be a co-pending application mentioned in paragraph 28.2(1)(d) of the Act unless it has become a PCT national phase application.

64. (1) Section 28 of the Act does not apply to a PCT national phase application.

(2) The filing date of a PCT national phase application shall be considered to be the date accorded by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty.

65. In respect of a PCT national phase application, the requirements of Rule 4.10 of the Regulations under the PCT may be substituted for the requirements of section 88 or 142.

66. Where the applicant complies with the requirements of subsection 58(1) and, where applicable, subsection 58(2) on or after the date of the publication of the application in English or French by the International Bureau of the World Intellectual Property Organization in accordance with Article 21 of the Patent Cooperation Treaty, the application is deemed to be open to public inspection under section 10 of the Act on and after the date of that publication.

PART III

APPLICATIONS FILED ON OR AFTER OCTOBER 1, 1996

Application

67. (1) This Part applies to applications filed on or after October 1, 1996 and to patents issued on the basis of such applications.

(2) For greater certainty, for the purposes of subsection (1)

(a) a divisional application is considered to be filed on the same date as the original application; and

(b) a reissued patent is considered to be issued on the basis of the original application.

Presentation of Documents

68. (1) Subject to subsection (2), documents filed in paper form in connection with patents and applications shall

(a) be on sheets of good quality white paper that are free of creases and folds and that are 21.6 cm x 27.9 cm or 21 cm x 29.7 cm (A4 format);

(b) be so presented as to permit direct reproduction by photography, electrostatic processes, photo offset, and microfilming, in any number of copies; and

(c) be free from interlineations, cancellations or corrections.

(2) Transfer documents, other documents concerning ownership, and certified copies of documents may be submitted on sheets of paper that are no larger than 21.6 cm x 35.6 cm.

69. (1) The minimum margins of pages containing the description, the claims and the abstract referred to in section 79 shall be as follows:

top 2 cm

left side 2.5 cm

right side 2 cm

bottom 2 cm

(2) The minimum margins of pages containing the drawings referred to in section 37 of the Act shall be as follows:

top 2.5 cm

left side 2.5 cm

right side 1.5 cm

bottom 1 cm

(3) Subject to subsections (4) and (5) and 125(2), the margins of the sheets referred to in subsections (1) and (2) must be completely blank.

(4) The top margin may contain in either corner an indication of the applicant's file reference.

(5) The lines of each page of the description and of the claims may be numbered in the left margin.

70. (1) With the exception of sequence listings, tables and chemical and mathematical formulae, all text matter in documents forming part of the description or the claims shall be at least 1 1/2 line spaced.

(2) All text matter shall be in characters the capital letters of which are not less than 0.21 cm high.

71. (1) The Commissioner shall refuse to take cognizance of any document submitted to the Commissioner that is not in the English or French language unless the applicant submits to the Commissioner a translation of the document into one of those languages.

(2) Where the applicant provides a translation of a document in accordance with subsection (1) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide a statement by the translator to the effect that, to the best of the translator's knowledge, the translation is complete and faithful.

(3) The text matter of the abstract, the description, the drawings and the claims, individually and all together, shall be wholly in English or wholly in French.

72. The petition, the abstract, the description, the drawings and the claims shall each commence on a new page.

73. (1) The pages of the description and the claims shall be numbered consecutively.

(2) The page numbers shall be centered at the top or bottom of the sheet, but shall not be placed in the margin.

74. (1) The petition, the abstract, the description and the claims shall not contain drawings.

(2) The abstract, the description and the claims may contain chemical or mathematical formulae or the like.

75. (1) Subject to subsection (2), each page of a document shall be used upright.

(2) Where it aids in presentation, drawings, tables and chemical or mathematical formulae may be presented sideways with the top of the drawings, tables or formulae at the left side of the sheet.

76. Any trade-mark mentioned in the application shall be identified as such.

Petitions

77. Subject to section 78, the petition shall follow the form and the instructions for its completion set out in Form 3 of Schedule I to the extent that the provisions of the form and the instructions are applicable.

Appointments of Representative

78. For the purposes of section 29 of the Act, an appointment of a representative in Canada shall be included in the petition in accordance with item 5 of Form 3 of Schedule I or in a separate document.

Abstracts

79. (1) An application shall contain an abstract that provides technical information and that cannot be taken into account for the purpose of interpreting the scope of protection sought or obtained.

(2) The abstract shall contain a concise summary of the matter contained in the application and, where applicable, the chemical formula that, among all the formulae included in the application, best characterizes the invention.

(3) The abstract shall specify the technical field to which the invention relates.

(4) The abstract shall be drafted in a way that allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention.

(5) The abstract shall be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art.

(6) The abstract shall not contain more than 150 words.

(7) Each main technical feature mentioned in the abstract and illustrated by a drawing in the application may be followed by a reference character placed between parentheses.

Descriptions

80. (1) The description shall

(a) state the title of the invention, which shall be short and precise;

(b) specify the technical field to which the invention relates;

(c) describe the background art that, as far as is known to the applicant, can be regarded as important for the understanding, searching and examination of the invention;

(d) describe the invention in terms that allow the understanding of the technical problem, even if not expressly stated as such, and its solution;

(e) briefly describe the figures in the drawings, if any;

(f) set forth at least one mode contemplated by the inventor for carrying out the invention in terms of examples, where appropriate, and with reference to the drawings, if any; and

(g) contain a sequence listing where required by paragraph 111(a).

(2) The description shall be presented in the manner and order specified in subsection (1) unless, because of the nature of the invention, a different manner or a different order would afford a better understanding or a more economical presentation.

81. (1) The description shall not incorporate by reference another document.

(2) The description shall not refer to a document that does not form part of the application unless the document was available to the public on the filing date of the application.

(3) Any document referred to in the description shall be fully identified.

Drawings

82. (1) Drawings shall be in black, sufficiently dense and dark, well-defined lines to permit satisfactory reproduction and shall be without colourings.

(2) Cross-sections shall be indicated by hatching that does not impede the clear reading of the reference characters and lead lines.

(3) All numbers, letters and lead lines shall be simple and clear.

(4) Elements of the same figure shall be in proportion to each other unless a difference in proportion is indispensable for the clarity of the figure.

(5) The height of the numbers and letters in a drawing shall not be less than 0.32 cm.

(6) The same page of drawings may contain several figures.

(7) Where figures on two or more pages are intended to form a single complete figure, the figures on the several pages shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures.

(8) The different figures shall be numbered consecutively.

(9) Reference characters not mentioned in the description shall not appear in the drawings, and vice versa.

(10) The same features, when denoted by reference characters, shall, throughout the application, be denoted by the same characters.

(11) The drawings shall not contain text matter except to the extent required for the understanding of the drawings.

Photographs

83. In any case in which an invention does not admit of illustration by means of drawings but does admit of illustration by means of photographs, the applicant may, as part of the application, furnish photographs, or reproductions of photographs, that illustrate the invention.

Claims

84. The claims shall be clear and concise and shall be fully supported by the description independently of any document referred to in the description.

85. If there are several claims, they shall be numbered consecutively in Arabic numerals beginning with the number "1".

86. (1) Subject to subsections (2) and (3), claims shall not, except where necessary, rely, in respect of the features of the invention, on references to the description or drawings and, in particular, they shall not rely on such references as: "as described in Part ... of the description", or "as illustrated in figure ... of the drawings".

(2) Where the application contains drawings, the features mentioned in the claims may be followed by the reference characters, placed between parentheses, appearing in the drawings and relating to such features.

(3) Where the application contains a sequence listing, the claims may refer to a sequence identifier number referred to in subsection 113(2).

(4) Where the specification refers to a deposit of biological material, the claims may refer to that deposit.

87. (1) Subject to subsection (2), any claim that includes all the features of one or more other claims (in this section referred to as a "dependent claim") shall refer by number to the other claim or claims and shall state the additional features claimed.

(2) A dependent claim may only refer to a preceding claim or claims.

(3) Any dependent claim shall be understood as including all the limitations contained in the claim to which it refers or, if the dependent claim refers to more than one other claim, all the limitations contained in the particular claim or claims in relation to which it is considered.

Priority Claims

88. (1) Subject to section 65, for the purposes of subsection 28.4(2) of the Act in respect of an application (in this subsection referred to as the "subject application")

(a) a request for priority may be made in the petition or in a separate document;

(b) a request for priority must be made before the expiry of the four-month period after the filing date of the subject application;

(c) the applicant shall provide the Commissioner with the date and country of filing of each previously regularly filed application on which the request for priority is based, before the expiry of the four-month period after the filing date of the subject application; and

(d) the applicant shall provide the Commissioner with the application number of each previously regularly filed application on which the request for priority is based, before the expiry of the later of the four-month period after the filing date of the subject application and the twelve-month period after the date of filing of the previously regularly filed application.

(2) Section 26 does not apply in respect of the times prescribed in subsection (1).

89. Where a previously regularly filed application on the basis of which a request for priority is based is taken into account by an examiner pursuant to sections 28.1 to 28.4 of the Act, the examiner may requisition the applicant to file a certified copy of the previously regularly filed application and a certification from the patent office in which the application was filed indicating the actual date of its filing.

90. (1) For the purposes of subsection 28.4(3) of the Act, an applicant may withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications, by filing a request with the Commissioner and the Commissioner shall send a notice to the applicant advising that the request for priority has been withdrawn.

(2) The effective date of the withdrawal of a request for priority pursuant to subsection (1) shall be the date the request for withdrawal is received by the Commissioner.

Effect of Withdrawals on Public Inspection

91. For the purposes of subsection 10(4) of the Act, where a request for priority with respect to a particular previously regularly filed application is withdrawn in accordance with section 90, the prescribed date is the date on which a period of sixteen months after the filing date of that previously regularly filed application expires, or, where the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date preceding the expiry of the confidentiality period referred to in subsection 10(2) of the Act, that subsequent date.

92. For the purposes of subsection 10(5) of the Act, the prescribed date is the date that is two months before the date of expiry of the confidentiality period or, where the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date preceding the expiry of the confidentiality period referred to in subsection 10(2) of the Act, that subsequent date.

Filing Date

93. For the purposes of subsection 28(1) of the Act, the filing date of an application, other than a PCT national phase application, is the date on which the Commissioner receives the following documents, information and fees:

(a) an indication in English or French that the granting of a Canadian patent is sought;

(b) the name of the applicant;

(c) the address of the applicant or of a patent agent of the applicant;

(d) a document, in English or French, that on its face appears to describe an invention; and

(e) the application fee set out in item 1 of Schedule II.

Completing the Application

94. (1) In respect of an application other than a PCT national phase application, where, at the expiry of the time specified in subsection (2), the abstract, the description, the claims or the drawings do not comply with sections 68, 69 and 70, or the application does not contain the information and documents listed below, the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those sections or to submit that information or those documents, as the case may be, and to pay the fee set out in item 2 of Schedule II before the expiry of the later of the three-month period after the date of the notice and the twelve-month period after the filing date of the application:

(a) a petition complying with section 77;

(b) an abstract;

(c) a sequence listing, where required by paragraph 111(a);

(d) a copy of a sequence listing in computer readable form, where required by paragraph 111(b);

(e) a claim or claims;

(f) any drawing referred to in the description;

(g) an appointment of a patent agent, where required by section 20;

(h) an appointment of an associate patent agent, where required by section 21; and

(i) an appointment of a representative, where required by section 29 of the Act.

(2) For the purposes of subsection (1), the time is the fifteen-month period after the filing date of the application or, where a request for priority has been made in respect of the application, the fifteen-month period after the earliest filing date of any previously regularly filed application on which the request for priority is based.

(3) Section 26 does not apply in respect of the time set out in subsection (2).

Requests for Examination

95. For the purposes of subsection 35(1) of the Act, a request for examination of an application shall contain the following information:

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

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

(c) information, such as the application number, sufficient to identify the application.

96. (1) Subject to subsection (2), for the purposes of paragraph 73(1)(d) of the Act, a request for the examination of an application shall be made and the fee set out in item 3 of Schedule II shall be paid before the expiry of the five-year period after the filing date of the application.

(2) A request for the examination of a divisional application shall be made and the fee set out in item 3 of Schedule II shall be paid before the expiry of the later of

(a) the five-year period after the filing date of the original application; and

(b) the six-month period after the date on which the divisional application is actually filed in accordance with subsection 36(2) or (2.1) of the Act.

(3) Section 26 does not apply in respect of the times prescribed in subsections (1) and (2).

Abandonment and Reinstatement

97. For the purposes of subsection 73(2) of the Act, an application is deemed to be abandoned if the applicant does not reply in good faith to any requisition of the Commissioner referred to in section 25 or 94 within the time provided therein.

98. In order for an application deemed to be abandoned under section 73 of the Act to be reinstated, the applicant shall, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 97, make a request for reinstatement to the Commissioner, take the action that should have been taken in order to avoid the deemed abandonment and pay the fee set out in item 7 of Schedule II, before the expiry of the twelve-month period after the date on which the application is deemed to be abandoned as a result of that failure.

Maintenance Fees

99. (1) For the purposes of subsection 27.1(1) and paragraph 73(1)(c) of the Act, to maintain an application in effect, the applicable fee set out in item 30 of Schedule II shall be paid in respect of the periods set out in that item before the expiry of the times provided in that item.

(2) Where a divisional application is filed, any fee set out in item 30 of Schedule II, that would have been payable pursuant to subsection 27.1(1) of the Act had the divisional application been filed on the filing date of the original application, shall be paid when the divisional application is actually filed in accordance with subsection 36(2) or (2.1) of the Act.

100. (1) Subject to subsections (2) and (3), for the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a patent, set out in item 31 of Schedule II, shall be paid in respect of the periods set out in that item before the expiry of the times, including periods of grace, provided in that item.

(2) In subsection (1), "patent" does not include a reissued patent.

(3) No fee to maintain the rights accorded by a patent shall be payable in respect of any period for which a fee to maintain the application for that patent was paid.

101. (1) Subject to subsection (2), for the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a reissued patent, set out in item 31 of Schedule II, shall be paid in respect of the same periods and before the expiry of the same times as for the original patent.

(2) No fee to maintain the rights accorded by a reissued patent shall be payable in respect of any period for which a fee was paid to maintain the rights accorded by the original patent or to maintain the application for the original patent.

102. Section 26 does not apply in respect of the times set out in sections 99, 100 and 101.

Deposits of Biological Material

103. For the purposes of subsection 38.1(1) of the Act, where a specification in an application filed in Canada, or in a patent issued on the basis of such an application, refers to a deposit of biological material, the deposit shall be considered to be in accordance with these regulations if sections 104 to 106 are complied with.

104. (1) The deposit of the biological material shall be made by the applicant with an international depositary authority on or before the filing date of the application.

(2) The applicant shall inform the Commissioner of the name of the international depositary authority, the date of the original deposit and the accession number given by the international depositary authority to the deposit, before the application is open to public inspection under section 10 of the Act.

(3) The information required by subsection (2) must be included in the description.

(4) Before the application is open to public inspection under section 10 of the Act, the applicant may file a notice with the Commissioner stating the applicant's wish that, until either a patent has been issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn, the Commissioner only authorize the furnishing of a sample of the deposited biological material to an independent expert nominated by the Commissioner in accordance with section 109.

(5) Section 26 does not apply to the times set out in this section.

105. Where, pursuant to Rule 5 of the Regulations under the Budapest Treaty, samples of biological material are transferred to a substitute international depositary authority for the reason that the original international depositary authority has discontinued the performance of functions, the applicant or the patentee must inform the Commissioner of the name of the substitute international depositary authority and of the new accession number given to the deposit by the substitute international depositary authority before the expiry of the three-month period after the date of issuance of a receipt by the substitute international depositary authority.

106. (1) Where a new deposit is made with another international depositary authority pursuant to Article 4(1)(b)(i) or (ii) of the Budapest Treaty, the applicant or the patentee must inform the Commissioner of the name of that authority and of the new accession number given to the deposit by that authority before the expiry of the three-month period after the date of issuance of a receipt by that authority.

(2) Where, pursuant to Article 4 of the Budapest Treaty, the depositor is notified of the inability of the international depositary authority to furnish samples and no new deposit is made in accordance with that Article, the application or patent shall, for the purposes of any proceedings in respect of that application or patent, be treated as if the deposit had never been made.

107. (1) The Commissioner shall publish in the Canadian Patent Office Record a form for making a request for the furnishing of a sample of a deposit, the contents of which shall be the same as the contents of the form referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty.

(2) Subject to sections 108 and 110, where a specification in a Canadian patent or in an application filed in Canada that is open to public inspection pursuant to section 10 of the Act refers to a deposit of biological material by the applicant, and where a person files with the Commissioner a request made on the form referred to in subsection (1), the Commissioner shall make the certification referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty in respect of that person.

(3) Except where subsection 110(2) applies, where the Commissioner makes a certification pursuant to subsection (2), the Commissioner shall send a copy of the request together with the certification to the person who filed the request.

108. Until either a patent has been issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn, the Commissioner shall not make the certification referred to in subsection 107(2) in respect of a person, including an independent expert, unless the Commissioner has received an undertaking by that person to the applicant

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

(b) to use the sample of biological material furnished by the international depositary authority and any culture derived from such sample only 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, or is abandoned and no longer subject to reinstatement, or is withdrawn.

109. (1) Where a notice has been filed with the Commissioner pursuant to subsection 104(4) in respect of an application, the Commissioner, upon the request of any person that an independent expert be nominated and with the agreement of the applicant, shall within a reasonable time nominate a person as an independent expert for the purposes of that application.

(2) If the Commissioner and the applicant cannot agree on the nomination of an independent expert within a reasonable time after the request is made, the notice of the applicant referred to in subsection 104(4) is deemed never to have been filed.

110. (1) Where a notice has been filed with the Commissioner pursuant to subsection 104(4) in respect of an application, until a patent is issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn, a request pursuant to section 107 may only be filed by an independent expert nominated by the Commissioner in accordance with section 109.

(2) Where the Commissioner makes a certification pursuant to subsection 107(2) in respect of an independent expert nominated by the Commissioner, the Commissioner shall send a copy of the request together with the certification to the applicant and to the person who requested the nomination of the independent expert.

Sequence Listings

111. Where an application describes a nucleotide or amino acid sequence other than a sequence identified as forming part of the prior art,

(a) the description shall contain in respect of that sequence, a sequence listing;

(b) a copy of the sequence listing shall be filed in a computer-readable form that complies with section 131; and

(c) a statement shall be filed by the applicant with the Commissioner that the content of the copy of the sequence listing in computer-readable form is the same as the content of the sequence listing contained in the description.

112. Where an application describes a nucleotide or amino acid sequence other than a sequence identified as forming part of the prior art, the sequence may not be amended unless

(a) the sequence listing is amended in accordance with sections 113 to 130;

(b) a copy of the amended sequence listing is filed in a computer-readable form that complies with section 131; and

(c) a statement is filed by the applicant with the Commissioner that the content of the copy of the amended sequence listing in computer-readable form is the same as the content of the amended sequence listing contained in the description.

113. (1) A sequence listing shall be entitled "Sequence Listing" or "Listage des séquences", and shall begin on a new page.

(2) Each nucleotide or amino acid sequence disclosed shall appear separately in the sequence listing and shall be assigned a separate sequence identifier number such as "SEQ ID NO:1", "SEQ ID NO:2" or "SEQ ID NO:3".

Symbols to be Used for Sequence Listings

114. A nucleotide sequence shall be presented only by a single strand, in the 5' to 3' direction from left to right.

115. Nucleotides shall be represented using the symbols set out in the table to this section.

table

SymbolMeaningOrigin of designation
AAAdenine
GGGuanine
CCCytosine
TTThymine
UUUracil
RG or ApuRine
YT/U or CpYrimidine
MA or CaMino
KG or T/UKeto
SG or CStrong interactions 3H-bonds
WA or T/UWeak interactions 2H-bonds
BG or C or T/Unot A
DA or G or T/Unot C
HA or C or T/Unot G
VA or G or Cnot T, not U
N(A or G or C or T/U) or (unknown or other)aNy

116. (1) Modified nucleotides shall be listed in the sequence as "N", with further information given elsewhere in the sequence listing.

(2) For the purpose of providing the further information referred to in subsection (1), the symbols set out in the table to this subsection may be used.

table

SymbolMeaning
ac4c4-acetylcytidine
chm5u5-(carboxyhydroxymethyl) uridine
cm2'-O-methylcytidine
cmnm5s2u5-carboxymethylaminomethyl-2-thiouridine
cmnm5u5-carboxymethylaminomethyluridine
ddihydrouridine
fm2'-O-methylpseudouridine
gal qbeta, D-galactosylqueuosine
gm2'-O-methylguanosine
iinosine
i6aN6-isopentenyladenosine
m1a1-methyladenosine
m1f1-methylpseudouridine
m1g1-methylguanosine
m1i1-methylinosine
m22g2,2-dimethylguanosine
m2a2-methyladenosine
m2g2-methylguanosine
m3c3-methylcytidine
m5c5-methylcytidine
m6aN6-methyladenosine
m7g7-methylguanosine
mam5u5-methylaminomethyluridine
mam5s2u5-methoxyaminomethyl-2-thiouridine
man qbeta, D-mannosylqueuosine
mcm5s2u5-methoxycarbonylmethyl-2-thiouridine
mcm5u5-methoxycarbonylmethyluridine
mo5u5-methoxyuridine
ms2i6a2-methylthio-N6-isopentenyladenosine
ms2t6aN-((9-beta-D-ribofuranosyl-2-methylthiopurine-6-yl) carbamoyl) threonine
mt6aN-((9-beta-D-ribofuranosylpurine-6-yl) N-methycarbamoy1) threonine
mvuridine-5-oxyacetic acid-methylester
o5uuridine-5-oxyacetic acid (v)
osywwybutoxosine
ppseudouridine
qqueuosine
s2c2-thiocytidine
s2t5-methyl-2-thiouridine
s2u2-thiouridine
s4u4-thiouridine
t5-methyluridine
t6aN-((9-beta-D-ribofuranosylpurine-6-yl) - carbamoyl) threonine
tm2'-O-methyl-5-methyluridine
um2'-O-methyluridine
ywwybutosine
x3-(3-amino-3-carboxy-propyl) uridine, (acp3) u

117. The amino acids in an amino acid sequence shall be listed in the amino to carboxy direction from left to right, and the amino and carboxy groups shall not be represented in the sequence.

118. The amino acids in an amino acid sequence shall be represented using the symbols set out in the table to this section.

table

SymbolMeaning
AlaAlanine
CysCysteine
AspAspartic Acid
GluGlutamic Acid
PhePhenylalanine
GlyGlycine
HisHistidine
IleIsoleucine
LysLysine
Leu Leucine
MetMethionine
AsnAsparagine
ProProline
GlnGlutamine
ArgArginine
SerSerine
ThrThreonine
ValValine
TrpTryptophan
TyrTyrosine
AsxAspartic or Aspartine
GlxGlutamic or Glutamine
XaaD-amino acid, unknown or other

119. (1) Modified or unusual amino acids shall be listed in the sequence as "Xaa", with further information given elsewhere in the sequence listing.

(2) For the purpose of providing the further information referred to in subsection (1), the symbols set out in the table to this subsection may be used.

table

SymbolMeaning
Aad2-Aminoadipic acid
bAad3-Aminoadipic acid
bA1abeta-Alanine, beta-Aminopropionic acid
Abu2-Aminobutyric acid
4Abu4-Aminobutyric acid, piperidinic acid
Acp6-Aminocaproic acid
Ahe2-Aminoheptanoic acid
Aib2-Aminoisobutyric acid
bAib3-Aminoisobutyric acid
Apm2-Aminopimelic acid
Dbu2,4 Diaminobutyric acid
DesDesmosine
Dpm2,2'-Diaminopimelic acid
Dpr2,3-Diaminopropionic acid
EtGlyN-Ethylglycine
EtAsnN-Ethylasparagine
HylHydroxylysine
aHylallo-Hydroxylysine
3Hyp3-Hydroxyproline
4Hyp4-Hydroxyproline
IdeIsodesmosine
alleallo-Isoleucine
MeGlyN-Methylglycine, sarcosine
MelleN-Methylisoleucine
MeLys6-N-methyllysine
MeValN-Methylvaline
NvaNorvaline
NleNorleucine
OrnOrnithine

Format to be Used for Sequence Listings

120. (1) The nucleotides of a nucleotide sequence shall be listed in groups of 10 bases, except in the coding parts of the sequence.

(2) Leftover bases, fewer than 10 in number at the end of non-coding parts of a sequence, shall be grouped together and separated from adjacent groups by a space.

121. The nucleotides of the coding parts of a nucleotide sequence shall be listed as triplets.

122. A nucleotide sequence shall be listed with a maximum of 16 codons or 60 nucleotides per line, with a space between each codon or group of 10 nucleotides.

123. An amino acid sequence shall be listed with a maximum of 16 amino acids per line, with a space between each amino acid.

124. (1) Amino acids corresponding to the codons in the coding parts of a nucleotide sequence shall be indicated immediately under the corresponding codons.

(2) Where a codon is split by an intron, the amino acid symbol shall be indicated below the portion of the codon containing two nucleotides.

125. (1) The nucleotides in a nucleotide sequence shall be enumerated starting at the first nucleotide of the sequence with number 1.

(2) The enumeration shall be continuous through the whole nucleotide sequence in the direction 5' to 3' and shall be marked in the right margin, next to the line containing the one-letter codes for the nucleotides, and giving the number of the last nucleotide of that line.

126. (1) Subject to subsection (2), the enumeration of amino acids in an amino acid sequence shall start at the first amino acid at the amino terminal as number 1 and shall be marked under the sequence every 5 amino acids.

(2) Where a mature protein has been identified

(a) the amino acids shall be enumerated starting at the first amino acid of the mature protein, with number 1; and

(b) the amino acids preceding the mature protein, when present, shall have negative numbers, counting backwards starting with the amino acid next to number 1.

127. (1) A sequence that is made up of one or more non-contiguous segments of a larger sequence or segments from different sequences shall be presented as a separate sequence.

(2) A sequence with a gap or gaps shall be numbered as a plurality of separate sequences with separate sequence identifier numbers.

128. The enumeration methods set out in sections 126 and 127 apply to circular nucleotide and amino acid sequences with the exception that any nucleotide or amino acid sequence may be designated by the applicant as the first nucleotide or amino acid.

129. (1) The order of presentation of the items of information in a sequence listing shall follow the order in which those items are listed in these Rules with the appropriate data element headings.

(2) The headings shall be in upper case characters.

(3) When more than one line is necessary for the text following a heading, the additional lines shall be indented to distinguish them from the heading at the left margin.

130. The sequence listing shall include, in addition to and immediately preceding the actual nucleotide or amino acid sequence, the following data element headings and the respective items of information, if applicable and when available to the applicant:

GENERAL INFORMATION

APPLICANT:

TITLE OF INVENTION:

NUMBER OF SEQUENCES:

CORRESPONDENCE ADDRESS:

COMPUTER-READABLE FORM

COMPUTER:

OPERATING SYSTEM:

SOFTWARE:

CURRENT APPLICATION DATA

APPLICATION NUMBER:

FILING DATE:

CLASSIFICATION:

PRIOR APPLICATION DATA

APPLICATION NUMBER:

FILING DATE:

CLASSIFICATION:

PATENT AGENT INFORMATION

NAME:

REFERENCE NUMBER:

INFORMATION FOR SEQ ID NO.:

SEQUENCE CHARACTERISTICS

LENGTH:

TYPE:

STRANDEDNESS:

TOPOLOGY:

MOLECULE TYPE:

HYPOTHETICAL:

ANTI-SENSE:

FRAGMENT TYPE:

ORIGINAL SOURCE:

IMMEDIATE SOURCE:

POSITION IN GENOME

CHROMOSOME/SEGMENT:

MAP POSITION:

UNITS:

FEATURE

NAME/KEY:

LOCATION:

IDENTIFICATION METHOD:

OTHER INFORMATION:

PUBLICATION INFORMATION

AUTHORS:

TITLE:

JOURNAL:

VOLUME:

ISSUE:

PAGES:

DATE:

DOCUMENT NUMBER:

FILING DATE:

PUBLICATION DATE:

RELEVANT RESIDUES IN SEQ ID NO.:

SEQUENCE DESCRIPTION: SEQ ID NO.:

Computer-readable Form of Sequence Listings

131. (1) The copy of the sequence listing in computer-readable form shall comprise a printable copy of the sequence listing recorded on diskette and shall be encoded and formatted so that a printed copy of the sequence listing may be recreated using the print commands of the computer operating system configuration specified by the Commissioner in the Canadian Patent Office Record.

(2) The submitted diskette shall be write-protected.

(3) Subject to subsections (4) and (5), the diskette shall have a label permanently fixed to it that includes a description of the format of the diskette as well as the name of the applicant, the title of the invention, a reference number, the date on which the data were recorded on the diskette and the name and type of computer and operating-system that generated the file on the diskette.

(4) If all of the information referred to in subsection (3) cannot be included on a label affixed to the diskette, the label shall include the name of the applicant, the title of the invention and a reference number, and the additional information shall be provided on a container for the diskette together with the name of the applicant, the title of the invention and the reference number.

(5) If the diskette is submitted after the filing date of an application, the label shall also include the filing date of the application and information, such as the application number, sufficient to identify the application.

PART IV

APPLICATIONS FILED IN THE PERIOD BEGINNING ON OCTOBER 1, 1989

AND ENDING ON SEPTEMBER 30, 1996

Application

Failure to comply with rights-specific legal requirements in the assignment or transfer of intellectual property – whether in the context of an acquisition or the transfer of specific property – can lead to costly, and sometimes irrevocable, mistakes. This QuickCounsel provides a brief overview of some of the requirements for the assignment and transfer of specific intellectual property rights in Canada, whether pursuant to an acquisition or whether in the context of assignment of specific property.

An inventor may assign the rights to his invention and the right to apply for a patent therefore. The owner of a patent (or the application therefore) can also assign the patent (or the patent application), in whole or in part. Assignments of patents and rights therein should be by way of written instrument. (See Section 50(1) of the Patent Act.)

All assignments, grants, or conveyances of an exclusive right under a patent must be registered in the Canadian Intellectual Property Office ("CIPO"). (See Section 50(2) of the Patent Act). As a recorded patent assignment has priority over a prior unrecorded assignment, it is also important to record assignments of patents promptly. (See Section 51 of the Patent Act.)

Along with the patent and the invention(s) claimed therein, the owner of a patent can assign the right to file for additional patents and the right to file divisional applications, along with his rights in reissues, re-examinations, disclaimers, and the right to bring proceedings to recover damages for infringement. Such additional rights should be specifically identified in the assignment documentation if it is intended that they be assigned.

A patent will issue in the name of the inventor identified in the application unless an assignment of the application to a new owner is filed in the CIPO prior to payment of the final fee. As it can become difficult to secure assignments from inventors as time passes, inventor assignments should be obtained (and filed) as soon as possible after an application has been filed.

A co-owner of a patent can assign his entire ownership interest in the patent (but not a portion thereof) without the consent of the other co-owner(s). However, a co-owner of a patent cannot grant a valid license to a third party without the consent of the other co-owner(s).

The mere fact that an employee created an invention during the course of his/her employment does not necessarily mean that the employer owns the invention. In the absence of a written agreement, a court will consider a number of factors, including whether the employee was employed for the express purpose of inventing or innovating, to determine who owns an invention created by an employee. It is strongly advised that businesses enter into written agreements with employees and contractors for the assignment of all intellectual property created during their course of employment or during the performance of services.

To be registrable, patent assignments must include an affidavit of execution or other proof establishing that the owner has duly executed the document. (See Section 50(3) of the Patent Act.) An affidavit of execution signed by a witness or signature of a witness on the assignment is generally acceptable. After issuance, both the assignee and assignor must execute and be a witness to any document assigning a patent.

Trade-marks (both registered and unregistered) are assignable in Canada by way of written instrument or otherwise. Rights in a trade-mark can be assigned in whole or in part, including assignment in part for use in association with some or all of the goods and services in association with which the mark is used or has been registered. (See Section 48(1) of the Trade-marks Act.) Assignments that purport to assign the right to use the same trade-mark in association with the same goods and services in different parts of the country are not permitted.

Canadian law does not require that trade-marks be assigned with the goodwill associated with the mark, nor is there any prohibition against assigning applications filed on the basis of proposed use. (See Section 48(1) of the Trade-marks Act.)

As a trade-mark can be held to be non-distinctive if rights to use the same mark are exercised by two or more persons concurrently, care must be taken to ensure that partial assignments or assignments without goodwill do not result in situations where both assignor and assignee continue to be perceived as owners of the mark. (See Section 48(2) of the Trade-marks Act.) A license agreement that includes provisions for control of the character and quality of the goods and services offered by the assignor in association with the mark should be entered into between the assignee and assignor if the assignor wishes to continue to use the mark.

While the Trade-marks Act does not require recordation of assignments, it is recommended that assignments and all changes in title be recorded promptly. The Registrar will record an assignment upon being furnished with: satisfactory evidence of the transfer; the information sufficient to identify the new owner of the application/registration; and payment of the required fee.

Assignments of associated trade-marks, or those owned by a single owner that are identified by the CIPO to be confusingly similar with each other, will only be recorded by the CIPO if all associated registrations (and applications) are assigned concurrently. A search of the Register can help determine whether there are registrations or applications associated with an assigned property.

The owner of copyright in a work may assign his right in whole or in part, or fully or subject to limitations. (See Section 13(4) and 13(5) of the Copyright Act.) The owner of copyright in a work may also divide his rights between different owners, territories, mediums, and markets. The owner of copyright in a work may also assign his rights for the entire term of the copyright or for any other part thereof.

No assignment or grant of interest in copyright is valid unless it is in writing and signed by the owner of the right (or by his duly authorized agent). (See Section 13(4) of the Copyright Act.) While recordation of copyright assignments is not mandatory, the Copyright Act provides that a registered assignment of copyright takes precedence over a previous unregistered assignment. Recent case law raises some doubt, however, as how this provision is actually applied.

Assignment of a work in which copyright subsists does not, in itself, constitute assignment of the copyright in such work or the moral rights of the author of the work. Absent a written agreement, the courts will look to the intention of the parties if there is any uncertainty as to whether copyright in a work has been assigned along with the work itself.

"Work for hire" is not a concept recognized in Canadian copyright law. Section 13(3) of the Copyright Act provides that absent an agreement to the contrary, an employer is deemed to own the copyright in works created by its employees during the course of their employment. However, the employer is not deemed to be the author of the work. Absent an agreement to the contrary, an external consultant or service provider will be the first owner of the copyright in works he creates.

Section 14(1) of the Copyright Act provides where the author of a work is the first owner of the copyright therein, ownership of the copyright shall revert to the estate of the author 25 years after the author's death (regardless of any assignment to the contrary). Works created by employees during the course of their employment are not affected by this provision as an employer is deemed to be the first owner of works created by its employees during the course of their employment.

Moral rights, namely the rights of an author or creator of a work to the integrity of his work and the right to be identified as the creator of the work, may not be assigned but may be waived in whole or in part. (See Section 14.1(2) of the Copyright Act.)

There are few formalities required for the recordation of assignments of intellectual property rights in the CIPO. There are no prescribed forms of assignment. While the CIPO provides electronic forms for assignment of trade-marks and copyright, the use thereof is not mandatory.

The CIPO will record assignments forwarded for recordation so long as the documentation submitted in respect of the request complies with the requirements set out in the applicable legislation and the required fees are paid. The CIPO charges a fee to record an assignment against each registration/application for registration listed in an assignment document.

Original documents are not required for recordation. The CIPO accepts copies of executed assignment documents for filing. No notarization or legalization of assignment documentation is required by the CIPO for recordation of an assignment or transfer. If the document is in a language other than English or French, however, a translation of the document must be filed.

It is important to ensure that the name of the assignor listed in any documentation filed to record the assignment is the same as the name of the owner of the assigned property in the CIPO records. The CIPO will not record an assignment if the party identified in the document as the assignor is not the party identified as the owner of the property in the CIPO.

It is also important to ensure that assignment documents clearly identify the property and rights being assigned. Registered rights, including applications, should be identified by title and number. Documents that do not refer to specific property will be insufficient for recordation of the assignment in the CIPO and may require the execution of further confirmatory assignments.

An assignment of intellectual property can be effective as of the date of execution of the assignment agreement, or as of an earlier date. Nunc pro tunc and confirmatory assignments are recognized by the CIPO and will be recorded provided that the agreement sets out the effective date of the assignment. The CIPO accepts redacted documentation, provided that all required information to record the assignment is provided.

No Power of Attorney documentation is required for a Canadian agent to file assignment documentation in the CIPO. It is necessary, however, the assignee of any registered rights retain a qualifying representative for service in accordance with relevant legislation and regulations.

For the purpose of recordation in the CIPO, a merger is treated as a change of name. The CIPO will record mergers provided that official documentation issued by the relevant government authority confirming the new name of the continuing entity is provided. A translation of the document should also be provided if the document is in a language other than English or French.

The proper assignment or transfer of intellectual property in Canada requires an appreciation and understanding of the particular requirements for assignment of each type of property. To ensure smooth commercial transactions, in-house counsel should be aware of the different rules affecting patents, trade-marks, and copyrights as well as the regulations related to recording assignments or transfers. This QuickCounsel provides an overview of the differing legal treatment of intellectual property and the processes necessary to record an assignment or transfer.

Published on September 2, 2011

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