Archived — Rules Amending the Patent Rules: Technical Questions and Answers

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NOTE:
Unless otherwise indicated, these Technical Qs & As only address applications that are either filed, or enter the national phase in Canada, on or after the (new) Rules Amending the Patent Rules, SOR/2009-319, come into force, i.e., on or after October 1, 2010. Until the entry into force of the new Rules, the Rules as they currently read will remain in full effect and force.

Introduction

The Rules Amending the Patent Rules were published in Part II of the Canada Gazette on December 9, 2009.

The amendments accomplish the following:

  • simplify the definition of the term "description";
  • clarify the purpose of section 16(4);
  • consolidate provisions that address the establishment of a filing date;
  • clarify the confidentiality period;
  • amend incorrect reference to a section of the Patent Act (hereinafter "Act") regarding the payment of maintenance fees;
  • update the reference to the definition of "small entity" in Form 3 of Schedule I to the Rules;
  • clarify Form 3 of Schedule I to the Rules; and
  • simplify the completion requirements.

Why were the Patent Rules (hereinafter "Rules")amended?

The Rules were amended to address a number of issues raised by the Standing Joint Committee for the Scrutiny of Regulations (SJC), a parliamentary committee established under the Rules of the Senate and the Standing Orders of the House of Commons, which encouraged the Canadian Intellectual Property Office (CIPO) to clarify certain provisions. In addition, CIPO took the opportunity to provide greater legal certainty and reduce the administrative burden for applicants.

What are the main changes to the Rules?

The amendments that warrant specific clarification relate primarily to the Petition for Grant of a Patent (hereinafter "Form 3" of Schedule I to the Rules), and the completion requirements:

  • Form 3
    1. The definition of "small entity" has been updated to no longer refer to the previous definition;
    2. the declaration of entitlement has been replaced with a simple declaration of legal representative; and
    3. a signature box has been added; and
  • Completion requirements
    • The declaration of entitlement will no longer be required to complete an application.  Applicants will now be required to provide a declaration that the applicant is the legal representative of the inventor.

Notwithstanding the reference to "one or more" in section 27.1(1) of the new Rules, are all ofthe enumerated documents, information and fee set out in item 1 of Schedule II to the Rules, (i.e., the Filing fee,) required in order to comply with section 28(1) of the Patent Act (i.e., to be awarded a filing date)?

Yes. All documents specified in section 27.1 have to be submitted in order to establish a filing date in accordance with section 28(1) of the Act. If "one or more" of the enumerated documents, information and "filing fee" is/are received on different dates, the filing date of an application will be the last date on which it/they are received.

Of note, section 27.1(1) of the new Rules, (the new general filing provision) only consolidates the three previous provisions that address the establishment of a filing date, namely, former sections 67, 132 and 167.

Why was the Petition for Grant of a Patent (hereinafter "Form 3" of Schedule I) amended?

Form 3 was amended to:

  • replace the declaration of entitlement to a simpler declaration of legal representative;
  • update the definition of "small entity" so that it no longer refers to the previous definition; and
  • clarify the instructions to indicate what sections need to be included and to specify that a signature is required if a small entity declaration is included in Form 3 in accordance with section 3.01(1)(e) of the Rules.

Is the objective of replacing the declaration of entitlement with a declaration of legal representative aimed at curtailing the practice of assignments being submitted at time of filing?

No. The Office will still register assignment documents, however, these documents are no longer required to establish entitlement at filing, nor will they be reflected in the chain of title. The objective is simply to clarify that assignment documents or declarations of entitlement will no longer be required to complete an application. In other words, nothing related to the establishment of the entitlement to file an application is considered a completion requirement any longer.

If, in respect of a PCT national phase application, the Request for National Entry contains a declaration complying with PCT Rule 4.17(ii) as to the applicant's entitlement as at the international filing date to apply for and be granted a patent, does either another declaration of entitlement or declaration of legal representative have to be submitted upon national entry in Canada?

No. In accordance with new section 37, and existing section 59.2 of the Rules, information or notices included in the international application as filed shall be considered to have been received by the Commissioner of Patents on the filing date accorded to the application by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty. Accordingly, applicants will have the choice to include a declaration under PCT Rule 4.17(ii) in the international application, or submit a declaration of legal representative upon national entry in Canada.

Is the Office going to maintain a "chain of title"?

Yes. The chain of title starts with the applicant at filing, and reflects every assignment of rights submitted after filing. The Office will, however, continue to maintain the names of the inventors in a separate field. The Office takes the position that the applicant is the person who complies with section 27(2) of the Act.

Will assignment documents, as at or before filing, still be registered as "other documents"?

No. These assignment documents will be represented by a registration certificate that refers to an "assignment," not "other document." That said, the chain of title will not reflect any changes made before filing.

Can applicants request "BFs" (Bring Forwards) of the chain of title for divisional applications?

No. The Office will no longer maintain a "BF" system as there is no need to re-register assignment documents. Applicants that still request a "BF", however, will receive a registration certificate which will contain a unique registration number, as the chain of title now commences with the applicant/latest owner, instead of the inventor(s).

Will divisional applications be handled differently after the Rules are amended?

No. As is customary, divisional applications still need to be filed by the owner of the original/parent application. That said, instead of the entire chain of title being automatically brought forward from the original/parent to the divisional, only the latest owner of the original/parent application will appear in the chain of title of the divisional application.

When filing a divisional application, do I need to submit a declaration of legal representative?

Yes. Under section 36(4) of the Act, divisional applications are deemed to be separate and distinct applications, to which its provisions apply as fully as may be. Accordingly, a declaration of legal representative must be submitted.

The Office takes the position that if a declaration of legal representative is not submitted at time of filing of the divisional application, then the Office will issue a notice requisitioning the applicant to submit a declaration of legal representative. If the declaration of legal representative is not received within the prescribed 3-month time limit from the date of the notice, then the application will become abandoned, and subject to the reinstatement provisions of the Act and Rules.

Note: The divisional application must always be filed before the issue of a patent on the original/parent application. Note also, if the original/parent application becomes abandoned, the time for filing a divisional application terminates with the expiration of the time for reinstating the original/parent application.

Will the Office question the declaration of legal representative?

No. It is the applicant's responsibility to ensure that they are in fact the legal representative of the inventor.

When the new Rules come into force on October 1, 2010, what type of information should I send to establish my entitlement to file?

Applications filed on or after October 1, 2010: In respect of applications other than PCT national phase applications, the declaration of legal representative will be required. Applicants entering the national phase in Canada may, however, submit either a declaration of entitlement or a declaration of legal representative.

Applications filed on or after June 2, 2007, but before October 1, 2010: Either a declaration of entitlement or a declaration of legal representative may be submitted.

Applications filed before June 2, 2007: An assignment from the inventor(s) to the applicant may be registered, or a declaration of entitlement or declaration of legal representative may be submitted.

Does the Office maintain its position that it accepts reference to confirmatory assignments in the declaration of entitlement, for application filed before October 1, 2010?

Yes, provided the rights referred to therein were transferred before filing.

Regarding PCT national phase applications, does the chain of title start from the applicant at time of international filing, or does it start with the applicant at time of national entry?

The chain of title for PCT national phase applications will start with the applicant named in the national entry request. Please note, however, if it differs from the applicant named in the international application, the applicant will be requisitioned to provide evidence under section 58(5) of the Rules.

If my application was filed before the entry into force of the new Rules, and I had already complied with the then applicable regime, do I still need to file a declaration of legal representative?

No, not if you complied with any previous requirements to either submit a compliant assignment or declaration of entitlement.

If I filed my application before the entry into force of the new Rules, and received a requisition to complete my application, do I have to comply with the requisition?

You must comply with the requisition to complete your application only to the extent that it requisitions any requirement other than a declaration of entitlement and/or the name and address of the inventor.

For example, if you filed an application on or after June 2, 2007, but before October 1, 2010, then the requisition, as it pertains to the requirement to submit a declaration of entitlement and/or the name and address of the inventor, is automatically withdrawn. Note, however, that if you do not submit a declaration of entitlement, then you will be required to submit a declaration of legal representative instead, and may be requisitioned to do so.

Note also, that if the requisition only pertains to the requirement to submit a declaration of entitlement and/or the name and address of the inventor, that in addition to the requisition being withdrawn, the applicant is not required to pay the "completion fee" set out in item 2 of Schedule II to the Rules.

If, before October 1, 2010, my application was deemed to be abandoned for failure to comply with a requisition to complete my application under section 94 of the Rules, and the time for reinstating the application had not already expired, do I still have to comply with the requisition and reinstate my application?

Yes, you will still be required to take the action that should have been taken in order to avoid the abandonment, request reinstatement and pay the "reinstatement fee" set out in item 7 of Schedule II to the Rules, before the expiration of the prescribed period, i.e. before the application goes beyond the point of reinstatement.

Why item 2 of the Schedule II to the Rules amended?

The reason is that the Office wanted to clarify that the completion fee is due only after a requisition under section 94 of the Rules is sent, not before the expiry of the applicable time prescribed under subsection 94(2) or (3) of the Rules.

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