RULES RESPECTING THE PATENT ACT

		SHORT TITLE

		1. These Rules may be cited as the Patent Rules.

		INTERPRETATION

		2. In these Rules,

		“Act” means the Patent Act; (Loi)

		“amino acid sequence” means

		(a)     an unbranched sequence of four or more contiguous amino acids, and

		(b)     any peptide or protein that includes abnormal linkages, cross links and end caps, non-peptidyl bonds or the like; (séquence d’acides aminés)

		“amino acids” means those L-amino acids commonly found in naturally occurring proteins and such amino acids when they have been modified; (acides aminés)

		“application” means, except as otherwise provided by these Rules, an application for a patent or for the reissue of a patent; (demande)

		“associate patent agent” means a patent agent appointed by another patent agent in accordance with section 21; (coagent)

		“authorized correspondent” means, in respect of an application,

		(a)      where the application was filed by the inventor, where no transfer of the inventor’s right to the patent or of the whole interest in the invention has been registered in the Patent Office and where no patent agent has been appointed

		(i)     the sole inventor,

		(ii)     one of two or more joint inventors authorized by all such inventors to act on their joint behalf, or

		(iii)     where there are two or more joint inventors and no inventor has been authorized in accordance with subparagraph (ii), the first inventor named in the petition or, in the case of PCT national phase applications, the first inventor named in the international application,

		(b)     where an associate patent agent has been appointed or is required to be appointed pursuant to section 21, the associate patent agent, or

		(c)     where paragraphs (a) and (b) do not apply, a patent agent appointed pursuant to section 20; (correspondant autorisé)

		“Budapest Treaty” means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, done at Budapest on April 28, 1977, to which Canada is a party; (Traité de Budapest)

		“claims” means claims referred to in subsection 27(4) of the Act or in subsection 34(2) of the Act as it read immediately before October 1, 1989; (revendications)

		“description” means the part of a specification other than the claims, referred to in section 80; (description)

		“divisional application” means an application filed in accordance with subsection 36(2) or (2.1) of the Act; (demande complémentaire)

		“international application” means an application filed under the Patent Cooperation Treaty; (demande internationale)

		“international depositary authority” means an international depositary authority within the meaning of Article 2(viii) of the Budapest Treaty; (autorité de dépôt internationale)

		“nucleotide sequence” means an unbranched sequence of 10 or more contiguous nucleotides; (séquence de nucléotides)

		“nucleotides” means those nucleotides that can be represented using the symbols set out in section 115 and such nucleotides when they have been modified; (nucléotides)

		“patent agent” means any person or firm whose name is entered on the register of patent agents pursuant to section 15; (agent de brevets)

		“Patent Cooperation Treaty” means the Patent Cooperation Treaty, done at Washington on June 19, 1970, including any amendments, modifications and revisions made from time to time to which Canada is a party; (Traité de coopération en matière de brevets)

		“Patent Office” means the Patent Office established by section 3 of the Act; (Bureau des brevets)

		“PCT national phase application” means an international application in respect of which the applicant has complied with the requirements of subsection 58(1) and, where applicable, subsection 58(2); (demande PCT à la phase nationale)

		“period of grace” means a period of grace within the meaning of Article 5bis(1) of the Paris Convention for the Protection of Industrial Property, made on March 20, 1883 and any amendments and revisions to which Canada is a party. (délai de grâce)

		“petition” means a petition referred to in section 27 of the Act; (pétition)

		“Regulations under the Budapest Treaty” means the Regulations under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure; (Règlement d’exécution du Traité de Budapest)

		“Regulations under the PCT” means the Regulations under the Patent Cooperation Treaty; (Règlement d’exécution du PCT)

		“sequence listing” means, in respect of an invention, a part of the description describing nucleotide or amino acid sequences and giving other related information required by sections 113 to 130; (listage des séquences)

		“small entity” in respect of an invention, means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that

		(a)     has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees, or

		(b)     has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity that employs 50 or fewer employees or that is a university, and has knowledge of any subsequent transfer or license of, or of any subsisting contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees; (petite entité)

		“specification” means a specification of an invention in accordance with subsections 27(3) and (4) of the Act; (mémoire descriptif)

		“the Act as it read immediately before October 1, 1989” means the provisions of the Patent Act as it read immediately before October 1, 1989 subject, where applicable, to any amendments to thePatent Act coming into force

		(a)     after October 1, 1989 and before October 1, 1996, or

		(b)     after October 1, 1996; (Loi dans sa version antérieure au 1er octobre 1989)

		“transfer” means a change in ownership of a patent, of an application or of an interest in an invention and includes an assignment. (transfert)

		PART I RULES OF GENERAL APPLICATION

		Fees

		3. Where a person takes any proceeding or requests that any service be rendered by the Commissioner or by the Patent Office, the person shall pay to the Commissioner the appropriate fee, if any, set out in Schedule II for that proceeding or service.

		4.–

		(1) The Commissioner shall, upon request, refund fees in accordance with subsections (2) to (15).

		(2) Where an application is not accepted by the Commissioner because it does not meet the requirements referred to in section 93, 147 or 178 entitling it to a filing date, the fee paid shall be refunded, less $25.

		(3) Where an application is submitted to the Commissioner by mistake and the Commissioner is notified before the application has been assigned a number that the application is to be withdrawn, the fee paid on the withdrawn application shall be refunded, less $25.

		(4) Where, through inadvertence, more than one application is filed for the same invention, by or on behalf of the same person, and where any one of such applications is withdrawn before examination, any fee paid on the withdrawn application shall be refunded, less one-half of the filing fee.

		(5) Where the Commissioner sends a notice to the applicant pursuant to subsection 94(1) and the applicant does not comply with the requisition set out in that notice, any fee paid pursuant to that subsection shall be refunded, less $25.

		(6) Where a fee is paid by an applicant or a patentee on the basis that it is not a small entity, no refund shall be made solely for the reason that it is later determined that it was at the time of payment a small entity.

		(7) Where a fee to register any document relating to a patent or an application is received and the document is not submitted, the fee paid shall be refunded.

		(8) Where a request for the reinstatement of an abandoned application is received and the applicant does not comply with the requirements for reinstatement, any fee paid for reinstatement shall be refunded, less one-half of the reinstatement fee.

		(9) Where a request for the reinstatement of an abandoned application is refused, any fee paid for reinstatement shall be refunded.

		(10) A final fee referred to in subsection 30(1) or (5) shall be refunded if

		(a)     it is received during the prosecution of an application and the application is subsequently refused or abandoned;

		(b)     a request for its return is received before the start of technical preparations for issue; or

		(c)     it is submitted by a person who is not the authorized correspondent.

		(11) Where a candidate for the Patent Agents’ Examination withdraws the candidate’s name by written notice to the Commissioner received

		(a)     before March 1 of the year of the examination, the fee paid shall be refunded; or

		(b)     on or after March 1 of the year of the examination and before the date of the examination, the fee paid shall be refunded, less $25.

		(12) When the fee received with a request for a copy of a document is insufficient and the request is cancelled, the fee paid shall be refunded.

		(13) When an application referred to in section 68 of the Act and presented under subsection 65(1) of the Act is not advertised in the Canadian Patent Office Record, any fee paid for advertising the application shall be refunded.

		(14) Subject to subsections (2) to (13) and (15), any fee paid by mistake for copies of a document that the Patent Office does not have or paid in excess of the fee prescribed shall be refunded.

		(15) No refund shall be made if the amount of the refund amounts to less than $1 or if the refund results from the exchange on foreign currency.

		Communications

		5.–

		(1) All correspondence intended for the Commissioner or the Patent Office shall bear the indication: “The Commissioner of Patents”.

		(2) Subject to subsection (3), correspondence addressed to the Commissioner shall be  considered to be received by the Commissioner on the day that it is delivered to one of the following establishments, where the delivery is made during the business hours of that establishment:

		(a)     the Patent Office; or

		(b)     an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered.

		(3) Where correspondence addressed to the Commissioner is delivered outside of business hours to an establishment referred to in paragraph (2)(a) or (b), it shall be considered to be received by the Commissioner on the next working day.

		(4) Subject to subsection (5), where the Commissioner has, in accordance with section 8.1 of the Act, specified in the Canadian Patent Office Record that correspondence may be transmitted by facsimile, correspondence transmitted by facsimile shall be considered to be received by the Commissioner on the day that it is transmitted, where the facsimile is transmitted to the Commissioner before midnight, local time, where the Patent Office is situated.

		(5) Where correspondence is transmitted by facsimile on a day that the Patent Office is closed for business, it shall be considered to be received by the Commissioner on the next working day.

		6.–

		(1) Except as provided by the Act or these Rules, for the purpose of prosecuting or maintaining an application the Commissioner shall only communicate with, and shall only have regard to communications from, the authorized correspondent.

		(2) For the purpose of appointing, in respect of an application, a patent agent or an associate patent agent or of revoking the appointment of a patent agent or an associate patent agent, the Commissioner shall have regard to communications from any of the applicant, the patent agent and the associate patent agent.

		(3) Interviews with members of the Patent Office staff in respect of an application may be held during the business hours of the Patent Office by

		(a)     the authorized correspondent;

		(b)     the applicant, with the permission of the authorized correspondent; or

		(c)     an appointed non-resident patent agent, with the permission of the associate patent agent.

		7. Communications addressed to the Commissioner in relation to an application shall include

		(a)     the name of the applicant or inventor;

		(b)     the application number, if one has been assigned by the Patent Office; and

		(c)     the title of the invention.

		8.–

		(1) Subject to subsection (2), communications addressed to the Commissioner in relation to an application or a patent shall relate to one application or patent only.

		(2) Subsection (1) does not apply in respect of communications relating to

		(a)     a transfer, a licence or a security interest;

		(b)     a change in the name or address of an applicant, a patentee, a patent agent, an associate patent agent or a representative for service; or

		(c)     fees to maintain an application in effect or to maintain the rights accorded by a patent.

		9. An authorized correspondent shall provide the Commissioner with its complete address and any communication sent by the Commissioner or by the Patent Office to the authorized correspondent at that address shall be considered to be sent on the date that it bears.

		10. Communications addressed to the Commissioner pursuant to section 34.1 of the Act and communications addressed to the Commissioner with the stated or apparent intention of protesting against the granting of a patent shall be acknowledged, but, subject to section 10 of the Act or of the Act as it read immediately before October 1, 1989, no information shall be given as to the action taken.

		11. Except as provided by section 11 of the Act, the Commissioner and the Patent Office shall not provide any information respecting an application that is not open to public inspection to any person other than the authorized correspondent, the applicant or a person authorized by the authorized correspondent or the applicant to receive the information.

		Entry of Patent Agents on Register of Patent Agents

		12.–

		(1) Subject to subsection 14(2), for the purpose of having their name entered on the register of patent agents, a person is eligible to sit for the qualifying examination for patent agents referred to insection 14 if, on March 31 of the year in which the person proposes to sit for the examination,

		(a)     the person resides in Canada and has been employed for a period of at least 12 months on the examining staff of the Patent Office; or

		(b)     the person resides in Canada and has worked in Canada in the area of Canadian patent law and practice, including the preparation and prosecution of applications, for a period of at least 12 months.

		(2) A person referred to in paragraph (1)(b) shall file with the Commissioner an affidavit or statutory declaration setting out the person’s experience and responsibilities in the area of patent law and practice.

		13.–

		(1) An Examining Board is hereby established for the purpose of preparing, administering and marking the qualifying examination for patent agents referred to in section 14.

		(2) The members of the Examining Board shall be appointed by the Commissioner, and the chairperson and at least three other members shall be employees of the Patent Office and at least five members shall be patent agents nominated by the Patent and Trademark Institute of Canada.

		14.–

		(1) The Examining Board shall administer a qualifying examination for patent agents every year in the month of April.

		(2) The Commissioner shall give notice in the Canadian Patent Office Record of the date of the qualifying examination and shall indicate in the notice that any person who proposes to sit for the examination shall, within the time specified in the notice, notify the Commissioner in writing and pay the fee set out in item 34 of Schedule II.

		(3) The Commissioner shall designate the place or places where the qualifying examination is to be held and shall notify by registered mail, at least two weeks before the date of the examination, every person who has complied with the requirements set out in subsection (2).

		15. The Commissioner shall enter on the register of patent agents, on payment of the fee set out in item 33 of Schedule II, the name of

		(a)     any resident of Canada who has demonstrated a good knowledge of Canadian patent law and practice by passing the qualifying examination for patent agents relating to patent law and practice;

		(b)     any resident of a country other than Canada who is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

		(c)     any firm, if the name of at least one member of the firm is entered on the register.

		16.–

		(1) During the period beginning on January 1 and ending on March 31 in every year

		(a)     every person who is a resident of Canada and whose name is entered on the register of patent agents shall pay the fee set out in item 35 of Schedule II in order to maintain the person’s name on the register;

		(b)     every person who is a resident of another country and whose name is entered on the register of patent agents shall, in order to maintain the person’s name on the register, file a statement, signed by the person, indicating the person’s country of residence and stating that the person is registered and in good standing with the patent office of that country or with a regional patent office for that country; and

		(c)     every firm whose name is entered on the register of patent agents shall, in order to maintain its name on the register, file a statement indicating each member of the firm whose name is entered on the register, signed by a duly authorized member of the firm whose own name is entered on the register.

		(2) The Commissioner shall send to every patent agent who fails to comply with subsection (1) a notice requiring compliance within the three-month period after the date of the notice.

		(3) The Commissioner shall remove from the register of patent agents the name of any patent agent who

		(a)     fails to comply with a notice sent pursuant to subsection (2); or

		(b)     no longer meets the requirements by virtue of which the name of the patent agent was entered on the register.

		(4) The removal by the Commissioner of the name of a person from the register of patent agents constitutes a refusal to recognize that person as a patent agent for the purposes of section 16 of the Act.

		17. Where the name of a patent agent has been removed from the register of patent agents pursuant to subsection 16(3), it may be reinstated on the register if the patent agent

		(a)     applies to the Commissioner, in writing, for reinstatement within the one-year period after the date on which the name of the patent agent was removed from the register;

		(b)     pays the fee set out in item 36 of Schedule II for applying for reinstatement on the register;

		(c)     pays the fee referred to in paragraph 16(1)(a) for maintaining the name of the patent agent on the register or files the statement referred to in paragraph 16(1)(b) or (c), as the case may be; and

		(d)     meets the requirements referred to in section 15 for entry of the name of the patent agent on the register.

		18. Any decision of the Commissioner, pursuant to section 16 of the Act, to refuse to recognize a person as a patent agent shall be forthwith entered in the register of patent agents and published in the Canadian Patent Office Record, and a copy shall be sent by registered mail to the person referred to in the decision.

		19.–

		(1) When the Commissioner makes a decision pursuant to section 16 of the Act that a person be refused recognition as a patent agent, any correspondence respecting an application sent by the Commissioner or by the Patent Office to that person within the six-month period preceding the date of the decision and to which no reply has been made by that date is deemed not to have been sent to the applicant.

		(2) An application filed by a person who has been refused recognition as a patent agent by the Commissioner or an application that includes an appointment of such a person as patent agent of the applicant or as associate patent agent shall be treated by the Commissioner as an application filed by the applicant or by the patent agent who appointed the associate patent agent.

		Appointment of Patent Agents

		20.–

		(1) An applicant who is not an inventor shall appoint a patent agent to prosecute the application for the applicant.

		(2) The appointment of a patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the applicant.

		(3) The appointment of a patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the applicant or that patent agent.

		21.–

		(1) Every patent agent who does not reside in Canada and who is appointed as the patent agent for an applicant in respect of an application shall appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

		(2) Every patent agent who resides in Canada and who is appointed as the patent agent for an applicant in respect of an application may appoint as the associate patent agent in respect of the application a patent agent who resides in Canada.

		(3) The appointment of an associate patent agent shall be made in the petition or by submitting to the Commissioner a notice signed by the patent agent who appointed the associate patent agent.

		(4) The appointment of an associate patent agent may be revoked by submitting to the Commissioner a notice of revocation signed by the associate patent agent or the patent agent who appointed the associate patent agent.

		22. Any act by or in relation to a patent agent or an associate patent agent shall have the effect of an act by or in relation to the applicant.

		23. Where an applicant is not the inventor and no patent agent residing in Canada has been appointed or any such appointment has been revoked, the Commissioner shall by notice requisition either that the applicant appoint a patent agent residing in Canada or, where a non-resident patent agent has been appointed, that the non-resident patent agent appoint an associate patent agent, within the three-month period after the date of the notice.

		24. Where a patent agent withdraws from practice, any patent agent who is the successor to that patent agent and who has so established to the Commissioner, shall be considered to be the appointed patent agent until another patent agent is appointed, in respect of any application in which the patent agent who has withdrawn from practice has been appointed.

		Time

		25. Except where other times are provided by the Act or these Rules, the time within which action must be taken by an applicant where the Commissioner, by notice, requisitions the applicant to take any action necessary for compliance with the Act or these Rules is the three-month period after the requisition is made.

		26.–

		(1) Subject to subsection (2) and any other provision of these Rules, except in respect of Part V, the Commissioner is authorized to extend the time fixed by these Rules or by the Commissioner under the Act for doing anything, subject to both the extension being applied for and the fee set out in item 22 of Schedule II being paid before the expiry of that time, where the Commissioner is satisfied that the circumstances justify the extension.

		(2) Where, for the purposes of paragraph 73(1)(a) of the Act, the Commissioner establishes a shorter period for replying in good faith to any requisition made by an examiner in connection with an examination, the Commissioner is not authorized to extend the time for replying beyond six months after the requisition is made.

		27.–

		(1) Except in respect of Part V, the Commissioner is authorized to extend the time fixed by subsection 18(2) of the Act, subject to the fee set out in item 22 of Schedule II being paid, where the Commissioner is satisfied that the circumstances justify the extension.

		(2) Except in respect of Part V, where the applicant is sent a notice in accordance with subsection 30(7), the Commissioner is authorized to extend the time fixed by paragraph 73(1)(f) of the Act where the Commissioner is satisfied that the circumstances justify the extension.

		Examination

		28.–

		(1) Subject to subsection (2), the Commissioner may advance an application for examination  out of its routine order upon the request of any person who pays the fee set out in item 4 of Schedule II, where the Commissioner determines that failure to advance the application is likely to prejudice that person’s rights.

		(2) In respect of an application filed on or after October 1, 1989, subsection (1) only applies if the application is open to public inspection under section 10 of the Act and a request for examination has been made pursuant to subsection 35(1) of the Act.