The current Patent Rules impose limits on who the Patent Office can communicate with during the patent application stage. The Patent Office can only communicate with the authorized correspondent, which is typically the appointed patent agent. Proposed amendments to the Patent Rules will allow more flexibility with respect to who can represent the applicant and communicate with the Patent Office regarding certain actions to prosecute and maintain a patent application. The proposed amendments will also introduce the concept of a common representative.
Appointment of a common representative
There is no common representative under the current Patent Rules. A common representative is one of multiple (joint) applicants or patentees who may take certain actions on behalf of the joint applicants or joint patentees as a whole. This concept, similar to the existing one in the Patent Cooperation Treaty, is intended to address situations where joint applicants cannot all sign the same document in a time-sensitive procedure, such as the appointment of a patent agent. A common representative may be appointed by the other joint applicants or patentees in the documents submitted at filing or national entry, or in a notice to the Commissioner signed by the other joint applicants or patentees. The proposed amendments also contain default provisions for identifying the common representative when none has been appointed or when they are no longer an applicant or patentee.
Appointment of patent agents
The proposed amendments maintain the mandatory requirement under the current Rules to appoint a patent agent if:
- the application is filed by someone other than the inventor,
- there is more than one inventor and the application is not filed by all of the named inventors, or
- a transfer has been recorded with the Patent Office.
If the applicant is required to appoint a patent agent, the Patent Office will send a notice requiring the appointment within three months after the date of the notice. The applicant will be able to appoint an agent who resides in Canada or a non-Canadian resident agent, who in turn will be required to appoint an associate patent agent who resides in Canada within the same three months of the notice. Failure to do so will cause the patent application to be deemed abandoned. Please see the Discussion Paper on Abandonment & Reinstatement for more information.
A patent agent can be appointed:
- in the petition when the patent application is filed, or for PCT national phase applications, in a notice to the Commissioner submitted on or before the national phase entry date Footnote 1; or
- by submitting a notice to the Commissioner signed by the applicant/patentee, or a common representative if there are joint applicants or patentees.
Patent agent's consent required:
Under the current Patent Rules, the appointment of an agent is effective the date the document appointing the agent is submitted to the Office. The proposed amendments stipulate that a patent agent must consent to their appointment if they did not submit the document that appoints them as agent. Most of the documents containing appointments of agents are submitted by the agent on behalf of the applicant and therefore consent would not be required. In those rare cases where a person other than the appointed agent submits the document appointing the agent, the appointment will not be considered effective until evidence of the agent's consent to the appointment is provided to the Commissioner. This new provision will not apply to the appointment of associate patent agents.
Appointment of associate patent agents:
The proposed amendments maintain the regulatory regime for associate patent agents. Only an appointed patent agent can appoint an associate patent agent. A foreign patent agent must appoint a Canadian associate patent agent. The appointment of an associate agent can be made:
- in the petition as submitted on the filing date (if that petition is submitted by a patent agent), or for PCT national phase applications, in a notice to the Commissioner submitted by a patent agent on or before the national phase entry date Footnote 2; or
- by submitting a notice to the Commissioner signed by the appointed patent agent
If the agent is required to appoint an associate patent agent, the Patent Office will send them a notice requiring them to do so within three months after the date of the notice. Failure to do so will cause the patent application to be deemed abandoned. Please see the Discussion Paper on Abandonment & Reinstatement for more information.
Representation – Who can take action with the patent office?
Current state
During the application stage, the Patent Rules impose a limit so that the only person who can take action on the file, whether it is to communicate with the Patent Office, submit documents or pay fees, is the authorized correspondent. If a Canadian patent agent has been appointed, they are the authorized correspondent; in other cases, it may be the inventor who is also the applicant. Once the patent has been granted, the Patent Office will accept maintenance fee payments from persons authorized by the patentee.
Proposed new state
The proposed amendments will permit more individuals to represent the applicant for certain actions related to prosecution and maintenance of patent applications. In general, the following individuals will be allowed to take action with the Patent Office:
- The appointed Canadian agent (patent agent or associate patent agent);
- The sole applicant (if a patent agent is not required); or
- The common representative (if there are joint applicants and if a patent agent is not required).
However, there are exceptions where other individuals will be able to perform some actions related to the prosecution and maintenance of patent applications, whether or not a patent agent has been appointed (this list is not exhaustive):
- Submitting a patent application to obtain a filing date:
Who may act?- The appointed Canadian agent
- Any of the applicants
- A person authorized by any of the applicants
- Submitting a request for PCT national entry:
Who may act?- The appointed Canadian agent
- Any of the applicants
- A person authorized by any of the applicants
- Paying a maintenance fee for a patent application or a patent:
Who may act?- The appointed Canadian agent
- Any of the applicants
- A person authorized by any of the applicants
- Reinstate a patent application that is abandoned due to an unpaid maintenance fee
Who may act?- The appointed Canadian agent
- The sole applicant or the common representative, as applicable
- Most actions for an issued patent (with some exceptions such as reissue, disclaimers and re-examination, etc.)
Who may act?- The appointed Canadian agent
- The sole patentee or the common representative, as applicable
- A person authorized by the sole patentee or by the common representative, as applicable
For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.
References:
Bill C-43:
- Transfers – Section 49 (not yet in force)
Proposed Patent Rules:
- Appointment of Common Representative – Section 26
- Appointment of Patent Agents – Sections 27 to 32
- Representation – Sections 33 to 41