Patent Rules (SOR/2019-251)

Marginal note:Translation replaces original — description

• 155.5 (1) If a translation is submitted under paragraph 154(1)(b), the translation replaces the entirety of the description other than any sequences listings.

• Marginal note:Translation replaces original — claims

  (2) If a translation is submitted under paragraph 154(1)(b.1), the translation replaces the entirety of the claims.

• Marginal note:Translation replaces original — element of application

  (3) If a translation is submitted under section 155.1, the translation replaces the corresponding text matter in the PCT national phase application.

• Marginal note:Failure to provide translation — certain elements

  (4) If the applicant fails to provide a translation of a part of the description or claims or of any text matter in a drawing, in accordance with subsection 155.1(1) or paragraph 155.1(2)(b), respectively, the corresponding untranslated text matter in the PCT national phase application must not be taken into account for the purpose of interpreting the scope of protection sought or obtained.

• Marginal note:Failure to provide translation — statement

  (5) If the applicant fails to provide a translation of all or part of the statement referred to in paragraph 155.1(2)(e) in accordance with that paragraph, the statement may be disregarded by the Commissioner.

• Marginal note:Failure to provide translation or complete copy

  (6) If the applicant fails to provide a translation in accordance with paragraph 155.1(2)(c) or (d) or a complete copy in accordance with paragraph 155.4(1)(a), (b) or (c), the Commissioner may by notice require the applicant to provide the translation or complete copy no later than three months after the date of the notice.

Marginal note:Amendments to specification and drawings

• 155.6 (1) If all or part of the text matter of the specification or the drawings contained in an international application on its international filing date is in a language other than English or French, the specification and the drawings contained in the PCT national phase application must not be amended to add matter not reasonably to be inferred from both

  • (a) the specification or the drawings contained in the international application on its international filing date; and

  • (b) the specification or the drawings contained in the international application immediately after it became a PCT national phase application, excluding any text matter that is not in English or French other than text matter in a sequence listing that is not language-dependent free text.

• Marginal note:Sequence listing

  (2) For the purposes of paragraph (1)(a), if the international application contains, on its international filing date, text matter in a sequence listing that is both in English or French and in a language other than English or French, the text matter that is in a language other than English or French is considered not to have been included in the application on that date.

• Marginal note:Divisional application

  (3) The specification and the drawings contained in a divisional application resulting from the division of a PCT national phase application must not be amended to add matter that may not be or could not have been added — under subsection 38.2(2) of the Act, subsection (1) of this section or this subsection — to the specification and the drawings contained in the application for a patent from which the divisional application results.

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

  (4) Subsections (1) and (3) do not apply if it is admitted in the specification contained in the divisional application that the matter is prior art.

Marginal note:Clarification — divisional application

155.7 For greater certainty, the specification and the drawings contained in a divisional application resulting from the division of a PCT national phase application must not contain matter that is not in the specification and the drawings contained in the original application on its filing date, or if the original application is itself a divisional application, on its presentation date, unless

• (a) the matter may be or could have been added — under section 155.6 of these Rules and subsection 38.2(1) and paragraph 38.2(3.1)(b) of the Act, without taking into account subsection 155.6(4) of these Rules or subsection 38.2(4) of the Act — to the specification and the drawings contained in the original application; or

• (b) it is admitted in the specification contained in the divisional application that the matter is prior art.

Marginal note:Clarification

• 156 (1) For greater certainty, in respect of an international application that has become a PCT national phase application, for the purposes of the Act and these Rules,

  • (a) documents or information included in the international application as filed are deemed to have been received by the Commissioner on the international filing date; and

  • (b) documents or information, other than the documents or information referred to in paragraph (a), furnished in accordance with the requirements of the Patent Cooperation Treaty before the application became a PCT national phase application are deemed to have been received by the Commissioner on the day on which they were so furnished.

• Marginal note:Exception — sequence listings

  (2) Paragraph (1)(b) does not apply in respect of sequence listings that do not form part of the international application.

Marginal note:Application considered open to public inspection

157 If an international application is published in English or French by the International Bureau of the World Intellectual Property Organization under Article 21 of the Patent Cooperation Treaty on or before its national phase entry date, the application is considered to be open to public inspection under section 10 of the Act beginning on the date of that publication.

Marginal note:Non-application of subsection 27(2) of Act

158 The requirements of subsection 27(2) of the Act regarding the petition and the application fee do not apply in respect of a PCT national phase application.

Marginal note:Non-application of certain provisions of Act

• 159 (1) Subsection 27(7), sections 27.01, 28 and 28.01, subsections 38.2(3) and 78.1(2) and section 78.2 of the Act do not apply in respect of a PCT national phase application.

• Marginal note:Non-application of paragraph 38.2(3.1)(a) of Act

  (2) Paragraph 38.2(3.1)(a) of the Act does not apply in respect of a divisional application resulting from the division of a PCT national phase application.

Marginal note:Non-application of section 78 of Act

160 Section 78 of the Act does not apply in respect of a time period referred to in that section that ends before the national phase entry date of a PCT national phase application.

Marginal note:Filing date

161 The filing date of a PCT national phase application is the international filing date.

Marginal note:Filing date deemed to be within 12 months

162 For the purposes of paragraph 28.1(1)(b) of the Act and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii) of the Act, even if the conditions referred to in paragraph 28.4(6)(b) of the Act are not met, the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if

• (a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application, but within two months after the end of those 12 months;

• (b) the pending application or the co-pending application, as the case may be, is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application; and

• (c) the right of priority, in respect of the previously regularly filed application, was restored under Rule 26bis.3 of the Regulations under the PCT and that restoration is, under Rule 49ter.1 of those Regulations, effective in Canada.

Marginal note:Application considered not to be referred to in paragraph 28.2(1)(c) or (d) of Act

163 An international application is considered not to be an application for a patent referred to in paragraph 28.2(1)(c) of the Act or not to be a co-pending application referred to in paragraph 28.2(1)(d) of the Act, unless it has become a PCT national phase application.

Marginal note:Patent not invalid

164 A patent that was granted on the basis of an international application must not be declared invalid by reason only that a fee referred to in section 154 was not paid.

PART 3Transitional Provisions

DIVISION 1Interpretation

Marginal note:Definitions

• 165 (1) The following definitions apply in this Part.

  application preceding the coming-into-force date

  application preceding the coming-into-force date[Repealed, SOR/2022-120, s. 36]

  category 1 application

  category 1 application means an application for a patent for which the filing date is before October 1, 1989. (demande de catégorie 1)

  category 2 application

  category 2 application[Repealed, SOR/2022-120, s. 36]

  category 3 application

  category 3 application means an application for a patent for which the filing date is on or after October 1, 1996 but before October 30, 2019. (demande de catégorie 3)

  coming-into-force date

  coming-into-force date[Repealed, SOR/2022-120, s. 36]

  former Rules

  former Rules means the Patent Rules as they read immediately before October 30, 2019. (anciennes règles)

• Marginal note:Interpretation

  (2) If the filing date of an application for a patent, other than a PCT national phase application, as determined in accordance with section 78.2 of the Act, precedes October 30, 2019, the filing date of that application is, for the purposes of these Rules, the filing date determined in accordance with that section.

Marginal note:Reissued patents

166 For greater certainty, for the purposes of this Part, a reissued patent is considered to be issued on the basis of the original application.

Marginal note:Application of subsection 3(1)

167 For greater certainty, subsection 3(1) applies in respect of any time limit fixed by the former Rules that continues to apply under these Rules.

DIVISION 2Rules in Respect of Category 1 Applications

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

• 168 (1) Sections 14, 47 to 51, 55, 56, 58 to 63, 65 and 74, subsection 86(1.1), subparagraphs 87(1)(a)(iii) and (b)(iii), sections 93 to 96, subsections 97(2) and (3) and sections 98 and 104 do not apply in respect of a category 1 application.

• Marginal note:Non-application of subsection 86(14)

  (2) Subsection 86(14) does not apply in respect of a category 1 application at any time at which it is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989.

• (3) [Repealed, SOR/2022-120, s. 37]

Marginal note:Application of certain provisions of former Rules

• 169 (1) Subject to subsection (3), sections 170, 171, 174, 175, 177, 181 and 183 to 186 of the former Rules continue to apply in respect of a category 1 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 1 application for which a notice of allowance was sent before October 30, 2019, other than such an application that is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989, and is subsequently restored.

• Marginal note:Photographs

  (3) Paragraphs 177(1)(a), (b), (e) and (h) of the former Rules do not apply in respect of photographs provided in respect of a category 1 application.

• Marginal note:Application of section 179 of former Rules

  (4) Section 179 of the former Rules continues to apply in respect of a category 1 application, except that the reference to “the filing date and number of each application in a country other than Canada on which the applicant bases the claim” in that section is to be read as a reference to “the filing date and the name of the country of filing of each application that was filed in a country other than Canada on which the claim is based”.

Marginal note:Reference to “the Act”

170 A reference in section 42 and subsection 86(13) to “the Act”, in relation to a category 1 application, is to be read as a reference to “the Act as it read immediately before October 1, 1989”.

Marginal note:Final fee

171 With respect to a category 1 application,

• (a) the reference to “the final fee set out in item 14 of Schedule 2 not later than four months after the date of the notice” in subsections 86(1), (6), (10) and (12) is to be read as a reference to “the final fee set out in paragraph 6(b) of Schedule II to the former Rules within six months after the date of the notice”; and

• (b) the reference to “the small entity fee set out in paragraph 14(a) of Schedule 2”, “the standard fee set out in paragraph 14(a) of Schedule 2” and “the fee set out in paragraph 14(b) of Schedule 2” in subsection 87(1) is to be read as a reference to “the small entity fee set out in subparagraph 6(b)(i) of Schedule II to the former Rules”, “the standard fee set out in paragraph 6(b)(i) of Schedule II to the former Rules” and “the fee set out in subparagraph 6(b)(ii) of Schedule 2 to the former Rules”, respectively.

Marginal note:Rejection for defects

• 172 (1) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(2) of the former Rules, on or before the date set out in subsection (4) of this section, but the examiner, after receiving the reply, has reasonable grounds to believe that the application does not comply with the Act or these Rules in respect of any 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.

• Marginal note:Notice — application found allowable after final action

  (2) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(4) of the former Rules, on or before the date set out in subsection (4) of this section, if the examiner has reasonable grounds to believe that the application complies with the Act and these Rules and if the Commissioner has not sent a notice of allowance under subsection 30(5) of the former Rules, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and must require the payment of the final fee set out in paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of that notice.

• Marginal note:Rejection not withdrawn after final action

  (3) If an applicant of a category 1 application replies in good faith to a requisition made under subsection 30(4) of the former Rules, on or before the date set out in subsection (4) of this section, but the examiner, after that date, still has reasonable grounds to believe that the application does not comply with the Act or these Rules,

  • (a) if a notice was not sent under paragraph 30(6)(a) of the former Rules, the Commissioner must by notice inform the applicant that the rejection has not been withdrawn;

  • (b) any amendments made during the period beginning on the date of the final action notice and ending on the date set out in subsection (4) of this section are considered never to have been made; and

  • (c) the application must be reviewed by the Commissioner.

• Marginal note:Date

  (4) For the purposes of subsections (1) to (3), the date is the later of

  • (a) the day that is six months after the date of the requisition referred to in subsection 30(2) or (4) of the former Rules, as applicable, and

  • (b) if the application is deemed to be abandoned under subsection 30(1) of the Act, as it read immediately before October 1, 1989, for the failure of the applicant to prosecute the application following the requisition made under subsection 30(2) or (4) of the former Rules, as applicable, the day on which the conditions for reinstatement set out in subsection 30(2) of the Act, as it read immediately before October 1, 1989, are met in respect of that abandonment.

• Marginal note:Notice — application found allowable after amendments

  (5) If the applicant of a category 1 application has complied with a notice sent under subsection 30(6.3) of the former Rules in respect of amendments that have to be made and if a notice of allowance was not sent under that subsection, the Commissioner must by notice inform the applicant that the rejection is withdrawn and the application has been found to be allowable and require the payment of the final fee set out in paragraph 6(b) of Schedule II to the former Rules not later than four months after the date of the notice sent under this subsection.

• Marginal note:Non-application of paragraph (3)(b)

  (6) Paragraph (3)(b) does not apply in respect of an application for a patent that, before December 29, 2013, was rejected by an examiner under subsection 30(3) of the former Rules unless the rejection has been withdrawn.

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

  (7) Subsection 3(1) does not apply in respect of the time referred to in subsection (2) or (5).