Patent Rules (SOR/2019-251)

Marginal note:Extension of time — section 208

211 The Commissioner is authorized to extend the time for the payment of a fee referred to in subsection 112(1), as modified by section 208, 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) are met.

Marginal note:Extension of period established by Commissioner

212 If, under paragraph 73(1)(a) of the Act, as it read immediately before October 30, 2019, the Commissioner established a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is authorized to extend that period for up to six months after the requisition was made — whether that time has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee set out in item 1 of Schedule 2 is paid.

Marginal note:Extension of time fixed by former Rules

213 If, before October 30, 2019, a requisition referred to in section 23, 25, 37 or 94 of the former Rules was sent by notice by the Commissioner, the Commissioner is authorized to extend the time period to reply in good faith under that section to the requisition — whether that period has expired or not — if the Commissioner considers that the circumstances justify the extension and if, before the expiration of that period, the extension is applied for and the fee referred to in item 1 of Schedule 2 to these Rules is paid.

214 [Repealed, SOR/2023-113, s. 10]

Marginal note:Documents not in English or French

215 Despite section 15, the Commissioner must have regard to any document or part of a document that is submitted or made available in a language other than English or French under subsection 196(1) of these Rules, or provided under subsection 29(1) or paragraph 58(1)(a) of the former Rules or filed under section 89 or 180 of the former Rules, in a language other than English or French.

Marginal note:Patent agent deemed to be appointed

216 If, before October 30, 2019, a patent agent was appointed in the petition or in a notice to that effect signed by the applicant and submitted to the Commissioner, the appointment of the patent agent is deemed to have been made in accordance with section 27.

Marginal note:Associate patent agent deemed to be appointed

217 If, before October 30, 2019, an associate patent agent was appointed in the petition or in a notice that was signed by the patent agent who appointed the associate patent agent and submitted to the Commissioner, the appointment of the associate patent agent is deemed to have been made in accordance with section 28.

Marginal note:Representation — application filed before October 30, 2019

218 In respect of an application for a patent for which the filing date is before October 30, 2019 — other than a divisional application that has a presentation date on or after October 30, 2019 — for which there are joint applicants and in respect of which no common representative is appointed under paragraph 26(3)(a) or (c), in respect of which no correction or decision referred to in subsection 26(6) was made — other than a decision made before October 30, 2019 — and in respect of which subsection 26(9) does not apply,

• (a) if, before October 30, 2019, no patent agent residing in Canada is appointed

  • (i) subsections 26(4) to (6) do not apply, and

  • (ii) subject to subsection 26(11), the joint applicant who, before October 30, 2019 was the authorized correspondent under the former Rules, is deemed to be appointed as the common representative; and

• (b) if, before October 30, 2019, a patent agent residing in Canada is appointed,

  • (i) if the appointment of that patent agent has been revoked, the joint applicant whose name appears first when listed in alphabetical order at the time of the revocation is, subject to subsection 26(11), deemed to be appointed as the common representative, and

  • (ii) in any other case,

    • (A) subsections 26(4) to (6) and paragraph 27(7)(a) do not apply,

    • (B) any appointment of a patent agent by the applicants on or after October 30, 2019 may, despite subsection 27(3), be made only by a notice to that effect signed by all of the applicants and submitted to the Commissioner, and

    • (C) an appointment of a patent agent may be revoked by submitting to the Commissioner a notice to that effect signed by all of the applicants or by that patent agent.

Marginal note:Representation — patent granted before October 30, 2019

219 In respect of a patent — other than a reissued patent — granted before October 30, 2019 for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

• (a) if, immediately before the patent was granted, no patent agent residing in Canada was appointed in respect of the application on which the patent was based and if the joint applicant who, immediately before the patent was granted, was the authorized correspondent under the former Rules, is a patentee before October 30, 2019,

  • (i) subsection 26(7) does not apply, and

  • (ii) subject to subsection 26(11), that applicant is deemed to be appointed as the common representative; and

• (b) in any other case,

  • (i) subsection 26(7) and paragraph 27(7)(a) do not apply,

  • (ii) any appointment of a patent agent by the patentees on or after October 30, 2019 may, despite subsection 27(3), be made only by a notice to that effect signed by all of the patentees and submitted to the Commissioner, and

  • (iii) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Representation — patent reissued before October 30, 2019

220 In respect of a patent that is reissued before October 30, 2019 for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a) and in respect of which subsection 26(9) does not apply,

• (a) if, immediately before the original patent was granted, no patent agent residing in Canada was appointed in respect of the application on which the original patent was based and if the joint applicant who, immediately before the original patent was granted, was the authorized correspondent under the former Rules, is a patentee of the reissued patent before October 30, 2019,

  • (i) subsection 26(8) does not apply, and

  • (ii) subject to subsection 26(11), that applicant is deemed to be appointed as the common representative; and

• (b) in any other case,

  • (i) subsection 26(8) and paragraph 27(7)(a) do not apply,

  • (ii) any appointment of a patent agent by the patentees on or after October 30, 2019 may, despite subsection 27(3), be made only by a notice to that effect signed by all of the patentees and submitted to the Commissioner, and

  • (iii) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Representation — patent granted on or after October 30, 2019

221 In respect of a patent, other than a reissued patent, granted on or after October 30, 2019, on the basis of an application for a patent for which the filing date is before October 30, 2019, for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was granted, no common representative was appointed in respect of that application,

• (a) subsection 26(7) and paragraph 27(7)(a) do not apply;

• (b) any appointment of a patent agent on or after October 30, 2019 may, despite subsection 27(3), be made by the patentees only by a notice to that effect signed by all of the patentees and submitted to the Commissioner; and

• (c) an appointment of a patent agent, including a deemed appointment, may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Representation — patent reissued on or after October 30, 2019

222 In respect of a patent that is reissued — on the basis of an application for a patent for which the filing date is before October 30, 2019 — on or after October 30, 2019 for which there are joint patentees and in respect of which no common representative is appointed under paragraph 26(3)(a), if, immediately before the patent was reissued, no common representative was appointed in respect of the original patent,

• (a) subsection 26(8) and paragraph 27(7)(a) do not apply;

• (b) any appointment of a patent agent on or after October 30, 2019 may, despite subsection 27(3), be made by the patentees only by a notice to that effect signed by all of the patentees and submitted to the Commissioner; and

• (c) an appointment of a patent agent may be revoked by submitting to the Commissioner a notice to that effect signed by all of the patentees or by that patent agent.

Marginal note:Non-application of section 37

223 Section 37 does not apply in respect of business before the Patent Office for the purpose of a procedure commenced before October 30, 2019.

Marginal note:Small entity declaration for patent or application

• 224 (1) A small entity declaration filed before October 30, 2019 in respect of a patent or an application for a patent in accordance with section 3.01 of the former Rules is considered to be filed in accordance with subsection 44(3) or 112(3) of these Rules, as applicable.

• Marginal note:Small entity declaration — patent

  (2) A small entity declaration filed in respect of a patent in accordance with section 3.02 of the former Rules before October 30, 2019 is considered to be filed in accordance with subsection 122(4) of these Rules.

Marginal note:Exception to section 54 — filing date before June 2, 2007

• 225 (1) In respect of an application for a patent, other than a PCT national phase application, that has a filing date before June 2, 2007, the applicant, instead of complying with the requirements of section 54, may comply with

  • (a) the requirements of section 37 of the former Rules;

  • (b) the requirements of section 77 of the Patent Rules, as they read immediately before October 1, 2010; or

  • (c) the requirements of sections 37 and 77 of the Patent Rules, as they read immediately before June 2, 2007.

• Marginal note:Exception — compliance with other requirements

  (2) In respect of a PCT national phase application for which the filing date is before June 2, 2007, the applicant may, instead of complying with the requirements of section 54, comply with the requirements of paragraph (1)(a), (b) or (c) or file a declaration as to the applicant’s entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17 of the Regulations under the PCT.

Marginal note:Exception to section 54 — filing date before October 1, 2010

• 226 (1) In respect of an application for a patent, other than a PCT national phase application, for which the filing date is June 2, 2007 or later but before October 1, 2010, the applicant, instead of complying with the requirements of section 54, may comply with

  • (a) the requirements of section 37 of the former Rules; or

  • (b) the requirements of section 77 of the Patent Rules, as they read immediately before October 1, 2010.

• Marginal note:Exception — compliance with other requirements

  (2) In respect of a PCT national phase application for which the filing date is June 2, 2007 or later but before October 1, 2010, the applicant may, instead of complying with the requirements of section 54, comply with the requirements of paragraph (1)(a) or (b) or file a declaration as to the applicant’s entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17 of the Regulations under the PCT.

Marginal note:Exception to section 54 — filing date before October 30, 2019

227 In respect of an application for a patent for which the filing date is October 1, 2010 or later but before October 30, 2019, the applicant, instead of complying with the requirements of section 54, may comply with the requirements of section 37 of the former Rules.

Marginal note:Clarification

228 For greater certainty, the dates prescribed by sections 69 and 113 do not include any dates that precede October 30, 2019.

Marginal note:Final fee paid before October 30, 2019

229 If, before October 30, 2019, the applicant of an application for a patent for which the filing date is before that date, paid, in respect of that application, the applicable final fee set out in item 6 of Schedule II to the former Rules and that fee was not refunded before that date,

• (a) the reference to “on or before the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again” in subsection 73(5), paragraph 100(2)(a), section 105 and paragraph 106(a) is to be read, in respect of that application, as a reference to “on or before the day on which the applicable final fee set out in item 6 of Schedule II to the former Rules is paid or, if the final fee is refunded, on or before the day on which the final fee set out in item 14 of Schedule 2 is paid”; and

• (b) the reference to “after the day on which the final fee set out in item 14 of Schedule 2 is paid or, if the final fee is refunded, after the day on which the final fee is paid again” in section 127 is to be read as “after the day on which the applicable final fee set out in item 6 of Schedule II to the former Rules is paid or, if the final fee is refunded, after the day on which the final fee set out in item 14 of Schedule 2 is paid”.