Track changes for MOPOP revised in June 2021 update

2.02.05b Designated establishments – regional offices of ISED – October 2019

For the purposes of subsections 10(1) and (4) of the Patent Rules, the following regional offices of ISED are designated by the Commissioner as being accepted for the physical delivery of documents, information or fees being submitted to the Commissioner or the Patent Office. Written communications addressed to the Commissioner of Patents may be hand-delivered, in a sealed envelope, to any of these offices, all of which are open 8:30 a.m. to 4:30 p.m. (local time), Monday to Friday (except statutory holidays):

• Innovation, Science and Economic Development Canada (Ottawa)
  C.D. Howe Building
  235 Queen Street, Room S-143
  Ottawa ON K1A 0H5
  Tel.: 343-291-3436
• Innovation, Science and Economic Development Canada (Montreal)
  Sun Life Building
  1155 Metcalfe Street, Room 950
  Montreal QC H3B 2V6
  Tel.: 514-496-1797
  Toll-free: 1-888-237-3037
• Innovation, Science and Economic Development Canada (Toronto)
  151 Yonge Street, 4th Floor
  Toronto ON M5C 2W7
  Tel.: 416-973-5000
• Innovation, Science and Economic Development Canada (Edmonton)
  Canada Place
  9700 Jasper Avenue, Suite 725
  Edmonton AB T5J 4C3
  Tel.: 780-495-4782
  Toll-free: 1-800-461-2646
• Innovation, Science and Economic Development Canada (Vancouver)
  Library Square
  300 West Georgia Street, Suite 2000
  Vancouver BC V6B 6E1
  Tel.: 604-666-5000

2.02.06a Online – October 2019

Written communications addressed to the Commissioner of Patents may be sent electronically online using the relevant links below:

• Filing an application (regular application);
• Filing a request for PCT national phase entry;
• General correspondence relating to applications and patents;
• Maintaining the name of a patent agent on the register of patent agents;
• Ordering copies in paper, or electronic form of a document;

2.02.06a Online – June 2021

Written communications addressed to the Commissioner of Patents may be sent electronically online using the relevant links below:

• Filing an application (regular application);
• Filing a request for PCT national phase entry;
• General correspondence relating to applications and patents;
• Ordering copies in paper, or electronic form of a document.

2.02.09e Exception – written communications sent before removal or refusal from Register of Agents – October 2019

Under rare circumstances, patent agents may be removed from the register (subsection 23(2) of the Patent Rules) or refused recognition from the Commissioner (section 16 of the Patent Act).

Any written communication sent to the removed or refused agent in the four month period preceding the removal or refusal - that has not been responded to - is considered not have been sent (section 11 of the Patent Rules).

In practical terms, the applicant will be advised of the removal or refusal of their agent and any written communications sent in the preceding four months will be reissued with a new due date and sent to the applicant. The applicant may also receive a notice requiring an appointment of agent if an agent is required.

2.02.09e Exception – written communications sent before suspension, revocation or surrender – June 2021

Patent agents may have their licence suspended, revoked or surrendered by the College of Patent Agents and Trademark Agents. When this occurs, any appointment of that one particular agent, in respect of any application or patent, is revoked. Note that if all of the patent agents at a firm are appointed, the appointment would be revoked only if the licences of all of the agents at the firm are suspended, surrendered or revoked (paragraph 27(7)(b) and subparagraphs 28(5)(a)(ii), 28(5)(b)(ii), 28(5.1)(a)(ii), and 28(5.1)(b)(ii) of the Patent Rules).

When an appointment of a patent agent is revoked under the above circumstances, any written communication sent to that agent on the day of, or within the four month period preceding the suspension, revocation or surrender of their licence - that has not been responded to - is considered not to have been sent (section 11 of the Patent Rules).

In practical terms, the applicant will be advised of the revocation and any written communications requiring action that were sent in the preceding four months will be reissued with a new due date and sent to the applicant. The applicant may also receive a notice requiring an appointment of agent if an agent is required. For further information about patent agents and representation before the Patent Office, please see chapter 5 of this Manual.

Patent agents are professionals who provide advice to applicants and prosecute patent applications before the Patent Office on behalf of their clients. Most applicants choose a patent agent to prosecute their patent application on their behalf. The Office recommends that all persons submitting a patent application consult a registered patent agent for advice, regardless of whether or not the Patent Rules require them to do so.

This Chapter describes provisions in the Patent Rules with respect to the Register of patent agents, representation of applicants and patentees by common representatives and patent agents, and who is permitted to take various actions on behalf of those applicants and patentees.

Patent agents are individuals who hold a patent agent licence or a patent agent in training licence issued by the College of Patent Agents and Trademark Agents. This licence allows patent agents to represent applicants, patentees and other clients before the Patent Office. Most applicants choose a patent agent to prosecute their patent application on their behalf. The Office recommends that all persons submitting a patent application consult a licensed patent agent for advice, regardless of whether or not the Patent Rules require them to do so.

This Chapter describes provisions in the Patent Rules with respect to the Register of Patent Agents, representation of applicants and patentees by common representatives and patent agents, and who is permitted to take various actions on behalf of those applicants and patentees.

5.02 Qualifying examination for Canadian patent agents – September 2020

Once per year, the Examining Board holds a qualifying examination for patent agents. After the examination is scheduled, the date and location are published on CIPO's website, along with a list of the requirements under section 19 of the Patent Rules for a person to be eligible to write the examination. The eligibility requirements to write the examination, listed under paragraph 19(a) of the Patent Rules, state that a person must reside in Canada on the date of the examination, and meet one of the following requirements:

• have been employed as a Patent Examiner at CIPO for at least 24 months, or
• have worked in Canada in the area of patent law and practice for at least 24 months, or
• have worked in the area of patent law and practice for at least 24 months, at least 12 of which were worked in Canada and the rest of which were worked in another country in which the person was authorized to act as a patent agent

In addition, paragraph 19(b) of the Patent Rules states that a person who wishes to write the examination must, within two months of the day that the qualifying examination date is published, take each of the following actions:

• notify the Commissioner in writing of their intention to write the examination,
• pay the required fee (see CIPO's webpage on Patent Fees)
• provide a statement to the Commissioner that they will meet the eligibility requirements outlined paragraph 19(a) of the Patent Rules, along with supporting justifications.

5.02 Register of Patent Agents – June 2021

The Register of Patent Agents is managed by the College of Patent Agents and Trademark Agents (College), in accordance with the College of Patent Agents and Trademark Agents Act and the College of Patent Agents and Trademark Agents Regulations. Requirements to obtain and maintain a patent agent licence are set by the College. The College may also choose to suspend, revoke or surrender the licence of a patent agent. This would result in the revocation of that agent in respect of any appointments before the Patent Office (see chapters 5.04.06 and 5.05.03 of this Manual for more information about revocations of appointments of patent agents).

The Patent Office relies on the College to supply it with updated information about new entries on the Register of Patent Agents, as well as any changes to the status of any agent's existing licence.

5.02.01 Register of patent agents – October 2019

The Commissioner of Patents maintains the Register of patent agents under section 15 of the Patent Act of all persons and agent firms that are authorized to represent persons in business before the Patent Office. Any person or firm who wishes to act as a patent agent in Canada must be on this Register.

5.02.01 Updates to patent agent addresses – June 2021

While the College of Patent Agents and Trademark Agents provides the Patent Office with information about patent agent licences, the Office does not rely on the College to obtain agents' contact information. As such, if a patent agent moves or changes firms, they should immediately notify the Patent Office of their new address, in order to avoid any potential Office errors.

Changes to the preferred method of correspondence with respect to any particular patent application or patent must also be communicated to the Office.

5.02.02 Entry on Register of patent agents – September 2020

Anyone wishing to have their name entered on the Register of patent agents must submit a request along with the requisite fee (see CIPO's webpage on Patent Fees). The Commissioner will enter the names of the following persons or firms on the Register of patent agents:

• every resident of Canada that has passed the qualifying examination for patent agents
• every resident of any country other than Canada who is authorized to act as a patent agent according to the law of that country; and
• every firm with a minimum of one member whose name is entered on the Register.

Once a person or firm successfully has their name entered on the Register, the Commissioner will send them a courtesy letter and a certificate confirming their entry on the Register of patent agents. The effective date of entry on the Register is the date on which the Office receives the request and required fee.

5.02.02 Registered foreign practitioners – June 2021

In addition to regulating patent agents, the College of Patent Agents and Trademark Agents maintains a list of registered foreign practitioners. These practitioners are persons who are recognized as patent agents under the laws of a country other than Canada, and have limited ability to act on behalf of patent applicants, patentees and other persons under Canada's Patent Rules. Please note that because they are not granted a full licence by the College, these registered foreign practitioners are not considered 'patent agents' for the purpose of the Patent Rules or this Manual, and cannot be appointed in respect of an application, patent or any other business before the Office.

To act on behalf of an applicant or patentee, a registered foreign practitioner must:

• Be explicitly allowed to take the requested action under the Patent Rules
• Be given authorization by the applicant, patentee or other person as specified in the Rules
• Be listed on the College's list of registered foreign practitioners

Updates to the list of registered foreign practitioners will be provided by the College to the Patent Office in a similar manner as any information pertaining to patent agents' licences. For information about which specific actions may be taken by registered foreign practitioners, please refer to chapters 5.05 and 5.07 of this Manual.

5.02.03 Maintaining name on Register of patent agents – September 2020

All persons and firms whose names are on the Register of patent agents must annually maintain their name on the Register as outlined in subsection 23(1) of the Patent Rules. They must do so each year during the period beginning January 1 and ending on March 31:

• individual agents who are residents of Canada must pay the fee for maintaining their name on the register of patent agents (see CIPO's webpage on Patent Fees)
• individual agents who are residents of a country other than Canada must submit a signed statement indicating their country of residence and declaring that they are authorized to act as a patent agent according to the law of that country; and
• a firm must submit a statement signed by a member whose name is on the Register, listing all of the members of the firms whose names are on the Register.

Please note that if March 31st falls on a day that the Patent Office is closed to the public, such as a weekend, the deadline to maintain an agent's name on the Register will be extended to the next day that the Office is open to the public as per subsection 78(1) of the Patent Act. For example, if March 31 falls on a Sunday, the deadline will be April 1. The Office does not send courtesy reminders to agents regarding the annual requirement to maintain their entry on the Register.

Removal from Register of patent agents – September 2020

The Commissioner will remove the name of any patent agent who does not meet the requirements under subsection 23(1) of the Patent Rules from the Register of patent agents. The Commissioner will notify the patent agent of the decision to remove them and will publish it on the CIPO website as required by subsection 23(3) of the Patent Rules.

The removal from the Register of patent agents is effective on the day after the deadline to maintain the agent's name on the Register. In most cases, the deadline will be March 31st, and therefore any patent agent who does not maintain their name on the Register on or before March 31st will be removed from the Register effective April 1st.

In accordance with subsections 27(7), 27(8) and 28(5) of the Patent Rules, if a patent agent is removed from the Register, any appointments of that agent in respect of any business before the Patent Office will be automatically revoked.

5.02.05 Reinstatement on the Register of patent agents following removal – September 2020

A patent agent whose name has been removed from the Register of patent agents under subsection 23(2) of the Patent Rules may apply for reinstatement under section 24 of the Patent Rules. The name of the patent agent will be reinstated on the Register if the agent:

• applies in writing to the Commissioner for reinstatement, and
• takes the action that they should have taken in order to maintain their name on the Register, specifically:
  • individual agents who are residents of Canada must pay the fee for maintaining their name on the register of patent agents (see CIPO's webpage on Patent Fees)
    • Note: individual agents who are residents of Canada must also pay the reinstatement fee (see CIPO's webpage on Patent Fees), in order to be reinstated
  • individual agents who are residents of a country other than Canada must submit a signed statement indicating their country of residence and declaring that they are authorized to act as a patent agent according to the law of that country; and
  • a firm must submit a statement signed by a member whose name is on the Register, listing all of the members of the firms whose names are on the Register.

A request for reinstatement must be received by the Patent Office within one year of the date that the agent was removed from the Register. The Office will review the request for reinstatement and if it is compliant, the reinstatement will be effective on the date that the request is received by the Office. Please note that any revocations of any appointments of the agent resulting from the agent's removal from the Register will remain intact. In order for the reinstated agent to represent clients before the Patent Office, new appointments must be submitted to the Office in accordance with the Patent Rules (see Section 5.05.03 of this Chapter).

5.02.06 Refusal to recognize patent agent – October 2019

Section 16 of the Patent Act allows the Commissioner to refuse to recognize any person as a patent agent. While the Commissioner may make this decision for any reason that they see fit, this refusal would typically apply to instances of gross misconduct, and is distinct from the removal of an agent from the Register as discussed in Section 5.02.04 of this Chapter. The Commissioner's refusal may apply to a particular case or may apply generally to any and all business before the Patent Office.

When the Commissioner refuses to recognize a person as a patent agent, that person must be notified of the decision, and the decision must be published on the CIPO website, in accordance with section 25 of the Patent Rules. If applicable, that person's name must also be taken off of the Register of patent agents.

5.02.07 Updates to Register of patent agents – name and address – October 2019

A patent agent must communicate any change of name or address to the Patent Office, and provide the necessary documentation as follows:

5.02.07a Change in name of patent agent – September 2020

For a name change, the patent agent must submit the following documentation to the Patent Office:

• A request for the Office to update the agent's name on the Register of patent agents
• an indication that the newly named patent agent is the same entity as the patent agent bearing the previous name; and
• any additional evidence necessary to validate the request.

Upon receipt of the above documentation, the Patent Office will update the Register of patent agents and Office records regarding any patent applications or patents in respect of which the agent is appointed as patent agent or associate patent agent. The Office will also send written confirmation to the agent once the requested updates have been processed.

Please note that the Office will apply the name change to all patent matters in respect of which the agent is appointed, including any applications that are beyond the period of reinstatement, and any patents that have lapsed or expired.

5.02.07b Change of address of patent agent – September 2020

For a change of address, the patent agent must submit the following documentation to the Patent Office:

• a request for the Office to update the agent's address on the register of patent agents.

Upon receipt of this request, the Patent Office will update the register of patent agents and Office records regarding any patent applications or patents in respect of which the agent is appointed as patent agent or associate patent agent.

Please note that the Office will apply the change of address to all patent matters in respect of which the agent is appointed, including any applications that are beyond the period of reinstatement, and any patents that have lapsed or expired.

5.03 Succession of patent agent – September 2020

When a patent agent withdraws from practice, another patent agent may establish themselves as the successor to the withdrawing patent agent (under section 32 of the Patent Rules). In the case of a succession, the successor patent agent is deemed to be appointed as the patent agent or the associate patent agent, as applicable, in respect of any patent application or patent in respect of which the withdrawing agent was previously appointed. To request a succession under section 32 of the Patent Rules, the successor agent must provide the following documentation to the Patent Office:

• a statement that the successor agent is the successor to the withdrawing agent pursuant to section 32 of the Patent Rules; and
• a request for the Office to update the Register of patent agents by removing the withdrawing agent from the Register.

Upon receipt of the above documentation, the Patent Office will remove the withdrawing agent from the Register of patent agents, and will indicate the successor agent as the appointed patent agent, or associate patent agent as applicable, in respect of the impacted patent applications and patents.

Please note that the succession will be applied to all patent matters in respect of which the withdrawing agent was previously appointed, including any applications that are beyond the period of reinstatement, and any patents that have lapsed or expired. If the successor agent's intention is to be appointed only in respect of certain patent matters, separate revocations and appointments must be submitted in respect of each of those matters in accordance with section 27 or 28 of the Patent Rules (also see Sections 5.05 and 5.06 of this chapter).

5.06 Succession of patent agent – June 2021

When a patent agent withdraws from practice, another patent agent may establish themselves as the successor to the withdrawing patent agent under section 32 of the Patent Rules. Note that for the purpose of a succession, the agent withdrawing from practice may be one individual patent agent, or all of the patent agents at a particular firm. The successor patent agent may be one individual patent agent or all of the patent agents at a given firm.

In the case of a succession, the successor patent agent is deemed to be appointed as the patent agent or the associate patent agent, as applicable, in respect of any patent application or patent in respect of which the withdrawing agent was previously appointed. To request a succession under section 32 of the Patent Rules, the successor agent must provide the following documentation to the Patent Office:

• a statement that the successor agent is the successor to the withdrawing agent pursuant to section 32 of the Patent Rules

Upon receipt of the above documentation, the Patent Office will indicate the successor agent as the appointed patent agent, or associate patent agent as applicable, in respect of the impacted patent applications and patents.

Please note that unless the Office receives instructions to the contrary, the succession will be applied to all patent applications and patents in respect of which the withdrawing agent was previously appointed, including any applications that are beyond the period of reinstatement, and any patents that have lapsed or expired. If the successor agent's intention is to be appointed only in respect of certain patent applications and patents, a list of those applications and patents should be provided along with the succession document. If the withdrawing agent has multiple successor agents, each of the successor agents should send the above documentation to the Patent Office, and include a list indicating which patent applications and patents the successor agent intends to assume responsibility for.

5.05 Patent Agents – October 2019

Any applicant, patentee or third party may appoint a patent agent to represent them in their business before the Patent Office. Examples of third party activities that may benefit from appointing a patent agent include filing a protest against the granting of a patent, or requesting re-examination of a patent.

5.04 Patent Agents – June 2021

Any applicant, patentee or third party may appoint one patent agent, or all of the patent agents at a given firm to represent them in their business before the Patent Office. Examples of third party activities that may benefit from appointing a patent agent include filing a protest against the granting of a patent, or requesting re-examination of a patent (subsection 27(1) of the Patent Rules).

Please note that from here on, the appointment of a patent agent refers to the appointment of either one agent or all of the agents at a given firm.

5.05.01 Requirement to appoint a patent agent – October 2019

An applicant must appoint a patent agent to represent them if they are not the inventor. Similarly, if there are multiple applicants and not all of them are inventors, they must appoint a patent agent. Applicant(s) must appoint a patent agent when a transfer of the rights of an application under section 49 of the Patent Act has been recorded by the Commissioner (subsection 27(2) of the Patent Rules).

5.04.01 Requirement to appoint a patent agent – June 2021

An applicant must appoint a patent agent to represent them if they are not the inventor. Similarly, if there are multiple applicants and not all of them are inventors, they must appoint a patent agent. An appointment is also required when a transfer of the rights of an application under section 49 of the Patent Act has been recorded by the Commissioner (subsection 27(2) of the Patent Rules).

5.05.02 Commissioner's Notice – Requirement to appoint a patent agent – October 2019

The Commissioner will send a notice to an applicant requiring that a patent agent be appointed within three months of the date of the notice if one is required and none is appointed (subsection 31(1) of the Patent Rules). If there are joint applicants, the notice will be sent to the common representative. Failure to appoint a patent agent residing in Canada, or a non-resident patent agent who in turn must appoint an associate patent agent within the three months following the date of the notice will result in the deemed abandonment of the application.

5.04.02 Commissioner's Notice – Requirement to appoint a patent agent – June 2021

The Commissioner will send a notice to an applicant requiring that a patent agent be appointed within three months of the date of the notice if one is required and none is appointed (subsection 31(1) of the Patent Rules). If there are joint applicants, the notice will be sent to the common representative. Failure to appoint a patent agent within the prescribed time will result in the deemed abandonment of the application.

5.05.03 Appointment of patent agents – October 2019

Patent applicants may appoint their patent agent at the time of filing or national phase entry as described in Section 5.05.03a of this Chapter. A patent agent may also be appointed by notice at any time during the life of a patent application or patent, as described in Section 5.05.03b of this Chapter. Any appointment of a patent agent will be effective on the date that the appointment is received by the Patent Office.

5.04.03 Appointment of patent agents – June 2021

Patent applicants may appoint their patent agent at the time of filing or national phase entry as described in Section 5.04.03a of this Chapter. A patent agent may also be appointed by notice at any time during the life of a patent application or patent, as described in Section 5.04.03b of this Chapter. Another person who is not a patent applicant or patentee may also appoint a patent agent by notice for their own purposes, as described in Section 5.04.03b of this Chapter. Any appointment of a patent agent will be effective on the date that the appointment is received by the Patent Office.

The appointment of a patent agent must include the patent agent's name and postal address. If all of the agents at a firm are being appointed, the name and postal address of the firm must be provided. Furthermore, if all agents at a firm are being appointed, it is not necessary to list each of the individual agents at the firm. An indication of the intent to appoint the firm or all agents at the firm as patent agent in respect of the application, patent or other business is sufficient (section 29 of the Patent Rules).

5.05.03b Appointment of patent agent by notice – September 2020

At any time, a patent agent may be appointed in a notice to the Commissioner signed by the applicant or patentee, or a third party who is appointing a patent agent. In cases where there are joint applicants or joint patentees, the notice must be signed by the common representative (paragraph 27(3)(a) and subsection 27(4) of the Patent Rules).

5.04.03b Appointment of patent agent by notice – June 2021

At any time, a patent agent may be appointed in a notice to the Commissioner. For applicants and patentees who are appointing a patent agent in respect of their application or patent, the notice must be signed by the applicant or patentee or by a registered foreign practitioner who is authorized to appoint a patent agent. If the notice is signed by a registered foreign practitioner, a document authorizing that registered foreign practitioner to appoint a patent agent must also be submitted along with the notice. This authorizing document must be signed by the applicant or patentee., In cases where there are joint applicants or joint patentees, the notice must be signed by the common representative or by a registered foreign practitioner who is authorized to appoint a patent agent. If the notice is signed by a registered foreign practitioner, a document authorizing that registered foreign practitioner to appoint a patent agent must also be submitted along with the notice. This authorizing document must be signed by the common representative. (paragraph 27(3)(a) of the Patent Rules).

A person who is appointing a patent agent in respect of any other business before the Office may sign the notice appointing a patent agent themselves or may authorize a registered foreign practitioner to do so on their behalf. If a registered foreign practitioner is signing the notice, a document authorizing them to appoint a patent agent, signed by the person on whose behalf they are appointing the agent, must also be submitted along with the notice (subsection 27(4) of the Patent Rules).

5.05.06 Revocation of appointment of patent agent – October 2019

The appointment of a patent agent may be revoked by way of a notice submitted to the Commissioner, signed by the agent, or the applicant or patentee (common representative if joint applicants or patentees) or other person who appointed the agent. An appointment of an agent is automatically revoked when the Commissioner removes the agent from the Register of patent agents or refuses to recognize them as a patent agent (subsections 27(7) and (8) of the Patent Rules).

5.04.06 Revocation of appointment of patent agent – June 2021

The appointment of a patent agent may be revoked by way of a notice submitted to the Commissioner. For applicants and patentees who are revoking the appointment of a patent agent made in respect of their patent application or patent, this notice must be signed by the agent (any agent if the appointment pertains to all agents at a firm), or the applicant or patentee, or by a registered foreign practitioner who is authorized to revoke the appointment. If the notice is signed by a registered foreign practitioner, a document authorizing that registered foreign practitioner to revoke the appointment must also be submitted along with the notice. This authorizing document must be signed by the applicant or patentee.. In cases where there are joint applicants or joint patentees, the notice must be signed by the common representative or by a registered foreign practitioner who is authorized to revoke the appointment. If the notice is signed by a registered foreign practitioner, a document authorizing that registered foreign practitioner to revoke the appointment must also be submitted along with the notice. This authorizing document must be signed by the common representative (subsection 27(7) of the Patent Rules).

A person who is revoking the appointment of a patent agent in respect of any other business before the Office may sign the notice revoking the appointment themselves or may authorize a registered foreign practitioner to do so on their behalf. If a registered foreign practitioner is signing the notice, a document authorizing them to revoke the appointment, signed by the person on whose behalf they are revoking the appointment, must also be submitted along with the notice (subsection 27(8) of the Patent Rules).

An appointment of one patent agent is automatically revoked if the agent's licence is suspended, revoked or surrendered by the College of Patent Agents and Trademark Agents. An appointment of all of the patent agents at a firm is automatically revoked if the licences of all of the agents at the firm are suspendered, revoked or surrendered by the College (subsections 27(7) and (8) of the Patent Rules).

5.04.07 Deemed appointments and revocations for members of firms (appointed patent agent) – June 2021

If all of the patent agents at a firm are appointed as the patent agent in respect of a patent application, patent or other business before the Office, the following provisions apply as per section 28.1 of the Patent Rules:

• A patent agent who becomes a member of the firm after the date of the initial appointment is deemed to be appointed as of the day that they become a member of the firm.
• A person who is a member of the firm, and becomes a patent agent after the date of the initial appointment is deemed to be appointed as of the day that they become a patent agent.
• If a patent agent ceases to be a member of the firm (ex. leaves and joins another firm), the appointment of that agent in particular is deemed to be revoked as of the day that they cease to be a member of the firm. The appointment of all other agents at the firm remains intact.
• If a patent agent's licence is suspended, revoked or surrendered, the appointment of that agent in particular is deemed to be revoked as of the day that their licence is suspended, revoked or surrendered. The appointment of all other agents at the firm remains intact unless all of the agents at the firm have their licences suspended, revoked or surrendered.

5.06 Associate patent agents – October 2019

An associate patent agent is a patent agent appointed by the appointed patent agent. Though an appointed patent agent residing in Canada may appoint an associate patent agent who also resides in Canada, when the appointed patent agent does not reside in Canada, the patent agent must appoint an associate patent agent in respect of that business. Associate patents agents must reside in Canada (subsection 28(2) of the Patent Rules).

5.05 Associate patent agents – June 2021

An associate patent agent is a patent agent appointed by the appointed patent agent. A patent agent may appoint one patent agent, or all of the patent agents at the same firm to act as their associate patent agent in respect of a patent application, patent or other business before the Patent Office. (subsection 28(1) of the Patent Rules).

An appointment of an associate agent refers to an appointment of either one patent agent or all of the patent agents at a given firm as associate patent agent. Furthermore, the appointment of the associate patent agent can be made by the individual patent agent who has been appointed in respect of that application, patent or other business, or if all of the agents at the same firm have been appointed as patent agent, by any one of the patent agents at the firm.

5.06.01 Commissioner's Notice – requirement to appoint an associate patent agent in Canada – October 2019

The Commissioner will send a notice to the appointed patent agent requiring that an associate patent agent residing in Canada be appointed within three months of the date of the notice if one is required and none is appointed (subsection 31(2) of the Patent Rules). Failure to do one of the following within the three months following the date of the notice will result in the deemed abandonment of the application:

• appointment of an associate patent agent residing in Canada by the appointed patent agent not residing in Canada;
• appointment of a patent agent residing in Canada by the applicant;
• appointment of a different patent agent not residing in Canada by the applicant. The new patent agent in turn appoints an associate patent agent residing in Canada.

5.06.02 Appointment of the associate patent agent – October 2019

An associate patent agent may be appointed at the time of filing or national phase entry, as described in Section 5.06.02a of this Chapter. An associate patent agent may also be appointed by notice at any time during the life of a patent application or patent, as described in Section 5.06.02b of this Chapter. Any appointment of an associate patent agent will be effective on the date that the appointment is received by the Patent Office.

5.05.01 Appointment of the associate patent agent – June 2021

An associate patent agent may be appointed at the time of filing or national phase entry, as described in Section 5.05.01a of this Chapter. An associate patent agent may also be appointed by notice at any time during the life of a patent application or patent, or other business before the Office, as described in Section 5.05.01b of this Chapter. Any appointment of an associate patent agent will be effective on the date that the appointment is received by the Patent Office.

The appointment of an associate patent agent must include the associate patent agent's name and address. If all of the agents at a firm are being appointed, the name and postal address of the firm must be provided. Furthermore, if all agents at a firm are being appointed, it is not necessary to list each of the individual agents at the firm. An indication of the intent to appoint the firm or all agents at the firm as the associate patent agent in respect of the application, patent or other business is sufficient (section 29 of the Patent Rules).

5.06.02b Appointment of associate patent agent by notice – September 2020

At any time, an associate patent agent may be appointed by the patent agent in a notice to the Commissioner signed by the appointed patent agent (subsection 28(3)(a) of the Patent Rules).

5.05.01b Appointment of associate patent agent by notice – June 2021

At any time, an associate patent agent may be appointed by the patent agent in a notice to the Commissioner signed by the appointed patent agent (subsection 28(3)(a) of the Patent Rules). If all of the patent agents at a firm are appointed as the patent agent in respect of the patent application, patent or other business, any of the agents at that firm may sign the notice appointing the associate patent agent.

5.06.04 Revocation of appointment of associate patent agent – October 2019

The appointment of an associate patent agent may be revoked by way of a notice submitted to the Commissioner, signed by the appointed patent agent, or the associate patent agent. The appointment of an associate patent agent is automatically revoked when the appointment of the patent agent who appointed them is revoked. It is also automatically revoked when the Commissioner removes the agent from the Register of patent agents or refuses to recognize them as a patent agent (subsection 28(5) of the Patent Rules).

5.05.03 Revocation of appointment of associate patent agent – June 2021

The appointment of an associate patent agent may be revoked by way of a notice submitted to the Commissioner, signed by the appointed patent agent, or the associate patent agent. If all of the patent agents at a firm are appointed as the patent agent in respect of the application, patent or other business before the Office, any of those agents may sign the notice of revocation. Similarly, if all of the patent agents at a firm are appointed as the associate patent agent, any agent at that firm may sign the notice of revocation.

The appointment of an associate patent agent is automatically revoked when the appointment of the patent agent is revoked (see section 5.04.06 of this chapter).

An appointment of one associate patent agent is automatically revoked if the associate agent's licence is suspended, revoked or surrendered by the College of Patent Agents and Trademark Agents. An appointment of all of the patent agents at a firm as the associate patent agent is automatically revoked if the licences of all of the agents at the firm are suspendered, revoked or surrendered by the College (subsection 28(5) and (5.1) of the Patent Rules).

5.05.04 Deemed appointments and revocations for members of firms (appointed associate patent agent) – June 2021

If all of the patent agents at a firm are appointed as the associate patent agent in respect of a patent application, patent or other business before the Office, the following provisions apply as per section 28.1 of the Patent Rules:

• A patent agent who becomes a member of the firm after the date of the initial appointment is deemed to be appointed as of the day that they become a member of the firm
• A person who is a member of the firm, and becomes a patent agent after the date of the initial appointment is deemed to be appointed as of the day that they become a patent agent
• If a patent agent ceases to be a member of the firm (ex. leaves and joins another firm), the appointment of that agent in particular is deemed to be revoked as of the day that they cease to be a member of the firm. The appointment of all other agents at the firm remains intact
• If a patent agent's licence is suspended, revoked or surrendered, the appointment of that agent in particular is deemed to be revoked as of the day that their licence is suspended, revoked or surrendered. The appointment of all other agents at the firm remains intact unless all of the agents at the firm have their licences suspended, revoked or surrendered.

5.07.01 Representation during prosecution of the patent application – September 2020

If there is a patent agent resident in Canada appointed to represent the applicant(s), the appointed patent agent resident in Canada must take action on behalf of the applicant(s) during the prosecution phase of the application. This appointed patent agent residing in Canada could be either the patent agent, or the associate patent agent. If a patent agent is not required and there is a single applicant/inventor, the single applicant must represent themselves during the prosecution phase, and if there are joint applicants/inventors, they must be represented by the common representative.(subsection 36(1) of the Patent Rules).

While there are exceptions to this provision (see sections 5.07.01a and 5.07.02 of this Chapter), it is important to note that some major actions, such as the following actions, must be taken by the appointed resident patent agent if one is appointed or if there is a requirement to appoint one. If no agent is appointed and there is no requirement to appoint one, the following actions must be taken by the single applicant or common representative (in cases where there are joint applicants):

• Responding to an examiner's requisition
• Responding to a compliance notice sent under section 65 of the Patent Rules
• Reinstating an application that has been abandoned for any reason other than the failure to pay a maintenance fee

5.07.01 Representation during prosecution of the patent application – June 2021

If there is a patent agent appointed to represent the applicant(s), or if there is a requirement to appoint a patent agent, the appointed patent agent must take action on behalf of the applicant(s) during the prosecution phase of the application. This appointed patent agent could be either the patent agent, or the associate patent agent. Note that if all of the patent agents at a firm are appointed as the patent agent or as the associate patent agent, any of the individual agents at the firm may represent the applicant(s) during the prosecution phase.

If a patent agent is not required and there is a single applicant/inventor, the single applicant must represent themselves during the prosecution phase, and if there are joint applicants/inventors, they must be represented by the common representative(subsection 36(1) of the Patent Rules).

While there are exceptions to this provision (see sections 5.07.01a and 5.07.02 of this Chapter), it is important to note that some major actions, such as the following actions, must be taken by the appointed patent agent if one is appointed or if there is a requirement to appoint one. If no agent is appointed and there is no requirement to appoint one, the following actions must be taken by the single applicant or common representative (in cases where there are joint applicants):

• Responding to an examiner's requisition
• Responding to a compliance notice sent under section 65 of the Patent Rules
• Reinstating an application that has been abandoned for any reason other than the failure to pay a maintenance fee

Note: Some actions with respect to applications are permitted by 'persons authorized' by an applicant, patentee, or common representative. In these cases, the Office does not require evidence or proof of that authorization and will implicitly assume that the person is authorized. Additionally, please note that a person authorized by the common representative may be another joint applicant who is not the common representative.

Note: Some actions with respect to applications are permitted by 'persons authorized' by an applicant, patentee, or common representative. In these cases, the Office does not require evidence or proof of that authorization and will implicitly assume that the person is authorized. Additionally, please note that in these cases a person authorized by the common representative may be another joint applicant who is not the common representative.

The Office does require proof of authorization when a registered foreign practitioner is signing the appointment of a patent agent on behalf of the applicant(s), signing a small entity declaration, or requesting an interview with a patent examiner (subsections 27, 44 and 39 of the Patent Rules).

5.07.02 List of actions and persons authorized to represent – patent applications – October 2019

The following sections detail actions and the persons that are authorized to represent applicants with respect to patent applications.

5.07.02 List of actions and persons authorized to represent – patent applications – June 2021

The following sections detail actions and the persons that are authorized to represent applicants with respect to patent applications. Please note that where the following sections refer to "the appointed patent agent":

• The specified action may be taken by the appointed patent agent or by the appointed associate patent agent if applicable.
• if all of the agents at a firm are appointed as the patent agent or the associate patent agent, any of the individual agents at that firm may take the specified action.

• the appointed patent agent residing in Canada

• the appointed patent agent

5.07.02d Signing of small entity declaration – October 2019

A small entity declaration may be signed by :

• the appointed agent (either the patent agent or the associate patent agent); or
• the applicant (any applicant if there are joint applicants) (paragraph 44(3)(c) of the Patent Rules)

Note: to see who can sign a small entity declaration with respect to a patent, please see Section 5.07.03d of this Chapter.

5.07.02d Signing of small entity declaration – June 2021

A small entity declaration may be signed by :

• the appointed patent agent,
• the applicant (any applicant if there are joint applicants)
• a registered foreign practitioner authorized by the applicant (any applicant if there are joint applicants), if a document showing proof of authorization is submitted along with the small entity declaration. This authorizing document must be signed by the applicant (any applicant if there are joint applicants) (paragraph 44(3)(c) of the Patent Rules)

Note: to see who can sign a small entity declaration with respect to a patent, please see Section 5.07.03d of this Chapter.

5.07.02i Interview with Patent Office staff – October 2019

If a patent agent has been appointed, the following persons may conduct an interview with Patent Office staff (section 39 of the Patent Rules):

• the appointed patent agent residing in Canada
• the appointed patent agent not residing in Canada, with the permission of the appointed associate patent agent residing in Canada
• the single applicant (if applicable), with permission of the appointed patent agent residing in Canada
• the common representative (if applicable), with permission of the appointed patent agent residing in Canada.

If a patent agent has not been appointed and is not required to be appointed (section 39 of the Patent Rules):

• the single applicant (if applicable)
• the common representative (if applicable)

5.07.02i Interview with patent examiner – June 2021

If a patent agent has been appointed, the following persons may conduct an interview with a patent examiner (section 39 of the Patent Rules):

• the appointed patent agent
• the single applicant (if applicable), with permission of the appointed patent agent
• a registered foreign practitioner authorized by the single applicant (if applicable), with permission of the appointed patent agent (a document authorizing the registered foreign practitioner to have the interview, signed by the single applicant, must be provided)
• the common representative (if applicable), with permission of the appointed patent agent.
• a registered foreign practitioner authorized by the common representative (if applicable), with permission of the appointed patent agent (a document authorizing the registered foreign practitioner to have the interview, signed by the common representative, must be provided)

If a patent agent has not been appointed and is not required to be appointed (section 39 of the Patent Rules):

• the single applicant (if applicable)
• the common representative (if applicable)

Previous terms:

• Person authorized by single applicant or common representative
• Person authorized by any applicant
• Appointed resident agent
• Interview with Office staff

Note: a new column "Registered foreign practitioner" has been added to the tables

Updated terms:

• Any person authorized by single applicant or common representative
• Any person authorized by any applicant
• Appointed patent agent
• Interview with examiner

5.07.03 Representation for procedures relating to patents – September 2020

Once a patent is granted, a single patentee may represent themselves or be represented by any person authorized by them. Joint patentees may be represented by the common representative or by any person authorized by the common representative (subsection 37(1) of the Patent Rules). There are a few exceptions provided in the Patent Rules, which are outlined in the following sections.

Please note that in cases where actions with respect to patents may be taken by 'persons authorized' by the single patentee, a joint patentee or the common representative, the Office does not require evidence or proof of that authorization and will implicitly assume that the person is authorized. Note that 'any person' includes the appointed patent agent. Additionally, a person authorized by the common representative may be another joint patentee who is not the common representative.

5.07.03 Representation for procedures relating to patents – June 2021

Once a patent is granted, a single patentee may represent themselves or be represented by any person authorized by them. Joint patentees may be represented by the common representative or by any person authorized by the common representative (subsection 37(1) of the Patent Rules). Note that for patents, an authorized person may include, but is not limited to, an appointed patent agent or associate patent agent.

The Patent Rules provide a few exceptions to the above , which are outlined in the following sections. Please note that in cases where actions with respect to patents may be taken by 'persons authorized' by the single patentee, a joint patentee or the common representative who are not the appointed patent agent, the Office does not require evidence or proof of that authorization and will implicitly assume that the person is authorized. Additionally, a person authorized by the common representative may be another joint patentee who is not the common representative.

The Office does require proof of authorization when a registered foreign practitioner is signing the appointment of a patent agent or a small entity declaration on behalf of the patentee(s) (sections 28 and 112 of the Patent Rules).

Where the following sections refer to "the appointed patent agent":

• The specified action may be taken by the appointed patent agent or by the appointed associate patent agent if applicable
• if all of the agents at a firm are appointed as the patent agent or the associate patent agent, any of the individual agents at that firm may take the specified action.

5.07.03d Signing of small entity declaration – September 2020

A small entity declaration may be signed by the appointed agent (either the patent agent or the associate patent agent) or by the patentee (any patentee if there are joint patentees) (paragraph 112(3)(c) of the Patent Rules).

With respect to a request for re-examination, a small entity declaration may be signed by the person requesting re-examination or by a patent agent appointed in respect of the request for re-examination (paragraph 122(4)(d) of the Patent Rules).

Note: to see who may sign a small entity declaration with respect to a patent application, please see Section 5.07.02d of this Chapter.

The following table summarizes the provisions regarding representation of patentees:

5.07.03d Signing of small entity declaration – June 2021

A small entity declaration may be signed by:

• the appointed patent agent
• the patentee (any patentee if there are joint patentees)
• a registered foreign practitioner authorized by the patentee (any patentee if there are joint patentees), if a document showing proof of authorization is submitted along with the small entity declaration. This authorizing document must be signed by the patentee (any patentee if there are joint patentees) (paragraph 112(3)(c) of the Patent Rules).

With respect to a request for re-examination, a small entity declaration may be signed by:

• the patent agent appointed by the person requesting re-examination
• the person requesting re-examination
• a registered foreign practitioner authorized by the person requesting re-examination, if a document showing proof of authorization is submitted along with the small entity declaration. This authorizing document must be signed by the person requesting re-examination (paragraph 122(4)(d) of the Patent Rules).

Note: to see who may sign a small entity declaration with respect to a patent application, please see Section 5.07.02d of this Chapter.

The following table summarizes the provisions regarding representation of patentees:

Previous terms:

• Person authorized by single patentee or common representative
• Person authorized by any patentee
• Appointed resident agent

Note: a new column "Registered foreign practitioner" has been added to the tables
Updated terms:

• Any person authorized by single patentee or common representative
• Any person authorized by any patentee
• Appointed patent agent

5.08 Default Correspondent - Who will the Patent Office correspond with – September 2020

The Office will send all correspondence regarding a patent application or a patent to the following person:

• The appointed patent agent who is a resident of Canada (the associate agent by default if one is appointed, if not, the appointed agent)

If no patent agent who is a resident of Canada is appointed, the Office will send all correspondence to:

• The common representative, if there are joint applicants or joint patentees; or
• The single applicant or single patentee, if applicable

Exceptions will be made in the following circumstances:

• When the appointed patent agent is not a resident of Canada, and the appointment of an associate patent agent who is a resident of Canada is required, the Office will send the notice requiring the appointment of an associate patent agent to the appointed non-resident patent agent
• When the Office has reason to send a notice of disregarded communication (see Section 5.09 of this Chapter), the Office will respond to the person who submitted the relevant correspondence
• When the Office is responding to a notice appointing or revoking the appointment of the common representative, patent agent or associate patent agent, the Office will respond to the person that submitted the appointment
• When responding to a request to record a transfer, the Office will respond to the person who submitted the request
• When the Office receives a request for examination, the Office will respond to the person who submitted the request
• When a third party corresponds with the Office to submit prior art under section 34.1 of the Patent Act or to protest against the granting of a patent for a patent application, the Office will correspond with that third party or their representative, so long as the application is open to public inspection under section 10 of the Patent Act. If it is not, then the acknowledgement will be sent after the application is open to public inspection.
• When a third party corresponds with the Office to request for re-examination, the Office will correspond with that third party or their representative in respect of that business.

5.08 Default Correspondent - Who will the Patent Office correspond with – June 2021

The Office will send all correspondence regarding a patent application or a patent to the following person:

• The appointed patent agent (the appointed associate patent agent by default if one is appointed; if not, the appointed patent agent)
  • If all of the patent agents at a firm are appointed as agent (associate agent if applicable), the Office will send the correspondence to the firm and it will be considered to be sent to all of the agents at the firm as per section 29.1 of the Patent Rules

If no patent agent appointed, the Office will send all correspondence to:

• The common representative, if there are joint applicants or joint patentees; or
• The single applicant or single patentee, if applicable

Exceptions will be made in the following circumstances:

• When the Office has reason to send a notice of disregarded communication (see Section 5.09 of this Chapter), the Office will respond to the person who submitted the relevant correspondence
• When the appointment of a patent agent or associate patent agent has been revoked, the Office will notify the agent of the revocation, and will also communicate with the person who revoked the agent
• When responding to a request to record a transfer, the Office will respond to the person who submitted the request
• When the Office receives a request for examination, the Office will respond to the person who submitted the request
• When a third party corresponds with the Office to submit prior art under section 34.1 of the Patent Act or to protest against the granting of a patent for a patent application, the Office will correspond with that third party or their representative, so long as the application is open to public inspection under section 10 of the Patent Act. If it is not, then the acknowledgement will be sent after the application is open to public inspection.
• When a third party corresponds with the Office to request for re-examination, the Office will correspond with that third party or their representative in respect of that business.

5.09 Disregarded communication – September 2020

The Office will have regard to written communications from persons authorized to represent applicants and patentees outlined in sections 33 to 37 of the Patent Rules. Written communications from others will be disregarded, except in the following cases:

• an applicant or patentee who is not the common representative communicates with the Office in order to take an action that may be taken by the common representative (and not by the other joint applicants or joint patentees), or
• a patent agent residing in Canada who is not the appointed resident patent agent communicates with the Office.

In these two circumstances, the Office will respond to the person with a notice of disregarded communication. In either case, the person will have an opportunity to establish themselves as the correct representative of the applicant(s) or patentee(s) (either the common representative or the appointed resident patent agent) and have the Office give regard to their original communication. Details are provided Sections 5.09.01 and 5.09.02 of this Chapter.

5.09 Disregarded communication – June 2021

The Office will have regard to written communications from persons authorized to represent applicants and patentees outlined in sections 33 to 37 of the Patent Rules. Written communications from others will be disregarded, except in the following cases:

• an applicant or patentee who is not the common representative communicates with the Office in order to take an action that may be taken by the common representative (and not by the other joint applicants or joint patentees), or
• a patent agent who is not appointed communicates with the Office
• A communication appears to come from a patent agent but the name of the sender is not provided in the communication (ex. the communication comes from a patent agent firm but does not include the name of an individual patent agent who works for that firm)

In these three circumstances, the Office will respond to the person with a notice of disregarded communication. In all three cases, the person will be given an opportunity to comply with the Patent Rules and have the Office give regard to their original communication. Details are provided in Sections 5.09.01, 5.09.02 and 5.09.03 of this Chapter.

The Office will also send a notice of disregarded communication to a patent agent residing in Canada who communicates with the Office on behalf of an applicant or patentee but is not appointed as the patent agent for that applicant or patentee in respect of that application or patent. The notice indicates that the Office will not have regard to the patent agent's communication unless within three months of the date of the notice, the patent agent is appointed as agent for that applicant or patentee in respect of that application or patent and requests that the Office have regard to their initial communication (subsection 41(1) of the Patent Rules).

If the patent agent is then appointed as the patent agent for that applicant or patentee in respect of that application or patent (by notice submitted to the Commissioner in compliance with paragraph 27(3)(a) of the Patent Rules), and makes the necessary request for the Commissioner to have regard to the communication, the original communication is deemed to have been received from the applicant or patentee on the date that it was received at the Office (subsection 41(3) of the Patent Rules). Note that these provisions do not apply to communications for purposes which may be carried out by any person who is authorized by an applicant or patentee (subsection 41(2) of the Patent Rules).

The Office will also send a notice of disregarded communication to a patent agent who communicates with the Office on behalf of an applicant or patentee but is not appointed as the patent agent or associate patent agent for that applicant or patentee in respect of that application or patent. The notice indicates that the Office will not have regard to the patent agent's communication unless within three months of the date of the notice, the patent agent is appointed as agent or associate agent in respect of that application or patent and requests that the Office have regard to their initial communication (subsection 41(1) of the Patent Rules).

If the patent agent is then appointed as agent or associate agent in respect of that application or patent (by notice submitted to the Commissioner in compliance with paragraph 27(3)(a) or 28(3)(a) of the Patent Rules), and makes the necessary request for the Commissioner to have regard to the communication, the original communication is deemed to have been received from the applicant or patentee on the date that it was received at the Office (subsection 41(3) of the Patent Rules). Note that these provisions do not apply to communications for purposes which may be carried out by any person who is authorized by an applicant or patentee (subsection 41(2) of the Patent Rules).

5.09.03 Patent agent's name not provided – June 2021

If the Patent Office receives a communication on behalf of an applicant or patentee that appears to come from a patent agent, but the name of a patent agent is not provided, the Office will send a notice of disregarded communication to the person, indicating that the Commissioner will not have regard to the communication unless within three months of the date of the notice, the person writes to the Commissioner providing their name and requests that the Commissioner have regard to the original communication. If these actions are taken within the timeframe provided, and if the person was a patent agent on the date that the communication was submitted, the communication will be deemed to have been received from the patent agent on the date that it was originally received by the Commissioner (subsection 41.1(1) of the Patent Rules).

Note that the above provisions do not apply to communications for purposes which may be carried out by any person who is authorized by an applicant or patentee. For example, if all agents at a firm are appointed, and a maintenance fee payment is submitted by a person at that firm who is not a patent agent, the Office will accept the payment without sending a notice, because any person authorized by an applicant or patentee may pay a maintenance fee (subsections 36(2) and 37(1) of the Patent Rules). The name of a patent agent is therefore not required. However, if a response to an examiner's report or a final fee payment is submitted by the firm without specifying the name of a patent agent at the firm, the above provisions would apply and a notice of disregarded communication would be sent to the firm. In these cases the Office would need to ensure that the person from the firm who submitted the communication is indeed a patent agent, in order to ensure that the submission accords with the Patent Rules' provisions on representation of patent applicants (subsections 36(1) and 36(5) of the Patent Rules).

Where an applicant or patentee wishes to pay small entity fees, a small entity declaration must be submitted. A signed small entity declaration can be included in the petition or can be submitted as a separate document. The small entity declaration can be signed by:

• the single applicant if there is only one applicant
• any one of the applicants if there are joint applicants
• the current patentee, or if there are multiple patentees, any one of them; or
• the patent agent appointed by and on behalf of the applicant or patentee.

Additionally, the name of the applicant or patentee and, if applicable, the name of the patent agent signing the declaration must be indicated. The following small entity declaration tool is available and applicants / patentees are encouraged to use the standard form.

Where an applicant or patentee wishes to pay small entity fees, a small entity declaration must be submitted. A signed small entity declaration can be included in the petition or can be submitted as a separate document. The small entity declaration can be signed by:

• the single applicant if there is only one applicant
• any one of the applicants if there are joint applicants
• the current patentee, or if there are joint patentees, any one of them
• a patent agent appointed by and on behalf of the applicant or patentee; or
• a registered foreign practitioner who is authorized by the applicant or patentee (or by any applicant or patentee if there are joint applicants or patentees). A document indicating authorization must be signed by an applicant or patentee and submitted at the same time as the declaration. For further information about registered foreign practitioners, please see chapter 5.02.02 of this Manual.

Additionally, the name of the applicant or patentee and, if applicable, the name of the patent agent or registered foreign practitioner signing the declaration must be indicated. The following small entity declaration tool is available and applicants / patentees are encouraged to use the standard form.

1. A fee paid in respect to a paper of an Agent qualifying examination, where an intention was expressed to no longer sit for the paper, the request of which is received no later than 30 days after the notification from the Commissioner.
2. Any fee, other than the Application Fee, paid at filing for a regular national application that was then withdrawn not later than 14 days after the earliest date of any document received by the Commissioner.
3. Any fee, other than the fees of International Applications (including the transmittal fee, the search fee, a fee for additional search, the preliminary examination fee, a fee for additional examination, and the basic national fee) as seen on CIPO's webpage on Patent Fees, paid at entry into national phase for a PCT national phase application that was then withdrawn not later than 14 days after the national phase entry date.
4. A fee paid for the registration of a document where said document was not submitted
5. A fee paid for advertising on the website in respect of section 65 of the Patent Act under Abuse of Rights where the application was not advertised
6. A fee paid for the request of a copy of a document where the request was withdrawn before the copy was made
7. A fee paid for the request of a copy of a document where the Office did not possess that document
8. Any overpayment of fee, including any payment in excess of a fee already paid in full and any payment of a fee where payment is not or no longer prescribed by the Patent Act and Rules
9. Any fee waived by the Commissioner (see Section 10.05 in this Chapter).

1. Any fee, other than the Application Fee, paid at filing for a regular national application that was then withdrawn not later than 14 days after the earliest date of any document received by the Commissioner.
2. Any fee, other than the fees of International Applications (including the transmittal fee, the search fee, a fee for additional search, the preliminary examination fee, a fee for additional examination, and the basic national fee) as seen on CIPO's webpage on Patent Fees, paid at entry into national phase for a PCT national phase application that was then withdrawn not later than 14 days after the national phase entry date.
3. A fee paid for the registration of a document where said document was not submitted
4. A fee paid for advertising on the website in respect of section 65 of the Patent Act under Abuse of Rights where the application was not advertised
5. A fee paid for the request of a copy of a document where the request was withdrawn before the copy was made
6. A fee paid for the request of a copy of a document where the Office did not possess that document
7. Any overpayment of fee, including any payment in excess of a fee already paid in full and any payment of a fee where payment is not or no longer prescribed by the Patent Act and Rules
8. Any fee waived by the Commissioner (see Section 10.05 in this Chapter).

12.06 Interviews – October 2019

In some cases interviews may take place between examiners and the appointed patent agent, common representative or single applicant. Where an agent has been appointed, an interview may only be conducted with the common representative or single applicant if the agent is present in the interview; or, has provided written permission for the common representative or single applicant to conduct an interview in the agent's absence. Such interviews will be documented in the Canadian Patent Database.

12.06 Interviews – June 2021

In some cases interviews may take place between examiners and the appointed patent agent, common representative or single applicant, or a registered foreign practitioner authorized by the single applicant or common representative. The 'appointed patent agent' may refer to either the appointed patent agent or the appointed associate patent agent. If all of the patent agents at a particular firm have been appointed as either the patent agent or the associate patent agent, any of the agents at that firm may have the interview, or give permission to a registered foreign practitioner to have the interview, as outlined below. For more information about registered foreign practitioners, please refer to chapter 5.02.02 of this Manual.

Where a patent agent has been appointed, an interview may be conducted with the common representative or single applicant or a registered foreign practitioner authorized by the single applicant or common representative only if the agent is present in the interview; or, has provided written permission for the common representative or single applicant and/or the registered foreign practitioner to conduct an interview in the agent's absence. For a registered foreign practitioner to participate in an interview, there must always be a document on file authorizing that registered foreign practitioner to have the interview, signed by the single applicant or common representative as applicable. This requirement is additional to the permission of the appointed patent agent.

If no patent agent is appointed and there is no requirement to appoint a patent agent, only the single applicant or the common representative may have an interview with an examiner (they may not authorize anyone else to do so) (section 39 of the Patent Rules).

Interviews with examiners will be documented in the Canadian Patent Database.

32.05.03 Communications sent before a refusal to recognize an agent or removal of an agent from the register – October 2019

If the refusal to recognize the person as an agent, or if the removal of a patent agent from the register of patent agents, occurs on October 30, 2019 or within six months of that date, then any communication sent by the Commissioner to that agent who was refused or removed from the six month period preceding the date of refusal or removal is considered not to have been sent to the applicant or the patentee (section 214 of the Patent Rules (SOR/2019-251), see Section 2.02.09d in Chapter 2 for more information).

32.05.04 Changes due to the coming-into-force of the College of Patent Agents and Trademark Agents Act and College of Patent Agents and Trademark Agents Regulations – June 2021

As of the coming-into-force (CIF) of the College of Patent Agents and Trademark Agents Act, the College of Patent Agents and Trademark Agents Regulations, and the associated amendments to the Patent Rules, patent agents must reside in Canada. As of the CIF date, the appointment of any patent agent that is not a resident of Canada in respect of any patent application, patent or other business before the Office is revoked. If the non-resident patent agent appointed an associate patent agent who is a resident of Canada, that resident patent agent is deemed to be appointed as the patent agent in respect of that business.

As of the CIF date, a patent agent is defined as an individual who holds a patent agent licence or a patent agent in training licence. Firms are not considered to be patent agents. Therefore, as of the CIF date, in any case where a firm was previously appointed as the patent agent in respect of an application, patent or other business before the Office, all of the patent agents at the firm are deemed to be appointed as patent agent in respect of that business. If a firm was previously appointed as the associate patent agent by a patent agent who resides in Canada, all of the patent agents at the firm are deemed to be appointed as the associate patent agent in respect of that business. If a firm was previously appointed as the associate patent agent by a patent agent who is not a resident of Canada, all of the patent agents at the firm are deemed to be appointed as patent agent in respect of that business.

Patent Rules

• Subsection 15(4) Translation Required
• Subsection 23(3) Removal from the Register of Patent Agents
• Subsection 31(1) Appointment of Patent Agent Required
• Subsection 31(2) Appointment of Associate Patent Agent Required
• Sections 40, 41 Notice of Disregarded Communication
• Section 65 Compliance
• Subsection 72(1) Notice of Missing Parts
• Subsection 74(4) Copy of Priority Document Required
• Subsections 86(1),(6),(10),(12) Notice of Allowance
• Subsection 109(3) Missing Information or Fee for Correction of an Error in a Patent
• Subsection 154(7) PCT Legal Representative Entitlement Notice

Patent Rules

• Subsection 15(4) Translation Required
• Subsection 31(1) Appointment of Patent Agent Required
• Sections 40, 41, 41.1 Notice of Disregarded Communication
• Section 65 Compliance
• Subsection 72(1) Notice of Missing Parts
• Subsection 74(4) Copy of Priority Document Required
• Subsections 86(1),(6),(10),(12) Notice of Allowance
• Subsection 109(3) Missing Information or Fee for Correction of an Error in a Patent
• Subsection 154(7) PCT Legal Representative Entitlement Notice