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2 (1) The definition patent agent in subsection 1(1) of the Rules is repealed.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

• (a) it is sent within four months before the date of the suspension, revocation or surrender and no reply is provided before that date; or
• (b) it is sent on the date of the suspension, revocation or surrender.

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:

• (b) a patent agent appointed in respect of that application; or

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

• (iii) a patent agent appointed in respect of that application.

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:

• (a) in respect of a patent or an application for a patent, in a notice to that effect that is submitted to the Commissioner and signed by
  • (i) if there is a single applicant or patentee, the applicant or patentee,
  • (ii) if there is a single applicant or patentee and a document authorizing a foreign practitioner to appoint a patent agent is signed by the applicant or patentee and submitted at the same time to the Commissioner, that foreign practitioner,
  • (iii) if there are joint applicants or patentees, the common representative, or
  • (iv) if there are joint applicants or patentees and a document authorizing a foreign practitioner to appoint a patent agent is signed by the common representative and submitted at the same time to the Commissioner, that foreign practitioner;

(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

• (a) that person; or
• (b) if a document signed by that person authorizing a foreign practitioner to appoint a patent agent is submitted at the same time to the Commissioner, that foreign practitioner.

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

• (a) a notice to that effect is submitted to the Commissioner and signed by that one patent agent or any of the patent agents at that firm or by
  • (i) if there is a single applicant or patentee, the applicant or patentee,
  • (ii) if there is a single applicant or patentee and a document authorizing a foreign practitioner to revoke the appointment is signed by the applicant or patentee and is submitted at the same time to the Commissioner, that foreign practitioner,
  • (iii) if there are joint applicants or patentees, the common representative, or
  • (iv) if there are joint applicants or patentees and a document signed by the common representative authorizing a foreign practitioner to revoke the appointment is submitted at the same time to the Commissioner, that foreign practitioner; or
• (b) the licence of that one patent agent, or each of the patent agents at that firm, is suspended, revoked or surrendered.

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

• (a) a notice to that effect, signed by that person, by that one patent agent or by any of the patent agents at that firm, is submitted to the Commissioner;
• (b) a document signed by that person authorizing a foreign practitioner to revoke the appointment is submitted to the Commissioner at the same time as a notice revoking the appointment signed by that foreign practitioner; or
• (c) the licence of that one patent agent, or each of the patent agents at that firm, is suspended, revoked or surrendered.

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

• (a) in the case where the associate patent agent was appointed by one patent agent who was appointed under subsection 27(3) or (4),
  • (i) a notice of revocation signed by the associate patent agent or the patent agent is submitted to the Commissioner,
  • (ii) the associate patent agent's licence is suspended, revoked or surrendered, or
  • (iii) the appointment of the patent agent is revoked; and

• (b) in the case where the associate patent agent was appointed by one of the patent agents at the same firm who were appointed under subsection 27(3) or (4),
  • (i) a notice of revocation signed by the associate patent agent or by one of the patent agents at the firm is submitted to the Commissioner,
  • (ii) the associate patent agent's licence is suspended, revoked or surrendered, or
  • (iii) the appointment of all the patent agents at the firm is revoked.

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

• (a) in the case where they were appointed by one patent agent who was appointed under subsection 27(3) or (4),
  • (i) a notice of revocation signed by one of the patent agents at the firm acting as an associate patent agent or by the patent agent who appointed them is submitted to the Commissioner,
  • (ii) the licence of each of the patent agents acting as an associate patent agent is suspended, revoked or surrendered, or
  • (iii) the appointment of the patent agent is revoked; and
• (b) in the case where they were appointed by one of the patent agents at the same firm who were appointed under subsection 27(3) or (4),
  • (i) a notice of revocation signed by one of the patent agents at the firm acting as an associate patent agent, or by one of the patent agents at the firm that appointed them, is submitted to the Commissioner,
  • (ii) the licence of each of the patent agents acting as an associate patent agent is suspended, revoked or surrendered, or
  • (iii) the appointment under subsection 27(3) or (4) of all the patent agents at the firm is revoked.

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:

• (a) a patent agent who becomes a member of the firm after the appointment is deemed to be appointed beginning on the day on which they become a member of the firm;
• (b) a person who is a member of the firm who becomes a patent agent after the appointment is deemed to have been appointed beginning on the day on which they become a patent agent;
• (c) the appointment of a patent agent who ceases to be a member of the firm is deemed to be revoked on the day on which they cease to be a member of the firm; and
• (d) the appointment of a patent agent whose licence is suspended, revoked or surrendered is deemed to be revoked on the day on which their licence is suspended, revoked or surrendered.

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:

• (a) if, in respect of the application, a patent agent is appointed or there is a requirement under subsection 27(2) to appoint a patent agent, the patent agent who is appointed; and
• (b) in any other case,
  • (i) if there is a single applicant, the applicant, and
  • (ii) if there are joint applicants, the common representative.

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

• (a) if there is a single patentee, they must represent themselves or be represented by a patent agent who has been appointed in respect of that business; and
• (b) if there are joint patentees, the patentees must be represented by the common representative or by a patent agent who has been appointed in respect of that business.

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):

• (d) a document authorizing a foreign practitioner to appoint or revoke the appointment of a patent agent, have an interview with an examiner or sign a small entity declaration.

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:

• (a) if, in respect of that application, a patent agent is appointed or there is a requirement under subsection 27(2) to appoint a patent agent,
  • (i) the patent agent who is appointed, and
  • (ii) with the permission of the patent agent who is appointed,
    • (A) if there is a single applicant, the applicant,
    • (B) if there is a single applicant and a document authorizing a foreign practitioner to have an interview with an examiner is signed by the applicant, that foreign practitioner,
    • (C) if there are joint applicants, the common representative, or
    • (D) if there are joint applicants and a document authorizing a foreign practitioner to have an interview with an examiner is signed by the common representative, that foreign practitioner; and

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:

• (i) if there is a single applicant, the applicant,

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

• (ii) if there is a single applicant and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the applicant and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,
• (iii) if there are joint applicants, any one of the applicants, or
• (iv) if there are joint applicants and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the applicants and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and

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

• (d) indicate the name of the applicant and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

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

• (i) if there is a single patentee, the patentee,

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

• (ii) if there is a single patentee and a document authorizing a foreign practitioner to sign a small entity declaration is signed by the patentee and submitted to the Commissioner at the same time as the declaration, that foreign practitioner,
• (iii) if there are joint patentees, any one of the patentees, or
• (iv) if there are joint patentees and a document authorizing a foreign practitioner to sign a small entity declaration is signed by any one of the patentees and submitted to the Commissioner at the same time as the declaration, that foreign practitioner; and

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

• (d) indicate the name of the patentee and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

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

• (d) be signed by
  • (i) the person requesting re-examination,
  • (ii) if a document authorizing a foreign practitioner to sign a small entity declaration is signed by the person requesting re-examination and submitted to the Commissioner at the same time as the declaration, that foreign practitioner, or
  • (iii) a patent agent who is appointed in respect of that request; and
• (e) indicate the name of the person requesting re-examination and, if applicable, the name of the patent agent or the foreign practitioner signing the declaration.

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,

• (a) the appointment of any patent agent who is not resident in Canada is revoked;
• (b) an associate patent agent who was appointed by a patent agent who is not resident in Canada is deemed to have been appointed as a patent agent under section 27 of the former Rules;
• (c) all the patent agents who are members of a firm that was appointed as a patent agent under section 27 of the former Rules are deemed to be appointed under section 27 of the new Rules; and
• (d) all the patent agents who are members of a firm that was appointed as an associate patent agent under section 28 of the former Rules are deemed to be appointed under section 28 of the new Rules.

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.