Canada Gazette, Part I, Volume 151, Number 28: Rules Amending the Patent Rules
July 15, 2017
Statutory authority
Patent Act
Sponsoring department
Department of Industry
REGULATORY IMPACT ANALYSIS STATEMENT
(This statement is not part of the Rules.)
Issues
Section 29 of the Patent Act is repealed by the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act. Accordingly, it is proposed that the provisions of the Patent Rules that refer to representatives appointed under that section of the Patent Act be repealed.
Background
Section 126 of the Economic Action Plan 2014 Act, No. 2 repeals section 29 of the Patent Act. However, that provision is not in force and will not be brought into force at the present time. Amendments to the Patent Act made in the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act introduce a certificate of supplementary protection regime which would have required further consequential amendments to the Patent Act in order to address section 29, unless repeal of that section took place on or before the coming into force of the relevant provisions of that Act.
Objectives
The objective of the proposed amendments is to remove the references to representatives appointed under section 29 of the Patent Act, as that section is repealed with the coming into force of the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act.
Description
These proposed amendments repeal the references to representatives required under section 29 of the Act in the Patent Rules, as follows:
- Repeal section 78, which indicates a manner and timing of appointing a representative;
- Repeal clause 94(2)(b)(ii)(I), which requires, for completion of a patent application, information regarding appointment of a representative, if required by section 29 of the Patent Act;
- Repeal subparagraph 94(3)(b)(vi), which requires, for completion of the national phase of a patent application in accordance with the Patent Cooperation Treaty, information regarding appointment of a representative, if required by section 29 of the Patent Act;
- Repeal paragraph 148(1)(d), which provides for the deemed abandonment of a patent application that was filed between October 1, 1989, and September 30, 1996, and made in accordance with the Patent Cooperation Treaty, if information regarding appointment of a representative, if required by section 29 of the Patent Act, is not included;
- Replace Form 1 (Application for Reissue) and Form 3 (Petition for a Grant of Patent) to delete references to representatives required under section 29 of the Patent Act and to make corrections related to changes in section numbering.
“One-for-One” Rule
The “One-for-One” Rule does not apply to these Rules, as there is no expected change in administrative costs to business.
Small business lens
These Rules do not impose new administrative or compliance costs on small business. Therefore, the small business lens does not apply.
Consultation
Prepublication in Part I of the Canada Gazette will be followed by a 15-day comment period.
Rationale
This amendment to the Patent Rules is needed to remove all references to representatives under section 29 of the Patent Act and to make the Patent Rules clearer. Removing the references to a provision of the Act that is repealed will reduce confusion for applicants and patentees who must comply with the provisions of the Patent Act and the Patent Rules.
Contact
Rachel Mainville-Dale
Manager – Patent Policy
Patent Branch
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
50 Victoria Street
Gatineau, Quebec
K1A 0C9
Telephone: 819-635-6891
Fax: 819-994-1989
Email: rachel.mainville-dale@canada.ca
PROPOSED REGULATORY TEXT
Notice is given that the Governor in Council, pursuant to subsection 12(1) (see footnote a) of the Patent Act (see footnote b), proposes to make the annexed Rules Amending the Patent Rules.
Interested persons may make representations concerning the proposed Rules within 15 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part I, and the date of publication of this notice, and be addressed to Mark Schaan, Director General, Marketplace Framework Policy Branch, Strategy and Innovation Policy Sector, Innovation, Science and Economic Development Canada, 235 Queen Street, East Tower, 10th Floor, Ottawa, Ontario K1A 0H5 (email: mark.schaan@ canada.ca; tel.: 343-291-3700; fax: 613-952-1980).
Ottawa, July 13, 2017
Jurica Čapkun
Assistant Clerk of the Privy Council
Rules Amending the Patent Rules
Amendments
1 Section 78 of the Patent Rules (see footnote 1) and the heading before it are repealed.
2 (1) Subparagraph 94(2)(b)(ii) of the Rules is amended by striking out “and” at the end of clause (H), by adding “and” at the end of clause (G) and by repealing clause (I).
(2) Paragraph 94(3)(b) of the Rules is amended by striking out “and” at the end of subparagraph (v), by adding “and” at the end of subparagraph (iv) and by repealing subparagraph (vi).
3 Subsection 148(1) of the Rules is amended by striking out “and” at the end of paragraph (c), by adding “and” at the end of paragraph (b) and by repealing paragraph (d).
4 Schedule I to the Rules is amended by replacing the reference after the heading “Schedule I” with the following:
(Sections 43, 44 and 77)
5 Form 1 of Schedule I to the Rules is replaced by the following:
FORM 1
(Section 47 of the Patent Act)
Application for Reissue
1 The patentee of Patent No. _______, granted on ______ for an invention entitled _______, requests that a new patent be issued, in accordance with the accompanying amended specification and agrees to surrender the original patent effective on the issue of a new patent.
2 The name and complete address of the patentee is ___
_______________________________________.
3 The respects in which the patent is deemed defective or inoperative are ____________________________.
4 The error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, in the following manner: ____________________________
_______________________________________.
5 The knowledge of the new facts giving rise to the application were obtained by the patentee on or about _______ in the following manner: ________.
6 The patentee appoints _______, whose complete address is _______, as the patentee's patent agent.
Instructions
In sections 2 and 6, names and addresses must be presented in the following order with a clearly visible separation between the various elements: family name (in capital letters), given name(s), initials, or firm name, street name and number, city, province or state, postal code, telephone number, fax number and country.
6 Form 3 of Schedule I to the Rules is replaced by the following:
FORM 3
(Subsection 27(2) of the Patent Act)
Petition for Grant of a Patent
1 The applicant, _______, whose complete address is _______, requests the grant of a patent for an invention, entitled _______, which is described and claimed in the accompanying specification.
2 This application is a division of application number _______, filed in Canada on __________________.
3 (1) The applicant is the sole inventor.
(2) The inventor is _______, whose complete address is _______ and the applicant is the legal representative of the inventor.
4 The applicant requests priority in respect of the application on the basis of the following previously regularly filed application:
| Country of filing | Application number | Filing date |
|---|---|---|
| _________________ | _________________ | _________________ |
| _________________ | _________________ | _________________ |
5 The applicant appoints _______, whose complete address is _______, as the applicant's patent agent.
6 The applicant believes that in accordance with the Patent Rules they are entitled to pay fees at the small entity level in respect of this application and in respect of any patent issued on the basis of this application.
7 The applicant requests that Figure No. _______ of the drawings accompany the abstract when it is open to public inspection under section 10 of the Patent Act or published.
........................... (signature)
Instructions
In section 1, subsection 3(2) and section 5, names and addresses must be presented in the following order with a clearly visible separation between the various elements: family name (in capital letters), given name(s), initials, or firm name, street name and number, city, province or state, postal code, telephone number, fax number and country.
Sections 2 and 7 should be deleted if they do not apply.
The contents of sections 3 to 6 may be included in the petition or submitted in a separate document.
In section 3, in accordance with section 37 of the Patent Rules, only subsection 3(1) or subsection 3(2) should be included.
In general, the inclusion of a signature in the petition is optional. However, in accordance with paragraph 3.01(1)(e) of the Patent Rules, a signature is required if a small entity declaration is included in the petition.
Coming into Force
7 These Rules come into force on the day on which section 36 of the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act, chapter 6 of the Statutes of Canada, 2017, comes into force, but if they are registered after that day, they come into force on the day on which they are registered.
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