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18 June 2007
On June 2 2007 a number of rules and regulations governing intellectual property in Canada were amended. The most significant of these changes deal with amendments to the Patent Rules. The new rules affect:
Most government fees are halved for small entities.
The amended definition of a 'small entity' begins as previously, providing that, subject to certain exceptions, an entity is a small entity if it employs 50 or fewer employees or is a university. However, the exceptions have been modified to exclude (i) an entity controlled directly or indirectly by another entity, other than a university, that employs more than 50 employees, and (ii) an entity that has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.
Under the amended rules, entitlement to small entity status is determined once for the life of the patent based on the status of the original applicant as at the date of filing of a regular application (ie, a non-Patent Convention Treaty (PCT) application) or the date of national phase entry of a PCT application.
A provision has been added to provide relief in case of a mistaken small entity payment. Specifically, the Patent Office may grant an extension of time to pay the proper fee where the applicant or patentee states that, to the best of its knowledge, the small entity fee was paid in good faith and the request for a time extension is filed without undue delay.
One concern with the relief provision is that the time extension is at the discretion of the Patent Office. Further, the definition of 'small entity' retains imprecise language from the previous definition. As a result, the following comments of the Federal Court of Appeal in relation to the previous definition appear to be also applicable to the new definition: "It seems to me that no matter how diligently an applicant for a patent attempts to [assess its entitlement to small entity status] there is some risk of being wrong" (Barton No-Till Inc v Dutch Industries Ltd). Therefore, at least until the policy and practice of the Patent Office in respect of accepting corrective fee payments become clear, it is sensible to submit all fees at a standard level.
Previously it was necessary for an applicant for a Canadian patent to register title documentation showing that title passed to the applicant from the inventor(s). Under the new rules, no such documentation is required. Instead, an applicant is required to file a declaration of entitlement.
For a PCT national phase application, the declaration of entitlement should follow the format for such declarations specified under the PCT. For non-PCT applications, the declaration should follow a similar format. Accordingly, the declaration must state the basis for the applicant's entitlement to apply. For example, the applicant may declare that it is entitled as the employer of the inventor(s) or by virtue of an assignment identified in the declaration.
A declaration is not required to obtain a filing date, but is required to complete the application.
It remains necessary to register title documentation to show any change of title from the original applicant and any change of title after issuance of the patent.
Prior to the amendments, the Patent Rules required that a sequence listing in a non-PCT application be presented in the previous World Intellectual Property Organization (WIPO) ST.23 Standard (text headings), rather than the updated WIPO ST.25 Standard of 1998 (numeric headings).
The amendments extend the use of the Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications, provided for in the PCT Administrative Instructions, to include non-PCT applications.
As previously, a sequence listing is required if the application contains disclosure of an unbranched sequence of four or more amino acids or an unbranched sequence of 10 or more nucleotides. Also as previously, sequences "identified as forming a part of the prior art" need not be presented in a sequence listing in a Canadian patent application.
A sequence listing is not required to obtain a filing date, but is required to complete the application.
Pursuant to the amendments, if a sequence listing is required the specification must contain a sequence listing in electronic form. A paper copy of the sequence listing is no longer required. Indeed, it is possible that the amended Patent Rules will be interpreted as prohibiting a paper copy. Hence, there will be only a single sequence listing, in electronic form, preventing the risk of discrepancies between paper and electronic copies of the sequence listing.
It is not yet known how the Patent Office will catalogue, safeguard and publish sequence listings in electronic form. Therefore, applicants should include the content of the sequence listing in the text of the specification in the form of a table.
The final fee (ie, issue fee) for a Canadian patent application includes a charge for each page of specification and drawings in excess of 100 pages. It has been suggested that the Patent Office will include the electronic copy of the sequence listing in the calculation of excess page fees. Accordingly, duplication of the sequence listing in a table in the specification may increase the final fee payable upon allowance of the application. Nevertheless, if the content of the sequence listing is of importance, until the Patent Office's practices concerning the handling of sequence listings in electronic form are known it is best to take this precaution.
Transitional provisions for the amendments allow an applicant the choice of complying with either the previous or the amended sequence listing requirements in respect of (i) a non-PCT application filed in Canada before June 2 2007, and (ii) a PCT national phase application based on a PCT application with an international filing date before June 2 2007.
The principal consequence of the transitional provisions is that, in respect of non-PCT applications in which a WIPO Standard ST.23 format sequence listing has already been filed, there is no requirement to update the sequence listing to the PCT sequence listing standard. A secondary consequence is that, with respect to a PCT national phase application based on an international application filed before June 2 2007, the requirement for a completion fee should not apply even if the sequence listing is filed more than three months after the date of national entry.
For further information on this topic please contact Ron Faggetter at Smart & Biggar/Fetherstonhaugh's Toronto office by telephone (+1 416 593 5514) or by fax (+1 416 591 1690) or by email (firstname.lastname@example.org). Alternatively, contact David E Schwartz at Smart & Biggar/Fetherstonhaugh's Ottawa office by telephone (+1 613 232 2486) or by fax (+1 613 232 8440) or by email (email@example.com).
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