Rules Amending the Patent Rules: SOR/2021-131

Canada Gazette, Part II, Volume 155, Number 13

Registration
SOR/2021-131 June 10, 2021

PATENT ACT

P.C. 2021-528 June 10, 2021

His Excellency the Administrator of the Government of Canada in Council, on the recommendation of the Minister of Industry, pursuant to section 12 footnote a of the Patent Act footnote b, makes the annexed Rules Amending the Patent Rules.

Rules Amending the Patent Rules

Amendments

1 The heading before section 1 of the French version of the Patent Rules footnote 1 is replaced by the following:

Définitions et interprétation

2 (1) The definition patent agent in subsection 1(1) of the Rules is repealed.

(2) Subsection 1(1) of the Rules is amended by adding the following in alphabetical order:

foreign practitioner
means an individual whose name is included in the Register of Patent Agents under section 19 of the College of Patent Agents and Trademark Agents Regulations. (professionnel étranger)

3 Section 11 of the Rules is replaced by the following:

Communication sent — suspension, revocation or surrender

11 Despite sections 34 and 35, if a patent agent's licence is suspended, revoked or surrendered, any communication respecting a patent or an application for a patent that is sent by the Commissioner or the Patent Office to that patent agent is considered not to have been sent to the patentee or applicant if

4 Section 12 of the English version of the Rules is replaced by the following:

Acknowledgment by Commissioner

12 A written communication submitted to the Commissioner in respect of a filing under section 34.1 of the Act and a written communication submitted to the Commissioner before the granting of a patent with the stated or apparent intention of protesting against the granting of that patent must be acknowledged, but information must not be given as to the action taken unless the application for the patent is open to public inspection at the Patent Office.

5 (1) Paragraph 16(b) of the Rules is replaced by the following:

(2) Subparagraph 16(c)(iii) of the Rules is replaced by the following:

6 The heading before section 19 and sections 19 to 25 of the Rules are repealed.

7 (1) Subsection 27(1) of the Rules is replaced by the following:

Power to appoint patent agent

27 (1) An applicant for a patent, a patentee or other person may appoint either one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of a patent or an application for a patent.

(2) The portion of subsection 27(2) of the Rules before paragraph (a) is replaced by the following:

Mandatory appointment of patent agent

(2) An applicant for a patent must appoint one patent agent or all the patent agents at the same firm to represent them before the Patent Office in respect of their application for a patent if

(3) The portion of subsection 27(3) of the Rules before paragraph (b) is replaced by the following:

Manner of appointment

(3) The appointment of one patent agent or all the patent agents at the same firm by an applicant for a patent or a patentee must be made by one of the following methods:

(4) Subsections 27(4) to (8) of the Rules are replaced by the following:

Manner of appointment by another person

(4) The appointment, other than as an associate patent agent, of one patent agent or all the patent agents at the same firm, by a person other than an applicant for a patent or a patentee to represent them before the Patent Office in respect of a patent or an application for a patent must be made in a notice to that effect submitted to the Commissioner and signed by

Consent to appointment

(5) If a person, other than a patent agent, submits to the Commissioner a document appointing, other than as an associate patent agent, one patent agent or all the patent agents at the same firm, the appointment is not effective until evidence of consent to that appointment by that one patent agent or by any of the patent agents at that firm is submitted to the Commissioner.

Patent agent by default — patent

(6) The patent agent or all the patent agents at the same firm appointed in respect of an application for a patent under subsection 27(3) or (4) are deemed, unless the appointment document indicates otherwise, to have also been appointed in respect of any patent granted on the basis of the application.

Revocation — appointment by applicant or patentee

(7) The appointment, including a deemed appointment, of one patent agent or all the patent agents at the same firm in respect of a patent or an application for a patent by an applicant for a patent or a patentee is revoked if

Revocation — appointment by another person

(8) The appointment, including a deemed appointment, other than as an associate patent agent, of one patent agent or all the patent agents at the same firm, in respect of a patent or an application for a patent by a person other than an applicant for a patent or a patentee is revoked if

8 (1) Subsections 28(1) and (2) of the Rules are replaced by the following:

Power to appoint associate patent agent

28 (1) A patent agent appointed by an applicant for a patent, a patentee or other person to represent them before the Patent Office in respect of a patent or an application for a patent may appoint one patent agent or all the patent agents at the same firm as an associate patent agent in respect of that patent or application.

(2) The portion of subsection 28(3) of the Rules before paragraph (a) is replaced by the following:

Manner of appointment

(3) The appointment of one patent agent or all the patent agents at the same firm as an associate patent agent must be made by one of the following methods:

(3) Subsections 28(4) and (5) of the Rules are replaced by the following:

Associate patent agent by default — patents

(4) Any associate patent agent appointed in respect of an application for a patent under subsection (3) is deemed, unless the appointment document indicates otherwise, to have also been appointed in respect of any patent granted on the basis of the application.

Revocation of appointment — one associate patent agent acting alone

(5) The appointment, including a deemed appointment, of one patent agent as an associate patent agent in respect of a patent or an application for a patent is revoked if

Revocation of appointment — associate patent agent

(5.1) The appointment, including a deemed appointment, as an associate patent agent, of all the patent agents at the same firm in respect of a patent or an application for a patent is revoked if

9 Sections 29 to 31 of the Rules are replaced by the following:

Patent agent — member of firm

28.1 If all the patent agents at the same firm have been appointed under section 27 or 28, the following rules apply:

Appointment document — one patent agent

29 (1) A document appointing one patent agent must include the name and postal address of that patent agent.

Appointment document — all the patent agents

(2) A document appointing all the patent agents at the same firm must include the name and postal address of the firm. An appointment document that includes only the name and postal address of the firm is sufficient to appoint all the patent agents at that firm.

Written communications

29.1 If all the patent agents at the same firm have been appointed or are deemed to have been appointed under section 27 or 28, any written communication sent by the Commissioner or the Patent Office to the firm is considered to have been sent to all of the patent agents at the firm.

Patent agent by default — transfer

30 The patent agent or all the patent agents at the same firm who were appointed, other than as an associate patent agent, to represent an applicant or patentee before the Patent Office are, unless otherwise indicated in a request to record a transfer under subsection 49(2) or (3) of the Act, deemed to have been appointed by the transferee in respect of the patent or the application that is the subject of the recording.

Notice requiring appointment of patent agent

31 If an applicant for a patent is required under subsection 27(2) to appoint a patent agent but no patent agent is appointed, the Commissioner must by notice to the applicant require that, not later than three months after the date of the notice, the applicant appoint a patent agent.

Successor patent agent

32 (1) A patent agent who, in respect of a patent or application for a patent, demonstrates to the Commissioner that they are the successor to a patent agent or all the patent agents at the same firm who were appointed under section 27 or 28 and who have since withdrawn from practice is deemed to be appointed under section 27 or 28, as the case may be, in respect of that patent or application.

Successor patent agents

(2) All the patent agents at the same firm who, in respect of a patent or application for a patent, demonstrate to the Commissioner that they are the successors to a patent agent or all the patent agents at the same firm who were appointed under section 27 or 28 and who have since withdrawn from practice are deemed to be appointed under section 27 or 28, as the case may be, in respect of that patent or application.

10 Section 34 of the Rules is replaced by the following:

Effect of act by patent agent

34 Subject to sections 36 and 37, in any business before the Patent Office, an act done in respect of a patent or an application for a patent, by or in relation to a patent agent, other than an associate patent agent, who is appointed in respect of that application or patent, has the same effect as an act done by or in relation to the applicant for a patent, a patentee or other person who appointed the patent agent.

11 Subsection 36(1) of the Rules is replaced by the following:

Prosecuting or maintaining in effect application for patent

36 (1) Subject to subsections (2) to (5), only the following persons are authorized to act in any business before the Patent Office for the purpose of prosecuting or maintaining in effect an application for a patent:

12 Paragraphs 37(2)(a) and (b) of the Rules are replaced by the following:

13 Section 38 of the Rules is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by adding the following after paragraph (c):

14 The portion of section 39 of the Rules before paragraph (b) is replaced by the following:

Interview with examiner

39 Only the following persons may have an interview with an examiner regarding an application for a patent:

15 Subsection 40(1) of the Rules is replaced by the following:

Notice of disregarded communication

40 (1) If, in any business for the purpose of prosecuting or maintaining in effect an application for a patent or for the purpose of a procedure relating to a patent, a joint applicant or joint patentee who is not the common representative of the joint applicants or joint patentees sends a written communication to the Commissioner in respect of any business for which the common representative is entitled to represent the applicants or the patentees, the Commissioner must by notice inform that joint applicant or joint patentee that the Commissioner will not have regard to that communication unless, not later than three months after the date of the notice, that joint applicant or joint patentee is appointed in accordance with paragraph 26(3)(a) to represent the applicants or patentees as the common representative and requests that the Commissioner have regard to the communication.

16 Subsection 41(1) of the Rules is replaced by the following:

Notice of disregarded communication

41 (1) If a patent agent who is not appointed to represent an applicant or patentee in respect of a patent or an application for a patent communicates in writing with the Commissioner on behalf of that applicant or patentee for the purpose of prosecuting or maintaining in effect that application or for the purpose of a procedure relating to that patent and the communication identifies that patent agent, the Commissioner must by notice inform the patent agent that the Commissioner will not have regard to that communication unless, not later than three months after the date of the notice, the patent agent is appointed to represent that applicant or patentee in respect of that application or patent and requests that the Commissioner have regard to the communication.

17 The Rules are amended by adding the following after section 41:

Named patent agent

41.1 (1) In any business before the Patent Office in respect of which a patent agent acts under subsection 36(1) or (5), or represents a patentee under subsection 37(2), written communications on behalf of the applicant or patentee must be submitted to the Commissioner or the Patent Office by a named patent agent.

Notice

(2) If the patent agent is not named, the Commissioner must by notice inform the sender that the Commissioner will not have regard to the communication unless, not later than three months after the date of the notice, the patent agent who submitted the communication provides their name to the Commissioner and requests that the Commissioner have regard to the communication.

Date communication received

(3) If the name of the patent agent and the request referred to in subsection (2) are provided to the Commissioner within the time limit set out in that subsection, the original communication is considered to have been received on the day on which it was actually received by the Commissioner or the Patent Office.

18 (1) Subparagraph 44(3)(c)(i) of the English version of the Rules is replaced by the following:

(2) Subparagraph 44(3)(c)(ii) of the Rules is replaced by the following:

(3) Paragraph 44(3)(d) of the Rules is replaced by the following:

19 (1) Subparagraph 112(3)(c)(i) of the English version of the Rules is replaced by the following:

(2) Subparagraph 112(3)(c)(ii) of the Rules is replaced by the following:

(3) Paragraph 112(3)(d) of the Rules is replaced by the following:

20 Paragraphs 122(4)(d) and (e) of the Rules are replaced by the following:

21 Paragraph 139(1)(a) of the Rules is repealed.

22 The Rules are amended by adding the following after section 145:

Appointment of all the patent agents

145.1 If all of the agents at the same firm are appointed under Rule 90 of the Regulations under the PCT to represent an applicant before the Commissioner, section 28.1, subsection 29(2) and section 29.1 apply in respect of the appointment.

23 Section 214 of the Rules is repealed.

24 The references that follow the heading “Schedule 2” in Schedule 2 to the Rules are replaced by the following:

(Sections 3, 4, 44, 45, 68, 70, 73, 80, 82, 84, 86, 87, 100, 106, 109, 112, 115, 117, 119, 121, 122, 124 to 127, 129, 132, 134, 136 to 140, 147 to 151, 154, 171, 184, 187, 199, 203, 208, 212, 213 and 229)

25 Part 2 of Schedule 2 to the Rules is repealed.

26 Part 4 of the Rules is repealed.

Transitional Provisions

27 (1) The following definitions apply in this section.

former Rules
means the Patent Rules as they read immediately before the day on which these Rules come into force. (anciennes règles)
new Rules
means the Patent Rules as they read on the day on which these Rules come into force. (nouvelles règles)

(2) On the day on which these Rules come into force,

Coming into Force

28 These Rules come into force on the day on which paragraph 76(1)(c) of the College of Patent Agents and Trademark Agents Act, section 247 of chapter 27 of the Statutes of Canada, 2018, comes into force, but if they are registered after that day, they come into force on the day on which they are registered.

N.B. The Regulatory Impact Analysis Statement for these Regulations appears following SOR/2021-129, College of Patent Agents and Trademark Agents Regulations.