Consultation document – Compliant patent application

A patent application consists of many parts, only a few of which are required to be submitted to the Office to obtain a filing date (see Discussion Paper on Minimum Filing Requirements). However, all of the parts of the patent application must be submitted soon after the filing date in order to be compliant with the Patent Act and the Patent Rules. The parts required for a compliant patent application will not change under the amended patent legislative regime though there will be some proposed changes regarding how and when the Office will send the notice requiring an applicant to submit the parts of the application that are missing.

Current state

The current patent legislative regime requires a sum of parts for a complete patent application. A description is required at filing whereas the rest of the parts are not required to obtain a filing date. If the remaining parts (listed below) are not provided at the time of filing, then the Patent Rules require them to be submitted within 15 months of the filing date or the earliest priority date requested. If the application does not meet the completion requirements within that time, the Commissioner sends a notice requiring the applicant to comply with the requirements before the later of 3 months from the date of the notice and 12 months after the filing date as well as a completion fee of $200. If the applicant doesn't respond to the notice, the application is deemed abandoned.

The parts presently required for a complete patent application are:

  • A petition
  • An abstract
  • A sequence listing, if applicable
  • A claim or claims
  • Any drawing referred to in the description
  • An appointment of a patent agent, if required
  • An appointment of an associate patent agent, if required

Separate from the filing and completion requirements is the requirement for a declaration of entitlement when the application is not filed by the inventor. If it is required and it is not submitted when the patent application is filed, the Commissioner sends a notice requiring it to be submitted within 3 months otherwise the application will be abandoned.

Proposed new state

The recent changes to the Patent Act, which are not yet in force, and the proposed amendments to the Patent Rules maintain the same list of parts and requirements however some requirements that were previously requisitioned with a completion notice will instead be requisitioned under separate provisions of the Rules and notices. For example, a separate notice will be sent if an applicant is required to appoint an agent (Please see the Discussion Paper – Representation for more information).

The parts required for a compliant patent application (in addition to those for a filing date) would be:

  • A petition
  • An abstract
  • A sequence listing, if applicable
  • A claim or claims
  • Drawings, if applicable
  • A statement of entitlement
  • Inventor names and addresses

Under the new proposed legislative regime, if the parts of the application listed above are not provided on the filing date, the Commissioner will send a notice under Rule 65 requiring the applicant to provide the parts of the application. The terminology was changed to reflect the fact that an application can become non-compliant at various stages of prosecution. For example, if the Office recorded a transfer from the applicant/inventor to a new applicant, the application would be non-compliant at the time of the recordal as the recordal would invoke the requirement for the application to contain a statement that the applicant is entitled to apply for a patent.

If a compliance notice is sent, the applicant will have three months from the date of the notice to comply. There will no longer be an additional fee to meet the compliance requirements after a notice is sent. However, if the applicant does not respond to the notice in good faith, then the application will be deemed abandoned with the possibility to be reinstated.

Applicants will be required to provide drawings showing the parts of the invention, if appropriate. Where they have not been provided, the Commissioner can, under subsection 27(5.2) of the Patent Act, require that an applicant provide further drawings or the Commissioner can dispense with the requirement to furnish drawings. If the applicant does not respond to the notice in good faith within 3 months of the notice, the application will be deemed abandoned.

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:

  • Application for Patents – Subsection 27(5.2)(not yet into force)

Proposed Patent Rules:

  • Inclusion of abstract – Subsection 55(1)
  • PCT sequence listing standard – Subsection 58(1)
  • Non-compliant Application for a Patent - Section 65
  • Information on inventors - Subsection 54(1)
  • Statement – subsection 54(2)