Patent Rules (SOR/2019-251)

Abuse of Rights Under Patents

Marginal note:Application fee

• 129 (1) A person who makes an application under section 65 or 127 of the Act must pay the fee set out in item 31 of Schedule 2.

• Marginal note:Fee for advertisement

  (2) If the applicant requests advertisement of the application on the website of the Canadian Intellectual Property Office, they must pay the fee set out in item 32 of Schedule 2.

Marginal note:Time to deliver counter statement

• 130 (1) For the purposes of subsection 69(1) of the Act, including that subsection as modified by section 128 of the Act, the prescribed time is four months after the latest of the following dates:

  • (a) in respect of a person that is served with copies of the application and the statutory declarations referred to in subsection 68(1) of the Act, the day on which that person is served or, if the copies of the application and the statutory declarations are served on that person on different days, the later of those days,

  • (b) the day on which the application is advertised in the Canada Gazette, and

  • (c) the day on which the application is advertised on the website of the Canadian Intellectual Property Office.

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

  (2) Subsection 3(1) does not apply in respect of the time prescribed by subsection (1).

Abandonment and Reinstatement

Marginal note:Time to reply

• 131 (1) For the purposes of paragraph 73(1)(a) of the Act, the prescribed time is four months after the date of the notice of the requisition made by the examiner.

• Marginal note:Exception to subsection 3(1)

  (2) Subsection 3(1) does not authorize the Commissioner to extend the time prescribed by subsection (1) beyond six months after the date of the notice.

• Marginal note:Delayed receipt of notice

  (3) However, in the case of a notice under subsection 86(2) or (5) that was received by the applicant more than one month after the day on which it was sent, the Commissioner may extend the time prescribed by subsection (1) to up to six months after the day on which the notice was received if the applicant

  • (a) applies for the extension within 14 days after the day on which the notice was received; and

  • (b) in that application, provides evidence satisfactory to the Commissioner of the date of receipt of the notice.

Marginal note:Application deemed abandoned

• 132 (1) Subject to subsection (2) and for the purposes of subsection 73(2) of the Act, an application for a patent is deemed to be abandoned if

  • (a) the applicant does not comply with a notice of the Commissioner referred to in subsection 15(4) within the time referred to in that subsection;

  • (b) a notice is sent under section 31 and the requirements are not complied with within the applicable time referred to in that section;

  • (c) the applicant does not reply in good faith to a request of the Commissioner for further drawings under subsection 27(5.2) of the Act not later than three months after the date of the request;

  • (d) the applicant does not reply in good faith to a notice of the Commissioner referred to in section 65 within the time referred to in that section;

  • (e) the applicant does not make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3);

  • (f) a notice of allowance is sent under subsection 86(1), (6), (10) or (12) and the applicant does not pay the final fee set out in item 14 of Schedule 2 within the time referred to in the applicable subsection;

  • (g) the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner sent under subsection 86(1.1) and pay the final fee set out in item 14 of Schedule 2 within the time referred to in that subsection; or

  • (h) the applicant does not comply with a notice of the Commissioner referred to in subsection 155.5(6) within the time referred to in that subsection.

• Marginal note:Exception

  (2) Paragraphs (1)(f) and (g) do not apply in respect of a notice of allowance or a conditional notice of allowance that is set aside in accordance with subsection 85.1(4).

Marginal note:Prescribed time — request for reinstatement

• 133 (1) For the purposes of paragraph 73(3)(a) of the Act, in respect of a failure to take an action, the prescribed time is 12 months after the day on which the application for a patent is deemed, as a result of that failure, to be abandoned.

• Marginal note:Request for reinstatement — multiple failures

  (2) A request for reinstatement may be made in respect of more than one failure to take an action, if the request is made before the end of the applicable prescribed time that is the first to end.

• Marginal note:Failure to pay certain fees

  (3) If an application for a patent is deemed to be abandoned for failure to pay a fee referred to in subsection 68(1) or (2), 80(1), 85.1(5) or 87(1), the action that should have been taken in order to avoid that abandonment and that the applicant must take before the end of the time prescribed by subsection (1) in order to reinstate the application is

  • (a) the payment of the applicable standard fee; or

  • (b) if the small entity status condition set out in subsection 44(2) is met, the filing of a small entity declaration in respect of the application in accordance with subsection 44(3) and the payment of the applicable small entity fee.

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

  (4) Subsection 3(1) does not apply to the time prescribed by subsection (1).

Marginal note:Prescribed fee

• 134 (1) Subject to subsection (2) and for the purposes of subparagraph 73(3)(a)(iv) of the Act, the prescribed fee is, for each failure to take an action referred to in the request for reinstatement, the fee set out in item 15 of Schedule 2.

• Marginal note:Interpretation — failure to take action

  (2) If both of the following failures to take action are referred to in the request for reinstatement, they are considered to be a single failure to take action:

  • (a) a failure to reply in good faith, within the time referred to in the applicable subsection, to any requisition made by an examiner under subsection 86(2) or (5); and

  • (b) a failure to make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3).

Marginal note:Non-application of certain portions of subsection 73(3) of Act

• 135 (1) Subparagraph 73(3)(a)(ii) and paragraph 73(3)(b) of the Act do not apply

  • (a) in respect of a failure under paragraph 73(1)(a), (b) or (e) or subsection 73(2) of the Act; or

  • (b) in respect of a failure under paragraph 73(1)(d) of the Act if, within six months after the applicable time prescribed by subsection 35(2) of the Act and in respect of that failure, the applicant makes a request for reinstatement to the Commissioner, takes the action that should have been taken in order to avoid the abandonment and pays the fee prescribed by section 134 of these Rules.

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

  (2) Subsection 3(1) does not apply to the time prescribed by paragraph (1)(b).

Fees for Services

Marginal note:Fee for certified copies

• 136 (1) A person who requests from the Commissioner a certified copy of a document that is in the Commissioner’s possession must pay the fee set out in item 36 or 37 of Schedule 2, as applicable.

• Marginal note:Exception

  (2) Subsection (1) does not apply in respect of a certified copy transmitted under rule 318 of the Federal Courts Rules, including that rule as modified by rule 350 of those Rules.

Marginal note:Fee for non-certified copies

137 A person who requests from the Commissioner a non-certified copy of a document that is in the Commissioner’s possession must pay the fee set out in item 38 or 39 of Schedule 2, as applicable.

Marginal note:Fee for requesting information

138 A person who requests that the Patent Office provide information concerning the status of a patent or an application for a patent must pay the fee set out in item 40 of Schedule 2.

Refund and Waiver of Fees

Marginal note:Refund of fees

• 139 (1) Only the following fees may be refunded by the Commissioner:

  • (a) [Repealed, SOR/2021-131, s. 21]

  • (b) any fee, other than the fee referred to in subsection 27(2) of the Act, paid in respect of an application, other than a PCT national phase application, that was filed through inadvertence, accident or mistake and that was withdrawn not later than the fourteenth day after the earliest date on which the Commissioner received any document or information in respect of that application under subsection 28(1) of the Act or, in the case of a divisional application, not later than the fourteenth day after the earliest date on which the Commissioner received any document or information referred to in subsection 103(1) in respect of that application;

  • (c) any fee, other than the fee set out in any of items 16 to 21 of Schedule 2, paid in respect of an international application, if one or more of the requirements for entry into the national phase were met in respect of the application through inadvertence, accident or mistake and, if the international application has become a PCT national phase application, that PCT national phase application was withdrawn not later than the fourteenth day after its national phase entry date;

  • (d) a fee paid in respect of a request for the registration of a document relating to a patent or an application for a patent, if the fee is received but the document is not submitted;

  • (e) a fee paid for advertising on the website of the Canadian Intellectual Property Office an application presented to the Commissioner under section 65 of the Act, if the application was not advertised on that website;

  • (f) a fee paid in respect of a request for a copy of a document if the request is withdrawn before the copy is made;

  • (g) a fee paid in respect of a request for a copy of a document, if the Patent Office does not have that document;

  • (g.1) a fee paid for an application for an additional term made under paragraph 46.1(1)(c) of the Act, if the Commissioner dismisses the application because the patentee did not comply with that paragraph;

  • (g.2) a fee paid to maintain in effect the rights accorded by a patent in effect under subsection 46.2(1) of the Act, if the payment is made on or before the date of the dismissal under subsection 117.01(8) of these Rules;

  • (g.3) a fee paid for the examination of an application for a patent under subsection 35(1) of the Act, a fee paid to maintain an application for a patent in effect under subsection 27.1(1) of the Act or a final fee paid under subsection 87(1) of these Rules if

    • (i) the application for a patent has been deemed to be abandoned,

    • (ii) the payment of the fee is made on or after the day on which the applicant met all the conditions in paragraph 73(3)(a) of the Act in respect of that abandonment, and

    • (iii) the application is not reinstated because the requirements under paragraph 73(3)(b) of the Act in respect of that abandonment are not met;

  • (g.4) a fee is paid to maintain the rights accorded by a patent in effect under subsection 46(1) or 46.2(1) of the Act if

    • (i) the term of the patent is deemed expired, the payment is made on or after the day on which the patentee met all the conditions in paragraph 46(5)(a) of the Act and subsection 46(4) of the Act is not deemed to have never produced its effects because the requirement under paragraph 46(5)(b) of the Act is not met, or

    • (ii) the additional period granted under section 46.1 of the Act is deemed expired, the payment is made on or after the day on which the patentee met all the conditions in paragraph 46.2(5)(a) of the Act and subsection 46.2(4) of the Act is not deemed to have never produced its effects because the requirement under paragraph 46.2(5)(b) of the Act is not met;

  • (h) any overpayment of a fee;

  • (i) any fee paid, if payment of the fee is waived by the Commissioner;

  • (j) a fee paid under subsection 85.1(3) for the continued examination of an application for a patent, if the fee was paid in response to a notice referred to in subsection 85.1(6); and

  • (k) any fee that is to be refunded under these Rules.

• Marginal note:Request

  (2) The Commissioner must not give a refund under any of paragraphs (1)(a) to (h) unless a request for the refund is received not later than three years after the day on which the fee was paid.

• Marginal note:Services Fee Act

  (3) The Commissioner must not refund all or part of a fee referred to in subsection (1) that is remitted or is required to be remitted under the Service Fees Act.

Marginal note:Waiver — paragraph 3(4)(d)

• 139.1 (1) In the case where the Commissioner considers that the circumstances do not justify requiring the statement and the application referred to in paragraph 3(4)(c), the Commissioner is authorized to waive, in favour of the applicant or patentee, payment of the difference referred to in paragraph 3(4)(d) if the Commissioner considers that the circumstances justify the waiver.

• Marginal note:Additional waiver

  (2) In the case where the Commissioner waives payment under subsection (1), the Commissioner is also authorized to waive, in favour of any applicant or patentee, payment of the difference between the amount specified in the erroneous information provided by the Commissioner and the amount that should have been specified if

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

  • (b) the period of time for the payment of the fee has not expired;

  • (c) the payment of the insufficient amount is made not later than the earlier of the day that is four months after the day on which the Commissioner issues the waiver under subsection (1) and the day fixed by the Commissioner; and

  • (d) the Commissioner considers that the circumstances justify the waiver.

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

  (3) Subsection 3(1) does not apply to the time referred to in paragraph (2)(c).

Marginal note:Waiver of fee — request to correct errors

• 140 (1) The Commissioner is authorized to waive the payment of the fee set out in item 24 of Schedule 2 that is payable for a request for a correction if the request is in regard to an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.

• Marginal note:Waiver of fee — reissue of patent

  (2) The Commissioner is authorized to waive the payment of the fee set out in item 28 of Schedule 2 for filing an application to reissue a patent if the application for reissue is as a result of an error made by the Commissioner and if the Commissioner is satisfied that the circumstances justify it.

• Marginal note:Waiver of fee — extension of time

  (3) The Commissioner is authorized to waive the payment of the fee set out in item 1 of Schedule 2 that is payable for filing an application for an extension of the time for replying to a requisition made under subsection 86(2) or (5) if

  • (a) the notice sent under subsection 86(2) or (5) was received by the applicant more than one month after the day on which the notice was sent;

  • (b) the applicant applies for the extension within 14 days after the day on which the notice was received and, in that application, provides evidence satisfactory to the Commissioner of the date of receipt of the notice; and

  • (c) the Commissioner is satisfied that the circumstances justify it.