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01 September 2009
On July 11 2009 proposed amendments to the Patent Rules were published for public comment in Part I of the Canada Gazette. Although many of the proposed amendments are essentially editorial in nature, they concern at least one matter of substance: the requirement for a 'declaration of entitlement' in a Canadian patent application.
Prior to June 2 2007, an applicant was required to register evidence (usually in the form of an assignment) that it was the legal representative of the inventor. Pursuant to amendments to the Patent Rules that came into force on June 2 2007, this requirement was removed and replaced with a requirement for a declaration as to the applicant's entitlement, as of the filing date, to apply for and be granted a patent.
Although the 2007 amendments were intended to simplify the application procedure, the complexity of the prescribed declaration of entitlement form has proven to be problematic. The existing declaration of entitlement form, which is based on a general purpose form prescribed in the Patent Cooperation Treaty Administrative Instructions, requires identification of a specific basis of entitlement selected from a prescribed list, including terms such as 'an agreement' 'consent' or 'transfer of entitlement', none of which is defined in the Patent Act or the Patent Rules. Furthermore, the form requires specific dates to be attributed to most of these bases of entitlement.
The proposed amendments would replace the requirement for the relatively complex declaration of entitlement document with a simple declaration that "the applicant is the legal representative of the inventor". The term 'legal representative' is defined broadly in the Patent Act as including "heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions".
The proposed amendments were open for public comment for a 30-day period that commenced on July 11 2009. In the absence of representations received during this 30-day comment period identifying significant problems with the proposed amendments, it may reasonably be expected that the proposed amendments will be registered shortly after the end of the comment period. The amendments would come into force 30 days after the date on which they are registered. The amendments should be published in Part II of the Canada Gazette within 23 days of registration.
Although neither the existing declaration of entitlement regime nor the proposed simplified declaration procedure requires an assignment from the inventor to the original applicant to be registered with the Patent Office, provisions regarding assignments nevertheless remain in the Patent Act. In this regard, Section 51 of the Patent Act provides that an assignment is void against a subsequent assignee unless the assignment is registered with the Patent Office before registration of the instrument under which the subsequent assignee claims. This suggests the possibility that if the original applicant for a Canadian patent obtained rights in an invention from the inventor by way of assignment, but did not record that assignment, the inventor could fraudulently execute a subsequent assignment in favour of a third party and record that subsequent assignment with the Patent Office, thereby defeating the earlier (unrecorded) assignment to the original applicant.
This is an unlikely possibility in view of a requirement under the Patent Rules to preserve the chain of title. Provided that the assignee (and not the inventor) is named as the original applicant in the application (which is standard practice in Canada), the inventor is not part of the chain of title in the Canadian patent application. Therefore, an assignment from the inventor to a third party should not be registered by the Patent Office. This is provided for in Section 38 of the Patent Rules, which states that:
"No transfer of a patent or an application to a new owner shall be recognized by the Commissioner unless a copy of the document effecting the transfer from the current recognized owner to the new owner has been registered in the Patent Office in respect of the patent or application."
The 'currently recognized owner' referred to above would be the originally named applicant and not the inventor. This requirement to maintain the chain of title is acknowledged in Section 6.09 of the Patent Office's Manual of Patent Office Practice.
However, because the provisions of the Patent Act with respect to assignments do not appear to be entirely consistent with the provisions of the Patent Rules, it is possible that Canadian law or practice may develop in such a way that recording an assignment to the original applicant would be beneficial. In view of this possibility, the cautious course is to record any such assignment. Any subsequent steps within the chain of title (eg, from the original applicant to a subsequent assignee) must be registered with the Patent Office in the usual manner if the new owner is to be recognized in the Patent Office records and the potential application of Section 51 of the Patent Act is to be avoided.
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