SICE - IP: National Legislation/Canada - Rules Re: Patent Act (3)

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INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

Rules Respecting the Patent Act
JUS-96-460-01 (SOR/DORS)

Descriptions

Index

80. (1) The description shall

(a) state the title of the invention, which shall be short and precise;

(b) specify the technical field to which the invention relates;

(c) describe the background art that, as far as is known to the applicant, can be regarded as important for the understanding, searching and examination of the invention;

(d) describe the invention in terms that allow the understanding of the technical problem, even if not expressly stated as such, and its solution;

(e) briefly describe the figures in the drawings, if any;

(f) set forth at least one mode contemplated by the inventor for carrying out the invention in terms of examples, where appropriate, and with reference to the drawings, if any; and

(g) contain a sequence listing where required by paragraph 111(a).

(2) The description shall be presented in the manner and order specified in subsection (1) unless, because of the nature of the invention, a different manner or a different order would afford a better understanding or a more economical presentation.

81. (1) The description shall not incorporate by reference another document.

(2) The description shall not refer to a document that does not form part of the application unless the document was available to the public on the filing date of the application.

(3) Any document referred to in the description shall be fully identified.

Drawings Index

82. (1) Drawings shall be in black, sufficiently dense and dark, well-defined lines to permit satisfactory reproduction and shall be without colourings.

(2) Cross-sections shall be indicated by hatching that does not impede the clear reading of the reference characters and lead lines.

(3) All numbers, letters and lead lines shall be simple and clear.

(4) Elements of the same figure shall be in proportion to each other unless a difference in proportion is indispensable for the clarity of the figure.

(5) The height of the numbers and letters in a drawing shall not be less than 0.32 cm.

(6) The same page of drawings may contain several figures.

(7) Where figures on two or more pages are intended to form a single complete figure, the figures on the several pages shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures.

(8) The different figures shall be numbered consecutively.

(9) Reference characters not mentioned in the description shall not appear in the drawings, and vice versa.

(10) The same features, when denoted by reference characters, shall, throughout the application, be denoted by the same characters.

(11) The drawings shall not contain text matter except to the extent required for the understanding of the drawings.

Photographs Index

83. In any case in which an invention does not admit of illustration by means of drawings but does admit of illustration by means of photographs, the applicant may, as part of the application, furnish photographs, or reproductions of photographs, that illustrate the invention.

Claims Index

84. The claims shall be clear and concise and shall be fully supported by the description independently of any document referred to in the description.

85. If there are several claims, they shall be numbered consecutively in Arabic numerals beginning with the number "1".

86. (1) Subject to subsections (2) and (3), claims shall not, except where necessary, rely, in respect of the features of the invention, on references to the description or drawings and, in particular, they shall not rely on such references as: "as described in Part ... of the description", or "as illustrated in figure ... of the drawings".

(2) Where the application contains drawings, the features mentioned in the claims may be followed by the reference characters, placed between parentheses, appearing in the drawings and relating to such features.

(3) Where the application contains a sequence listing, the claims may refer to a sequence identifier number referred to in subsection 113(2).

(4) Where the specification refers to a deposit of biological material, the claims may refer to that deposit.

87. (1) Subject to subsection (2), any claim that includes all the features of one or more other claims (in this section referred to as a "dependent claim") shall refer by number to the other claim or claims and shall state the additional features claimed.

(2) A dependent claim may only refer to a preceding claim or claims.

(3) Any dependent claim shall be understood as including all the limitations contained in the claim to which it refers or, if the dependent claim refers to more than one other claim, all the limitations contained in the particular claim or claims in relation to which it is considered.

Priority Claims Index

88. (1) Subject to section 65, for the purposes of subsection 28.4(2) of the Act in respect of an application (in this subsection referred to as the "subject application")

(a) a request for priority may be made in the petition or in a separate document;

(b) a request for priority must be made before the expiry of the four-month period after the filing date of the subject application;

(c) the applicant shall provide the Commissioner with the date and country of filing of each previously regularly filed application on which the request for priority is based, before the expiry of the four-month period after the filing date of the subject application; and

(d) the applicant shall provide the Commissioner with the application number of each previously regularly filed application on which the request for priority is based, before the expiry of the later of the four-month period after the filing date of the subject application and the twelve-month period after the date of filing of the previously regularly filed application.

(2) Section 26 does not apply in respect of the times prescribed in subsection (1).

89. Where a previously regularly filed application on the basis of which a request for priority is based is taken into account by an examiner pursuant to sections 28.1 to 28.4 of the Act, the examiner may requisition the applicant to file a certified copy of the previously regularly filed application and a certification from the patent office in which the application was filed indicating the actual date of its filing.

90. (1) For the purposes of subsection 28.4(3) of the Act, an applicant may withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications, by filing a request with the Commissioner and the Commissioner shall send a notice to the applicant advising that the request for priority has been withdrawn.

(2) The effective date of the withdrawal of a request for priority pursuant to subsection (1) shall be the date the request for withdrawal is received by the Commissioner.

Effect of Withdrawals on Public Inspection Index

91. For the purposes of subsection 10(4) of the Act, where a request for priority with respect to a particular previously regularly filed application is withdrawn in accordance with section 90, the prescribed date is the date on which a period of sixteen months after the filing date of that previously regularly filed application expires, or, where the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date preceding the expiry of the confidentiality period referred to in subsection 10(2) of the Act, that subsequent date.

92. For the purposes of subsection 10(5) of the Act, the prescribed date is the date that is two months before the date of expiry of the confidentiality period or, where the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date preceding the expiry of the confidentiality period referred to in subsection 10(2) of the Act, that subsequent date.

Filing Date Index

93. For the purposes of subsection 28(1) of the Act, the filing date of an application, other than a PCT national phase application, is the date on which the Commissioner receives the following documents, information and fees:

(a) an indication in English or French that the granting of a Canadian patent is sought;

(b) the name of the applicant;

(c) the address of the applicant or of a patent agent of the applicant;

(d) a document, in English or French, that on its face appears to describe an invention; and

(e) the application fee set out in item 1 of Schedule II.

Completing the Application Index

94. (1) In respect of an application other than a PCT national phase application, where, at the expiry of the time specified in subsection (2), the abstract, the description, the claims or the drawings do not comply with sections 68, 69 and 70, or the application does not contain the information and documents listed below, the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those sections or to submit that information or those documents, as the case may be, and to pay the fee set out in item 2 of Schedule II before the expiry of the later of the three-month period after the date of the notice and the twelve-month period after the filing date of the application:

(a) a petition complying with section 77;

(b) an abstract;

(c) a sequence listing, where required by paragraph 111(a);

(d) a copy of a sequence listing in computer readable form, where required by paragraph 111(b);

(e) a claim or claims;

(f) any drawing referred to in the description;

(g) an appointment of a patent agent, where required by section 20;

(h) an appointment of an associate patent agent, where required by section 21; and

(i) an appointment of a representative, where required by section 29 of the Act.

(2) For the purposes of subsection (1), the time is the fifteen-month period after the filing date of the application or, where a request for priority has been made in respect of the application, the fifteen-month period after the earliest filing date of any previously regularly filed application on which the request for priority is based.

(3) Section 26 does not apply in respect of the time set out in subsection (2).

Requests for Examination Index

95. For the purposes of subsection 35(1) of the Act, a request for examination of an application shall contain the following information:

(a) the name and address of the person making the request;

(b) if the person making the request is not the applicant, the name of the applicant; and

(c) information, such as the application number, sufficient to identify the application.

96. (1) Subject to subsection (2), for the purposes of paragraph 73(1)(d) of the Act, a request for the examination of an application shall be made and the fee set out in item 3 of Schedule II shall be paid before the expiry of the five-year period after the filing date of the application.

(2) A request for the examination of a divisional application shall be made and the fee set out in item 3 of Schedule II shall be paid before the expiry of the later of

(a) the five-year period after the filing date of the original application; and

(b) the six-month period after the date on which the divisional application is actually filed in accordance with subsection 36(2) or (2.1) of the Act.

(3) Section 26 does not apply in respect of the times prescribed in subsections (1) and (2).

Abandonment and Reinstatement Index

97. For the purposes of subsection 73(2) of the Act, an application is deemed to be abandoned if the applicant does not reply in good faith to any requisition of the Commissioner referred to in section 25 or 94 within the time provided therein.

98. In order for an application deemed to be abandoned under section 73 of the Act to be reinstated, the applicant shall, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 97, make a request for reinstatement to the Commissioner, take the action that should have been taken in order to avoid the deemed abandonment and pay the fee set out in item 7 of Schedule II, before the expiry of the twelve-month period after the date on which the application is deemed to be abandoned as a result of that failure.

Maintenance Fees Index

99. (1) For the purposes of subsection 27.1(1) and paragraph 73(1)(c) of the Act, to maintain an application in effect, the applicable fee set out in item 30 of Schedule II shall be paid in respect of the periods set out in that item before the expiry of the times provided in that item.

(2) Where a divisional application is filed, any fee set out in item 30 of Schedule II, that would have been payable pursuant to subsection 27.1(1) of the Act had the divisional application been filed on the filing date of the original application, shall be paid when the divisional application is actually filed in accordance with subsection 36(2) or (2.1) of the Act.

100. (1) Subject to subsections (2) and (3), for the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a patent, set out in item 31 of Schedule II, shall be paid in respect of the periods set out in that item before the expiry of the times, including periods of grace, provided in that item.

(2) In subsection (1), "patent" does not include a reissued patent.

(3) No fee to maintain the rights accorded by a patent shall be payable in respect of any period for which a fee to maintain the application for that patent was paid.

101. (1) Subject to subsection (2), for the purposes of section 46 of the Act, the applicable fee to maintain the rights accorded by a reissued patent, set out in item 31 of Schedule II, shall be paid in respect of the same periods and before the expiry of the same times as for the original patent.

(2) No fee to maintain the rights accorded by a reissued patent shall be payable in respect of any period for which a fee was paid to maintain the rights accorded by the original patent or to maintain the application for the original patent.

102. Section 26 does not apply in respect of the times set out in sections 99, 100 and 101.

Deposits of Biological Material Index

103. For the purposes of subsection 38.1(1) of the Act, where a specification in an application filed in Canada, or in a patent issued on the basis of such an application, refers to a deposit of biological material, the deposit shall be considered to be in accordance with these regulations if sections 104 to 106 are complied with.

104. (1) The deposit of the biological material shall be made by the applicant with an international depositary authority on or before the filing date of the application.

(2) The applicant shall inform the Commissioner of the name of the international depositary authority, the date of the original deposit and the accession number given by the international depositary authority to the deposit, before the application is open to public inspection under section 10 of the Act.

(3) The information required by subsection (2) must be included in the description.

(4) Before the application is open to public inspection under section 10 of the Act, the applicant may file a notice with the Commissioner stating the applicant's wish that, until either a patent has been issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn, the Commissioner only authorize the furnishing of a sample of the deposited biological material to an independent expert nominated by the Commissioner in accordance with section 109.

(5) Section 26 does not apply to the times set out in this section.

105. Where, pursuant to Rule 5 of the Regulations under the Budapest Treaty, samples of biological material are transferred to a substitute international depositary authority for the reason that the original international depositary authority has discontinued the performance of functions, the applicant or the patentee must inform the Commissioner of the name of the substitute international depositary authority and of the new accession number given to the deposit by the substitute international depositary authority before the expiry of the three-month period after the date of issuance of a receipt by the substitute international depositary authority.

106. (1) Where a new deposit is made with another international depositary authority pursuant to Article 4(1)(b)(i) or (ii) of the Budapest Treaty, the applicant or the patentee must inform the Commissioner of the name of that authority and of the new accession number given to the deposit by that authority before the expiry of the three-month period after the date of issuance of a receipt by that authority.

(2) Where, pursuant to Article 4 of the Budapest Treaty, the depositor is notified of the inability of the international depositary authority to furnish samples and no new deposit is made in accordance with that Article, the application or patent shall, for the purposes of any proceedings in respect of that application or patent, be treated as if the deposit had never been made.

107. (1) The Commissioner shall publish in the Canadian Patent Office Record a form for making a request for the furnishing of a sample of a deposit, the contents of which shall be the same as the contents of the form referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty.

(2) Subject to sections 108 and 110, where a specification in a Canadian patent or in an application filed in Canada that is open to public inspection pursuant to section 10 of the Act refers to a deposit of biological material by the applicant, and where a person files with the Commissioner a request made on the form referred to in subsection (1), the Commissioner shall make the certification referred to in Rule 11.3(a) of the Regulations under the Budapest Treaty in respect of that person.

(3) Except where subsection 110(2) applies, where the Commissioner makes a certification pursuant to subsection (2), the Commissioner shall send a copy of the request together with the certification to the person who filed the request.

108. Until either a patent has been issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn, the Commissioner shall not make the certification referred to in subsection 107(2) in respect of a person, including an independent expert, unless the Commissioner has received an undertaking by that person to the applicant

(a) not to make any sample of biological material furnished by the international depositary authority or any culture derived from such sample available to any other person before either a patent is issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn; and

(b) to use the sample of biological material furnished by the international depositary authority and any culture derived from such sample only for the purpose of experiments that relate to the subject-matter of the application until either a patent is issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn.

109. (1) Where a notice has been filed with the Commissioner pursuant to subsection 104(4) in respect of an application, the Commissioner, upon the request of any person that an independent expert be nominated and with the agreement of the applicant, shall within a reasonable time nominate a person as an independent expert for the purposes of that application.

(2) If the Commissioner and the applicant cannot agree on the nomination of an independent expert within a reasonable time after the request is made, the notice of the applicant referred to in subsection 104(4) is deemed never to have been filed.

110. (1) Where a notice has been filed with the Commissioner pursuant to subsection 104(4) in respect of an application, until a patent is issued on the basis of the application or the application is refused, or is abandoned and no longer subject to reinstatement, or is withdrawn, a request pursuant to section 107 may only be filed by an independent expert nominated by the Commissioner in accordance with section 109.

(2) Where the Commissioner makes a certification pursuant to subsection 107(2) in respect of an independent expert nominated by the Commissioner, the Commissioner shall send a copy of the request together with the certification to the applicant and to the person who requested the nomination of the independent expert.

Sequence Listings Index

111. Where an application describes a nucleotide or amino acid sequence other than a sequence identified as forming part of the prior art,

(a) the description shall contain in respect of that sequence, a sequence listing;

(b) a copy of the sequence listing shall be filed in a computer-readable form that complies with section 131; and

(c) a statement shall be filed by the applicant with the Commissioner that the content of the copy of the sequence listing in computer-readable form is the same as the content of the sequence listing contained in the description.

112. Where an application describes a nucleotide or amino acid sequence other than a sequence identified as forming part of the prior art, the sequence may not be amended unless

(a) the sequence listing is amended in accordance with sections 113 to 130;

(b) a copy of the amended sequence listing is filed in a computer-readable form that complies with section 131; and

(c) a statement is filed by the applicant with the Commissioner that the content of the copy of the amended sequence listing in computer-readable form is the same as the content of the amended sequence listing contained in the description.

113. (1) A sequence listing shall be entitled "Sequence Listing" or "Listage des s�quences", and shall begin on a new page.

(2) Each nucleotide or amino acid sequence disclosed shall appear separately in the sequence listing and shall be assigned a separate sequence identifier number such as "SEQ ID NO:1", "SEQ ID NO:2" or "SEQ ID NO:3".

Continue to: Part III: Symbols to be Used for Sequence Listings