Patent Rules (SOR/2019-251)

Marginal note:No amendment after rejection

173 If a category 1 application is rejected by an examiner under subsection 172(1) of these Rules or subsection 30(3) of the former Rules, the specification and the drawings contained in the application must not be amended after the date prescribed by subsection 172(4) of these Rules, unless

• (a) a notice is sent to the applicant informing them that the rejection is withdrawn;

• (b) the amendments made are those required in a notice sent under subsection 86(11) of these Rules or subsection 30(6.3) of the former Rules; or

• (c) the Supreme Court of Canada, the Federal Court of Appeal or the Federal Court orders the amendments to be made.

Marginal note:Reference

174 The reference to “may be or could have been added, under section 38.2 of the Act without taking into account subsection 38.2(4) of the Act, to the specification and the drawings contained in the original application” in paragraph 91(a) is to be read, in relation to a category 1 application, as a reference to “results from an amendment to the specification or drawings that is not prohibited by section 181 of the former Rules”.

Marginal note:Reference to subsection 28.4(2) of Act and paragraph 93(1)(b) of these Rules

175 The reference to “subsection 28.4(2) of the Act” in paragraph 92(c) and the reference to “paragraph 93(1)(b)” in paragraph 92(f), in relation to a category 1 application, are to be read as a reference to “section 179 of the former Rules” and “subsection 184(3) of the former Rules”, respectively.

Marginal note:Additional fee for restoration of application

176 The additional fee to be paid for the restoration of a category 1 application that was forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, is $200.

DIVISION 3[Repealed, SOR/2022-120, s. 39]

177 [Repealed, SOR/2022-120, s. 39]

178 [Repealed, SOR/2022-120, s. 39]

179 [Repealed, SOR/2022-120, s. 39]

180 [Repealed, SOR/2022-120, s. 39]

181 [Repealed, SOR/2022-120, s. 39]

182 [Repealed, SOR/2022-120, s. 39]

183 [Repealed, SOR/2022-120, s. 39]

184 [Repealed, SOR/2022-120, s. 39]

185 [Repealed, SOR/2022-120, s. 39]

186 [Repealed, SOR/2022-120, s. 39]

187 [Repealed, SOR/2022-120, s. 39]

DIVISION 4Rules in Respect of Category 3 Applications

Marginal note:Non-application of certain provisions of these Rules

• 188 (1) Subsections 73(1) and (4), 81(1), 84(2) and 103(2) and section 132 do not apply in respect of a category 3 application.

• Marginal note:Non-application of section 74

  (2) Section 74 does not apply in respect of a request for priority made in relation to a category 3 application before October 30, 2019.

• (3) [Repealed, SOR/2022-120, s. 40]

• Marginal note:Non-application of subsection 103(1)

  (4) Subsection 103(1) does not apply in respect of a category 3 application that has a presentation date before October 30, 2019.

• Marginal note:Non-application of section 104

  (5) Section 104 does not apply in relation to a category 3 application in respect of which an assignment was registered under subsection 49(2) of the Act, as it read immediately before October 30, 2019.

Marginal note:Application of section 26.1 of former Rules

• 189 (1) Section 26.1 of the former Rules continues to apply in respect of the time prescribed by section 98 of the former Rules in respect of a category 3 application.

• Marginal note:Application of section 32 of former Rules

  (2) Section 32 of the former Rules continues to apply in respect of a category 3 application for which a notice of allowance was sent before October 30, 2019 other than such an application that is deemed to be abandoned under paragraph 73(1)(f) of the Act, as it read immediately before October 30, 2019, and is subsequently reinstated.

• Marginal note:Application of section 66 of the former Rules

  (3) Section 66 of the former Rules continues to apply in relation to a category 3 application in respect of which the applicant, before October 30, 2019, complied with the requirements of subsection 58(1) of the former Rules and, if applicable, with the requirements of subsection 58(2) of those Rules.

• Marginal note:Application of section 98 of former Rules

  (4) If, under section 78.51 or 78.52 of the Act, section 73 of the Act, as it read immediately before October 30, 2019, applies in respect of the abandonment of a category 3 application, section 98 of the former Rules continues to apply in respect of that abandonment.

Marginal note:Extension of time

190 The Commissioner is authorized to extend, in respect of a category 3 application, the time referred to in the former Rules for payment of the fee referred to in subsection 3(3), (5) or (7) of the former Rules or the time referred to in subsection 199(2) or (5) of these Rules for the payment of the final fee, after the expiry of that time, if the Commissioner considers that the circumstances justify the extension and if the conditions referred to in subsection 3(3) of these Rules are met.

Marginal note:Prescribed date — withdrawal of request for priority

191 For the purposes of subsection 10(4) of the Act, if a request for priority that was made in respect of a category 3 application has been withdrawn with respect to a previously regularly filed application for a patent before October 30, 2019, the prescribed date is, despite section 17, the later of

• (a) the earlier of

  • (i) the day on which a period of 16 months after the filing date of the previously regularly filed application expires, and

  • (ii) if the request for priority is based on more than one previously regularly filed application, the day on which a period of 16 months after the earliest of the filing dates of those applications expires, and

• (b) if the Commissioner is able to stop the technical preparations to open the category 3 application to public inspection before the expiry of the confidentiality period referred to in subsection 10(2) of the Act, the day on which the Commissioner stops those preparations.

Marginal note:Prescribed date — withdrawn application

192 If a category 3 application is withdrawn before October 30, 2019, for the purposes of subsection 10(5) of the Act, the prescribed date is, despite section 18 of these Rules, the day that is two months before the expiry date of the confidentiality period referred to in subsection 10(2) of the Act or, if the Commissioner is able to stop the technical preparations to open the application to public inspection at a subsequent date preceding the expiry of that period, that subsequent date.

Marginal note:Exception to subsection 50(1)

193 In respect of a category 3 application, the applicant may comply with the requirements of subsection 73(1) of the former Rules instead of the requirements of subsection 50(1) of these Rules.

Marginal note:Exception to section 58

194 In respect of a category 3 application for which the filing date was before June 2, 2007, the applicant may comply with the requirements of sections 111 to 131 of the Patent Rules, as they read immediately before June 2, 2007, instead of the requirements of section 58 of these Rules.

Marginal note:Requirements for request for priority

• 195 (1) For the purposes of subsection 28.4(2) of the Act, a request for priority in respect of a category 3 application must be made in the petition of that application or in a separate document, before the later of the end of

  • (a) a period 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request is based, and

  • (b) a period four months after the filing date of the category 3 application.

• Marginal note:Time prescribed by subsection 73(1)

  (2) With respect to a request for priority made in relation to a category 3 application, the reference to “the time prescribed by subsection (1)” in subsections 73(2) and (6) is to be read as a reference to “the time prescribed by subsection 195(1)”.

• Marginal note:Correction — error in filing date

  (3) An error in a filing date submitted under subsection 28.4(2) of the Act in relation to a request for priority in respect of a category 3 application may be corrected on request submitted before the earliest of

  • (a) the end of the period referred to in subsection (1), as determined using the corrected filing date,

  • (b) the end of the period referred to in subsection (1), as determined using the uncorrected filing date, and

  • (c) if applicable, the day on which the applicant submits their approval, under subsection 10(2) of the Act, for the category 3 application to be open to public inspection before the expiry of the confidentiality period, unless that approval is withdrawn in time to permit the Commissioner to stop the technical preparations to open the application to public inspection.

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

  (4) Subsection 3(1) does not apply to the time referred to in subsection (1).

Marginal note:Notice requiring application to be made accessible

• 196 (1) If, for the purpose of examining a pending category 3 application in respect of which a request for priority was made before October 30, 2019, the examiner takes into account a previously regularly filed application for a patent — other than such an application that was filed in Canada — on which the request for priority is based, the examiner may by notice require the applicant of the pending application to do one of the following not later than four months after the date of the notice:

  • (a) to submit to the Commissioner a copy of that previously regularly filed application, certified by the patent office where it was filed, as well as a certificate from that office indicating the filing date; or

  • (b) to make a copy of that previously regularly filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose, and inform the Commissioner that it is so available.

• Marginal note:Request for priority considered withdrawn

  (2) If the applicant fails to comply with the requirements of paragraph (1)(a) or (b) in respect of a previously regularly filed application for a patent not later than four months after the date of the notice referred to in subsection (1), the request for priority is considered to have been withdrawn at the end of that time in respect of that previously regularly filed application unless, before the end of that time,

  • (a) a request is made to the patent office where the previously regularly filed application was filed to provide the copy and certificate referred to in paragraph (1)(a); and

  • (b) the applicant submits to the Commissioner a request that the Commissioner restore the right of priority on the basis of that previously regularly filed application and a statement indicating the patent office to which the request referred to in paragraph (a) was made and the date of that request.

• Marginal note:Applicant considered to comply

  (3) If the conditions set out in paragraphs (2)(a) and (b) are met by the applicant in respect of a previously regularly filed application for a patent, the applicant is considered to have complied with subsection (1) in respect of that application.

• Marginal note:Submission of copy and certificate

  (4) If the conditions set out in paragraphs (2)(a) and (b) are met in respect of a previously regularly filed application for a patent and if the patent office where that application was filed provides the copy and certificate referred to in paragraph (1)(a), the applicant or the patentee, as applicable, must submit the copy and certificate to the Commissioner not later than three months after the day on which they were provided.

• Marginal note:Request for priority considered withdrawn

  (5) If the applicant or patentee fails to comply with subsection (4) in respect of a previously regularly filed application for a patent, the request for priority is considered to have been withdrawn at the end of the time referred to in that subsection in respect of that application.

• Marginal note:Exception

  (6) Subsections (1) to (5) do not apply in respect of a previously regularly filed application on the basis of which an applicant requests priority if the pending category 3 application is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application and if the requirements of Rule 17.1(a), (b) or (b-bis) of the Regulations under the PCT are complied with in respect of that previously regularly filed application.

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

• 197 (1) For the purposes of subsection 35(2) of the Act, in respect of a category 3 application, the prescribed time for making a request for examination and for paying the fee is any time before

  • (a) in the case of such an application that is not a divisional application, the end of a period of five years after the filing date of the application; and

  • (b) in the case of such an application that is a divisional application, the later of

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

    • (ii) the end of a period of three months after the presentation date of the divisional application or, if the presentation date precedes October 30, 2019, the end of a period of six months after the presentation date of the divisional application.

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

  (2) Subsection 3(1) does not apply to the times prescribed by subsection (1).

Marginal note:Exception to subsection 84(1)

198 If a request is made by an applicant under subsection 84(1) in relation to a category 3 application, the Commissioner must not, despite that subsection, advance the examination of that application out of its routine order or, if the examination has been advanced, must return it to its routine order if

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

• (b) after April 30, 2011, the Commissioner has, under subsection 26(1) of the former Rules, extended the time fixed for doing anything in respect of the application;

• (c) after April 30, 2011, the application is or was deemed to be abandoned under

  • (i) subsection 73(1) of the Act, or

  • (ii) subsection 73(1) of the Act, as it read immediately before October 30, 2019; or

• (d) on or after October 30, 2019, the application is or was deemed to be abandoned under subsection 73(2) of the Act.