Track changes for MOPOP revised in October 2022 update

Primary communications with the Commissioner must be in English or French in order for the Office to provide a basic level of service. Generally, this requirement extends to any document submitted accompanying or included within the primary communication (section 15 of the Patent Rules), with the exception of the following documents, which may be in a language other than English or French (although a translation will also generally be required):

1. a reference at filing to a previously filed application or an addition to the specification or drawings or a copy of a priority application (paragraph 15(1)(a), referring to paragraphs 67(2)(b), 72(3)(a), and subsection 74(1) of the Patent Rules);
2. a description at filing (paragraph 15(1)(b), referring to subsection 71(d) of the Patent Rules);
3. a document submitted in response to a requisition for a document concerning a foreign application disclosing the same invention (paragraph 15(1)(c), referring to paragraph 85(1)(b) of the Patent Rules);
4. a copy of an international application as part of the PCT filing process (paragraph 15(1)(d), referring to paragraph 154(1)(a) of the Patent Rules); or
5. text matter contained in a sequence listing (paragraph 15(1)(e) of the Patent Rules).

Primary communications with the Commissioner must be in English or French in order for the Office to provide a basic level of service. Generally, this requirement extends to any document submitted accompanying or included within the primary communication (section 15 of the Patent Rules), with the exception of the following documents, which may be in a language other than English or French (although a translation will also generally be required):

1. a reference at filing to a previously filed application or an addition to the specification or drawings or a copy of a priority application (paragraph 15(1)(a), referring to paragraphs 67(2)(b), 72(3)(a), and subsection 74(1) of the Patent Rules);
2. the specification and drawings at filing (paragraph 15(1)(b), referring to subsection 71(d) of the Patent Rules);
3. a document submitted in response to a requisition for a document concerning a foreign application disclosing the same invention (paragraph 15(1)(c), referring to paragraph 85(1)(b) of the Patent Rules);
4. a copy of an international application as part of the PCT filing process (paragraph 15(1)(d), referring to paragraph 154(1)(a) of the Patent Rules);
5. text matter contained in a sequence listing (paragraph 15(1)(e) of the Patent Rules); or
6. a document or information in respect of an international application that has become a PCT national phase application that is deemed to have been received by the Commissioner (paragraph 15(1)(f) referring to section 156 of the Patent Rules).

2.02.09d Practice for allegations of delayed receipt of examiner's report from the Patent Office

Date modified: December 2020

In the rare case when the applicant, patentee or other person alleges that an examiner's report from the Office was received with a delay of greater than one month from the date on the examiner's report, at the postal or email address to which the examiner's report was addressed, the Office will consider withdrawing the examiner's report if an affidavit or statutory declaration containing evidence is submitted in support of the allegation within 14 days of the receipt of the report. The Office requires that the affidavit or statutory declaration contain information about the person's record keeping systems and copies of the relevant records (e.g. mailroom or email docketing records) to demonstrate that the examiner's report was received greater than one month from the date on the examiner's report.

If upon review of the affidavit or statutory declaration, the Office is satisfied that the examiner's report was received greater than one month from the date of the examiner's report at the postal or email address to which the examiner's report was addressed, the Office will withdraw the examiner's report and issue it again with a new date. If the Office is not satisfied, it will inform the person by letter and the Office will consider the examiner's report to have been received in a timely manner.

2.02.09d Practice for allegations of delayed receipt of examiner's report from the Patent Office

Date modified: October 2022

In the rare case when the applicant, or other person alleges that an examiner's report from the Office was received with a delay of greater than one month from the date on the examiner's report, at the postal or email address to which the examiner's report was addressed, the Office will consider withdrawing the examiner's report if, in addition to the requisition under subsection 86(2) or 86(5) of the Patent Rules, it contains a requisition or requirement under section 85, 85.1 or 94 of the Patent Rules, and an affidavit or statutory declaration containing evidence is submitted in support of the allegation within 14 days of the receipt of the report. The Office requires that the affidavit or statutory declaration contain information about the person's record keeping systems and copies of the relevant records (e.g. mailroom or email docketing records) to demonstrate that the examiner's report was received greater than one month from the date on the examiner's report.

If upon review of the affidavit or statutory declaration, the Office is satisfied that the examiner's report was received greater than one month from the date of the examiner's report at the postal or email address to which the examiner's report was addressed, the Office will withdraw the examiner's report and issue a new report. If the Office is not satisfied, it will inform the person by letter and the Office will consider the examiner's report to have been received in a timely manner.

It should be noted that, in certain circumstances, the applicant may instead wish to request an extension of time to respond to the report under subsection 3(1) of the Patent Rules (see sections 2.03.03 and 2.03.03e(ii)) when an examiner's report is received more than one month from the date of the report. The fee required for an extension of time may be waived in these circumstances if certain requirements are met (see 2.03.03e(ii)).

2.03.03a Time period extended for prescribed and designated days

Date modified: October 2019

Under subsection 78(1) of the Patent Act, where a time period for doing anything ends on a prescribed day or on a day designated by the Commissioner, the time period is extended to the next day that is not a prescribed day or a designated day.

2.03.03a Time period extended for prescribed and designated days

Date modified: October 2022

Under subsection 78(1) of the Patent Act, where a time period for doing anything ends on a prescribed day or on a day designated by the Commissioner, the time period is extended to the next day that is not a prescribed day or a designated day. Section 78 of the Patent Act does not apply to international applications during the international phase (see section 2.03.04).

2.03.03c Unexpected closures of the office

Date modified: October 2019

In the case of unforeseen circumstances, the Patent Office will attempt to remain open to the public and ensure that essential service to our clients continues with the least possible disruption or delay. Unexpected closures, whether they are for all or part of the day will be announced on the CIPO website and through social media. These unexpected closures are captured under paragraph 5(n) of the Patent Rules described in section 2.03.03b of this Chapter. For the purposes of subsection 78(1) of the Patent Act, if the time period ends on a day of unexpected closure, the time period is extended to the next day the Patent Office is open to the public.

2.03.03c Unexpected closures of the office

Date modified: October 2022

In the case of unforeseen circumstances, the Patent Office will attempt to remain open to the public and ensure that essential service to our clients continues with the least possible disruption or delay. Unexpected closures, whether they are for all or part of the day will be announced on the CIPO website and through social media. These unexpected closures are captured under paragraph 5(n) of the Patent Rules described in section 2.03.03b of this Chapter. For the purposes of subsection 78(1) of the Patent Act, if the time period ends on a day of unexpected closure, the time period is extended to the next day the Patent Office is open to the public. Section 78 of the Patent Act does not apply to international applications during the international phase (see section 2.03.04).

2.03.03d Designated days – force majeure

Date modified: October 2019

Under subsection 78(2) of the Patent Act, the Commissioner may designate any day on account of unforeseen circumstances, and if the Commissioner is satisfied that it is in the public interest to do so in order to extend time periods ending on that day. This type of event is described in the business community as a "force majeure" clause, although not described as such in the Patent Act or Patent Rules. This provision allows the Commissioner to suspend obligations when unforeseen circumstances arise making it impossible for applicants and patentees to fulfill them as they would normally be permitted. Any designation of a day or days by the Commissioner will be published on the website of the Canadian Intellectual Property Office's and the time periods that end on the designated day(s) will be extended to the next day the Patent Office is open to the public under subsection 78(1) of the Patent Act.

2.03.03d Designated days – force majeure

Date modified: October 2022

Under subsection 78(2) of the Patent Act, the Commissioner may designate any day on account of unforeseen circumstances, and if the Commissioner is satisfied that it is in the public interest to do so in order to extend time periods ending on that day. This type of event is described in the business community as a "force majeure" clause, although not described as such in the Patent Act or Patent Rules. This provision allows the Commissioner to suspend obligations when unforeseen circumstances arise making it impossible for applicants and patentees to fulfill them as they would normally be permitted. Any designation of a day or days by the Commissioner will be published on the CIPO website and the time periods that end on the designated day(s) will be extended to the next day the Patent Office is open to the public under subsection 78(1) of the Patent Act. Section 78 of the Patent Act does not apply to international applications during the international phase (see section 2.03.04).

Extension of Time for Examiner Requisitions

Date modified: September 2020

The time to respond to an examiner's requisition is four months. The Commissioner may extend the time limit to respond to the examiner's requisition to a maximum of six months from the date of the examiner's requisition under subsection 131(2) of the Patent Rules. Once the Commissioner has made the determination that the extension is justified, the newly established due date will be six months from the original mailing date of the examiner requisition. The extension of time will not be calculated by the appending of two months from the date of the deemed expiry of the four month due date which may have fallen on a designated or prescribed date.

Extension of Time for Examiner Requisitions

Date modified: October 2022

The time to respond to an examiner's requisition is four months. The Commissioner may extend the time limit to respond to the examiner's requisition to a maximum of six months from the date of the examiner's requisition under subsection 131(2) of the Patent Rules. Once the Commissioner has made the determination that the extension is justified, the newly established due date will be six months from the date of the examiner's requisition. The extension of time will not be calculated by the appending of two months from the date of the deemed expiry of the four month due date which may have fallen on a designated or prescribed date.

Any extension of time for an examiner's requisition will not apply to any requirement to request continued examination that might form part of an examiner's report.

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Extension of Time – Delayed Receipt of Examiner Requisitions

Date modified: October 2022

The time to respond to an examiner's requisition is four months. In the case where the examiner's requisition under 86(2) or 86(5) of the Patent Rules was received more than one month after the day on which it was sent, the Commissioner may extend the time limit to respond to the examiner's requisition to a maximum of six months from the date of receipt of the examiner's requisition if the applicant:

• applies for the extension within 14 days after the date of receipt of the examiner's requisition,
• provides evidence satisfactory to the Commissioner of the date of receipt.

Evidence satisfactory to the Commissioner may include official reports of incoming correspondence identifying the examiner's requisition or with the associated date of receipt, a copy of the correspondence with a date-stamp, or other data or reports that clearly show the date of receipt of the examiner's requisition.

If this information is provided by the applicant, the Commissioner will waive payment of the prescribed fee to apply for an extension of time (see section 10.05).

If the Commissioner is satisfied that the circumstances justify the extension, the newly established due date will be four months from the day on which the examiner's requisition was received. Requests for an extension of time beyond 4 months from the established date of receipt will be considered based on the circumstances and the justifications submitted. The fee for requesting an extension of time beyond 4 months from the date of receipt will not be waived.

2.03.03f Non-application of subsection 3(1) of the Patent Rules

Date modified: September 2020

While extension of time may be granted for certain actions, there are time limits that are fixed under the Patent Rules for which subsection 3(1) of the Patent Rules does not apply in those circumstances. The following is a list of actions for which the Commissioner cannot grant an extension of time under the Patent Rules:

• s15(4) Commissioner's Notice requiring the translation with 2 months
• s44(4) Application fee (exception 'top –up' small entity fees)
• s67(3) and 73(7) Requesting Priority
• s68(3) Maintenance Fees applications
• s72(5) Additions to specification and drawings
• s77(3) restoration of priority
• s80(2) examination fee
• s81(2) and 83(2) Prescribed time for requesting examination
• s86(1), 86(10), 86(12) and 86(17) application found allowable
• s87(1) basic final fee
• s89(2) filing a divisional
• s93(2) and 95(1) deposits of biological material
• s110 – Corrections (108) (190)(1) (3) (4)
• s112(4) maintenance fees patents
• s116(2) requesting reversal of the deemed expiry of a patent
• s130(2) time to deliver counter statement
• s133(4) request for reinstatement
• s135(2) request for reinstatement
• s154(9) requirements to enter national phase
• s172(7) application and notice found allowable after final amendments
• s180(2) requirements to request priority
• s182(2) request for examination for category 2 applications that are divisionals
• s184(7) applications found allowable after final action/specific amendments
• s195(4) request for priority for category 3 application
• s197(2) request for examination for category 3 application
• s199(7) rejection for defects category 3 application

Please note that time limits that are fixed under the Patent Act cannot be extended under subsection 3(1) of the Patent Rules. The period of time fixed by subsection 18(2) of the Patent Act is however extendable under section 4 of the Patent Rules.

2.03.03f Non-application of subsection 3(1) of the Patent Rules

Date modified: October 2022

While extension of time may be granted for certain actions, there are time limits that are fixed under the Patent Rules for which subsection 3(1) of the Patent Rules does not apply in those circumstances. The following is a list of actions for which the Commissioner cannot grant an extension of time under the Patent Rules:

• s15(4) Commissioner's Notice requiring the translation with 2 months
• s44(1) time to submit a small entity declaration for the purpose of paying the application fee
• s67(1) or (2) reference filing
• s68(1) and s68(2) time to submit a small entity declaration for the purpose of paying an application maintenance fee
• s72 Addition to specification and drawings
• s73(1) requesting priority
• s77(1) requesting restoration of priority
• s80(1) time to submit a small entity declaration for the purpose of paying the fee for requesting examination
• s81(1) and 83(1) time for requesting examination
• s85.1(3), 85.1(4) time to request continued examination
• s86(1), 86(1.1), 86(6), 86(10), and 86(12) payment of final fee
• s87(1) time to submit a small entity declaration for the purpose of paying the basic final fee
• s89(1)(b) time to submit the original application number for the purpose of filing a divisional
• s93(1) provide the name of the international depository authority and accession number
• s95(1) request to furnish sample to independent expert
• ss104, 105, 106, 107(1), 108(1), 109)(1), (3) or (4) time to request a correction
• s112(1) time to submit a small entity declaration for the purpose of paying patent maintenance fee
• s116(1) requesting reversal of the deemed expiry of a patent
• s130(1) time to deliver counter statement
• s133(1) and 135(1)(b) requesting reinstatement
• s154(1), (2), (3), and (4) requirements to enter national phase
• s154(6) time to request a correction
• s172(2) and (5) payment of final fee for a category 1 application
• s195(1) requesting priority for a category 3 application
• s197(1) requesting examination for a category 3 application
• s199(2) and (5) payment of final fee for a category 3 application

Please note that time limits that are fixed under the Patent Act cannot be extended under subsection 3(1) of the Patent Rules. The period of time fixed by subsection 18(2) of the Patent Act is however extendable under section 4 of the Patent Rules.

2.03.03g Extension of time to 'top-up' small entity fees – subsection 3(3) of the Patent Rules

Date modified: October 2022

The Commissioner is authorized to extend the period of time, whether it has expired or not, to pay fees paid at the small entity rate if the Commissioner considers that the circumstances justify the extension and if the following requirements are met:

• The small entity fee was paid before the expiry of the time period for payment of the fee;
• It is later determined that the standard fee should have been paid;
• The applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid;
• The applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee that was applicable on the day on which the small entity fee was paid; and
• The applicant or patentee pays the extension of time fee (see CIPO's webpage on Patent Fees).

The applicant will be notified by letter of the Commissioner's decision regarding any request for an extension of time. The following fees are eligible for a top-up:

• s44(1) – patent application fee
• s68(1) or (2) maintenance fees for regular patent applications and divisional applications
• s80(1) – request for examination fee
• s86(1), (6), (10) or (12) – basic fee of the final fee
• s113(1), (5)(a) or (c) – maintenance fees for patents
• s155(1)(c) – basic national fee for PCT national phase entry
• s155(2) or 155(3)(a)(iii) or 155(3)(b)(i) or 155(3)(b)(ii) – maintenance fees for patent applications due at the PCT national phase entry date

Please note that the Patent Office will accept a single request and statement (under paragraph 3(3)(c) of the Patent Rules) to cover the top-up of multiple fees at the small entity rate so long as the applicant/patentee pays the extension of time fee for each fee previously paid at the small entity rate that is being "topped-up" as well as the difference for each fee.

Where the applicant or patentee has successfully "topped-up" all the previous small entity fees for the application or patent to a standard rate, the Patent Office will update the entity size in its records and all future fees and corresponding notices and letters will list the fee at the standard rate. If not all fees have been "topped-up", the entity size in the Patent Office records will remain small for the purposes of determining fees, corresponding notices and letters. Applicants and patentees may still pay any future fees at the standard rate though the difference will remain on file at the Patent Office and be available for refund within three years of payment upon request.

2.03.03g Extension of time to 'top-up' small entity fees – subsection 3(3) of the Patent Rules

Date modified: October 2022

The Commissioner is authorized to extend the period of time for the payment of fees paid at the small entity rate after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if the following requirements are met:

• The small entity fee was paid before the expiry of the time period for payment of the fee;
• It is later determined that the standard fee should have been paid;
• The applicant or patentee files a statement that, to the best of their knowledge, the small entity fee was paid in good faith and that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the standard fee should have been paid;
• The applicant or patentee pays the difference between the amount of the small entity fee that was paid and the standard fee that was applicable on the day on which the small entity fee was paid; and
• The applicant or patentee pays the extension of time fee (see CIPO's webpage on Patent Fees).

The applicant will be notified by letter of the Commissioner's decision regarding any request for an extension of time. The following fees are eligible for a top-up:

• s44(1) – patent application fee
• s68(1) or (2) maintenance fees for regular patent applications and divisional applications
• s80(1) – request for examination fee
• s85.1(5) – fee for requesting continued examination
• s86(1), (1.1), (6), (10) or (12) – basic fee of the final fee
• s112(1), (5)(a) or (c) – maintenance fees for patents
• s154(1)(c) – basic national fee for PCT national phase entry
• s154(2) or 154(3)(a)(iii) or 154(3)(b)(i) or 154(3)(b)(ii) – maintenance fees for patent applications due at the PCT national phase entry date

Please note that the Patent Office will accept a single request and statement (under paragraph 3(3)(c) of the Patent Rules) to cover the top-up of multiple fees at the small entity rate so long as the applicant/patentee pays the extension of time fee for each fee previously paid at the small entity rate that is being "topped-up" as well as the difference for each fee.

Where the applicant or patentee has successfully "topped-up" all the previous small entity fees for the application or patent to a standard rate, the Patent Office will update the entity size in its records and all future fees and corresponding notices and letters will list the fee at the standard rate.

The Patent Rules do not allow for the topping up of an application fee paid prior to October 30, 2019. Therefore, any top up request for such a fee will not be accepted and the application will continue to show future fees at the small entity rate.

If not all fees have been "topped-up", the entity size in the Patent Office records will remain small for the purposes of determining fees, corresponding notices and letters. Applicants and patentees may still pay any future fees at the standard rate though the difference will remain on file at the Patent Office and be available for refund within three years of payment upon request.

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2.03.03h Extension of time to 'top-up' – erroneous information – subsection 3(4) of the Patent Rules

Date modified: October 2022

The Commissioner is authorized to extend the period of time for the payment of a fee after the expiry of that period if the Commissioner considers that the circumstances justify the extension and if the following requirements are met:

• the Commissioner provided erroneous information in writing concerning the amount of the fee (note that information contained in Schedule 2 of the Patent Rules is not considered to be erroneous information provided by the Commissioner);
• the applicant or patentee paid an insufficient amount as a result of that erroneous information;
• the applicant or patentee identifies the source of the erroneous information relied on and files a statement that the application for the extension is being filed without undue delay after the applicant or patentee became aware that the amount paid was insufficient; and
• the applicant or patentee pays the difference between the amount that was paid and the amount of the fee that was payable on the day on which the insufficient payment was made

If the requirements are met, the Office will reverse any consequence that may have occurred due to the insufficient fee being paid before the expiry of the period to pay the fee.

2.03.04 Time Limits for PCT national phase applications before national phase entry

Date modified: October 2019

In accordance with section 160 of the Patent Rules, time limits for furnishing documents or information to the Commissioner before the national phase entry date of an international application are governed by Rule 80.5 of the Regulations under the PCT instead of section 78 of the Patent Act.

Rule 80.5 of the Regulations under the PCT provides: If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day:

1. On which such Office or organization is not open to the public for the purposes of the transaction of official business;
2. On which ordinary mail is not delivered in the locality in which such Office or organization is situated;
3. Which, where such Office or organization is situated in more than one locality, is an official holiday in at least one of the localities in which such Office or organization is situated, and in circumstances where the national law applicable by that Office or organization provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day; or
4. Which, where such Office is the government authority of a Contracting State entrusted with the granting of patents, is an official holiday in part of that Contracting State, and in circumstances where the national law applicable by that Office provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day;

the period shall expire on the next subsequent day on which none of the said four circumstances exists.

2.03.04 Time Limits for PCT national phase applications before national phase entry

Date modified: October 2022

Section 78 of the Patent Act does not apply to international applications during the international phase. For information about extensions of time during the international phase see MOPOP Section 33.08.

In accordance with section 160 of the Patent Rules, section 78 of the Patent Act does not apply to PCT national phase applications in respect of a time period that ended before the national phase entry date.

If the applicant submits the English or French translation within two months after the date of the notice the translation will replace the original document. If the applicant does not submit the English or French translation within the prescribed time, the application will be deemed to be abandoned under subsection 73(2) of the Patent Act, as prescribed by subsection 132(a) of the Patent Rules. For more information on abandonment and reinstatement of patent applications, please consult Chapter 9.

If the applicant submits the English or French translation within two months after the date of the notice the translation will replace the original document. If the applicant does not submit the English or French translation within the prescribed time, the application will be deemed to be abandoned under subsection 73(2) of the Patent Act, as prescribed by subsection 132(1)(a) of the Patent Rules. For more information on abandonment and reinstatement of patent applications, please consult Chapter 9.

3.02.04c Translation of the previously filed application if not in English or French

Date modified: October 2019

If the previously filed application is in a language other than English or French, the applicant must provide a translation into English or French as outlined in subsection 15(2) of the Patent Rules. If the applicant does not submit the translation when they submit the copy of the previously filed application, the Commissioner will send the applicant a notice, pursuant to subsection 15(4) of the Patent Rules, requiring the submission of the translated document within two months of the date of the notice.

If the applicant submits the English or French translation within two months after the date of the notice, the translation will replace the original document. If the applicant does not submit the English or French translation within the prescribed time, the application will be deemed to be abandoned under subsection 73(2) of the Patent Act, as prescribed by subsection 132(a) of the Patent Rules. For more information on abandonment and reinstatement of patent applications, please consult Chapter 9.

3.02.04c Translation of the previously filed application if not in English or French

Date modified: October 2022

If all or part of the previously filed application is in a language other than English or French, the applicant must provide a translation into English or French as outlined in subsection 15(2) of the Patent Rules. If the applicant does not submit the translation when they submit the copy of the previously filed application, the Commissioner will send the applicant a notice, pursuant to subsection 15(4) of the Patent Rules, requiring the submission of the translated document within two months of the date of the notice.

If the applicant submits the English or French translation within two months after the date of the notice, the translation will replace the original document. If the applicant does not submit the English or French translation within the prescribed time, the application will be deemed to be abandoned under subsection 73(2) of the Patent Act, as prescribed by subsection 132(1)(a) of the Patent Rules. For more information on abandonment and reinstatement of patent applications, please consult Chapter 9.

3.02.09 Withdrawal of an application

Date modified: October 2019

An application may be withdrawn at any time. A request for withdrawal must be made in writing from the person authorized to represent the applicant(s) (for more information on representation, see Chapter 5). The application fee referred to in subsection 27(2) of the Patent Act is not refundable. Other fees which have been paid prior to the date of withdrawal may be refunded under paragraph 139(b) of the Patent Rules.

3.02.09 Withdrawal of an application

Date modified: October 2022

An application may be withdrawn at any time. A request for withdrawal must be made in writing from the person authorized to represent the applicant(s) (for more information on representation, see Chapter 5). The application fee referred to in subsection 27(2) of the Patent Act is not refundable. Other fees which have been paid prior to the date of withdrawal may be refunded under paragraph 139(1)(b) of the Patent Rules.

The Office recommends that applicants include all subject matter relevant to the invention permitted under section 91 of the Patent Rules on the presentation date since all future amendments to the specification and drawings of the divisional application will be assessed on the basis of the subject matter submitted at that time.

The Office recommends that applicants include all subject matter relevant to the invention permitted under section 91 or 155.7 of the Patent Rules on the presentation date since all future amendments to the specification and drawings of the divisional application will be assessed on the basis of the subject matter submitted at that time.

After a patent application has received a filing date, or has entered the national phase via the PCT, the Patent Office will review the application to determine if all the required parts have been submitted. If a required part, other than a sequence listing or drawings, has not been submitted, the Commissioner will send a notice under section 65 of the Patent Rules requiring the applicant to comply with the prescribed requirements. The applicant will have three months to respond to the notice in good faith in order to avoid their patent application being deemed to be abandoned under subsection 73(2) of the Patent Act, as prescribed under subsection 132(d) of the Patent Rules.

After a patent application has received a filing date, or has entered the national phase via the PCT, the Patent Office will review the application to determine if all the required parts have been submitted. If a required part, other than a sequence listing or drawings, has not been submitted, the Commissioner will send a notice under section 65 of the Patent Rules requiring the applicant to comply with the prescribed requirements. The applicant will have three months to respond to the notice in good faith in order to avoid their patent application being deemed to be abandoned under subsection 73(2) of the Patent Act, as prescribed under subsection 132(1)(d) of the Patent Rules.

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PCT national phase applications will also be assessed to ensure that translation requirements are met on the national phase entry date. The Commissioner may send a notice under subsection 155.5(6) of the Patent Rules if certain elements or parts of the application are not translated (see section 33.02.05 for more information).

4.02.01 Notice of non-compliance – response to notice

Date modified: October 2019

The Patent Office will review the applicant's response to the notice and assess whether it renders the application compliant. If the application remains non-compliant following the response, a new Commissioner's notice of non-compliance under section 65 of the Patent Rules will be sent to the applicant. The applicant will once again have three months to respond to the notice in good faith in order to avoid their patent application being deemed abandoned under subsection 73(2) of the Patent Act (subsection 132(d) of the Patent Rules).

4.02.01 Notice of non-compliance – response to notice

Date modified: October 2022

The Patent Office will review the applicant's response to a notice sent under section 65 of the Patent Rules and assess whether it renders the application compliant. If the application remains non-compliant following the response, a new Commissioner's notice of non-compliance under section 65 of the Patent Rules will be sent to the applicant. The applicant will once again have three months to respond to the notice in good faith in order to avoid their patent application being deemed abandoned under subsection 73(2) of the Patent Act (subsection 132(1)(d) of the Patent Rules).

The Patent Office will review the applicant's response to a notice sent under subsection 155.5(6) of the Patent Rules. If the applicant does not comply with the notice, the application will be deemed to be abandoned under subsection 132(1)(h) of the Patent Rules (see section 33.02.05).

If the applicant is the inventor, the application must also contain either:

1. a statement to the effect that the applicant is or, if there are joint applicants, the applicants, are entitled to apply for a patent, or
2. a statement to the effect that the applicant is the sole inventor of the subject matter of the invention for which an exclusive privilege or property is claimed or, if there are joint applicants, the applicants are all inventors and the sole inventors of that subject-matter.

Where the applicant is not the inventor, the application must contain a statement to the effect that the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent.

The statements referred to above must be included in the petition or submitted in a document other than the abstract, specification or drawings. For PCT national phase applications, statements submitted under 4.17 of the Regulations under the PCT will be accepted if they were submitted in English or French.

The application must also contain:

1. a statement to the effect that the applicant is or, if there are joint applicants, the applicants are entitled to apply for a patent;
2. a statement to the effect that the applicant is the sole inventor of the subject matter of the invention for which an exclusive privilege or property is claimed or, if there are joint applicants, the applicants are all inventors and the sole inventors of that subject-matter; or
3. if the application is a PCT national phase application, a declaration as to the applicant's entitlement on the filing date to apply for and be granted a patent in accordance with Rule 4.17(ii) of the Regulations under the PCT.

The statements or declaration referred to above must be included in the petition or submitted in a document other than the abstract, specification or drawings. For PCT national phase applications, if all or part of a declaration submitted under 4.17(ii) of the Regulations under the PCT is in a language other than English or French, the applicant must submit an English or French translation to the Commissioner.

"name"

"naming"

Correction of name or identity of applicant

Correction of applicant identity

6.02.01 Adding and removing inventors (patent application)

Date modified: September 2020

When amendments are made, such that the subject-matter of the invention for which an exclusive privilege or property is claimed changes, the inventors listed for the application may also need to be updated. Inventors can be added or removed upon request. Such changes will be processed under section 105 of the Patent Rules so long as the request is received before the day on which the Notice of Allowance is sent. Note that the Office will not evaluate any evidence regarding ownership of the patent or patent application in the case of a disagreement between inventors and/or applicants.

6.02.01 Adding and removing inventors (patent application)

Date modified: October 2022

When amendments are made, such that the subject-matter of the invention for which an exclusive privilege or property is claimed changes, the inventors listed for the application may also need to be updated. Inventors can be added or removed upon request. Such changes will be processed under section 106(b) of the Patent Rules so long as the request is received before the day on which the notice of allowance or conditional notice of allowance is sent. Note that the Office will not evaluate any evidence regarding ownership of the patent or patent application in the case of a disagreement between inventors and/or applicants.

6.03 Correcting applicant names and/or identities

Date modified: October 2019

One of the most common errors in patent applications are the identification and spelling of the name of applicants. For that reason, the Patent Office encourages clients to review all documents prior to submission to ensure that they are error free. The following sections detail how to correct applicant names and identities.

Note that corrections are distinct from the recording of transfers of rights or changes of name. For more information, please see sections 6.05 – 6.07.

If the applicant is also an inventor, a separate request to correct their name or identity as an inventor will need to be submitted. Note that the timelines outlined in the Patent Rules to do so for corrections to applicant identities is shorter than those for inventor identities.

Please note that no fee is required for correcting the applicant name or identity during the application stage.

6.03 Correcting errors in the naming of an applicant

Date modified: October 2022

One of the most common errors in patent applications is the naming of applicants. For that reason, the Patent Office encourages clients to review all documents prior to submission to ensure that they are error free. The following sections detail how to correct errors in the naming of applicants. Errors in the naming of applicants might require a correction of the applicant identity or the name of the applicant.

Note that corrections are distinct from the recording of transfers of rights or changes of name. For more information, please see sections 6.05 – 6.07.

If the applicant is also an inventor, a separate request to correct an error in the naming of the inventor will need to be submitted. Note that the timelines outlined in the Patent Rules to do so for corrections to applicant identities is shorter than those for inventor identities.

Please note that no fee is required for correcting an error in the naming of an applicant during the application stage.

6.03.01 Correction of applicant identity vs correction of applicant name

Date modified: October 2019

Where an applicant is incorrectly identified at the time a patent application is filed or at the time a PCT application enters the national phase, there is a small window during which the identity can be corrected when the error was due to inadvertence or mistake without any intention to mislead. In other words, when the person named as applicant has no rights to the invention, the Patent Rules provide mechanisms to replace the incorrect individual with the correct applicant.

6.03.01 Correction of errors in naming the applicant - identity vs name

Date modified: October 2022

Where the error in naming results in an applicant being incorrectly identified at the time a patent application is filed or at the time a PCT application enters the national phase, there is a small window during which the identity can be corrected when the error was due to inadvertence, accident or mistake without any fraudulent or deceptive intention. In other words, when the person named as applicant has no rights to the invention, the Patent Rules provide mechanisms to replace the incorrect individual with the correct applicant.

N/A

6.03.02c Correction of applicant name (no change in identity)

Date modified: October 2022

An error in the naming of an applicant that does not result in a change of identity can be corrected by request from the applicant so long as it is submitted on or before the payment of the final fee, or if the final fee is refunded, on or before it is paid again. The request must also contain a statement to the effect that the correction does not add or delete the name of an applicant or change the identity of a named applicant (section 105 of the Patent Rules).

6.03.03 Content of request to correct errors in a patent application

Date modified: October 2019

All requests for correction of a patent application must comply with the requirements for submitting written communications to the Commissioner. Every request must include:

• application number,
• name of the applicant(s),
• a clear request for correction of an error of an identity or only the name, and
• any additional information that may be needed, such as the statement outlined in section 104 or subsection 154(6) of the Patent Rules in the case of correction of the identity of an applicant.

(see Section 2.02.01 in Chapter 2 for more information)

6.03.03 Content of request to correct errors in an applicant name and/or identity in a patent application

Date modified: October 2022

All requests for correction to the naming of an applicant in a patent application must comply with the requirements for submitting written communications to the Commissioner. Every request must include:

• application number,
• name of the applicant(s),
• a clear request for correction of an error of an identity or only the name, and
• any additional information that may be needed, such as the statement outlined in section 104, 105 or subsection 154(6) of the Patent Rules.

(see Section 2.02.01 in Chapter 2 for more information)

6.04 Correcting inventor names and/or identities

Date modified: October 2019

One of the most common errors in patent applications is the identification and spelling of the name of inventors. For that reason, the Patent Office encourages clients to review all documents prior to submission to ensure that they are error free. The following sections detail how to correct inventor names and identities.

A correction of inventor identity is when the wrong person was identified in the application. For example, the wrong person, Bob, was named as inventor, when it should have been John.

A correction of name is meant to correct errors that do not change the identity such as incorrect spellings. For example, Bob was named as the inventor. Bob is a nickname and he should have been identified as Robert.

The Office is generally not in a position to be able to determine whether a correction of an inventor name corrects the identity or only the name of that person. Therefore, persons submitting requesting a correction request to the Office should clearly note the type of correction (identity or name only) and it will generally be treated accordingly.

If the inventor is also an applicant, a separate request to correct their name or identity as an applicant will need to be submitted. Note that the timelines outlined in the Patent Rules to do so for corrections to applicant identities is shorter than those for inventor identities.

Note that corrections are distinct from changes of name. For more information, please see Section 6.07 of this Chapter.

Please note that no fee is required for correcting the inventor name or identity during the application stage.

6.04 Correcting errors in the naming of an inventor – identity vs name

Date modified: October 2022

One of the most common errors in patent applications is the naming of inventors. For that reason, the Patent Office encourages clients to review all documents prior to submission to ensure that they are error free. The following sections detail how to correct errors in the naming of inventors. Errors in the naming of inventors might require a correction of the inventor identity or the name of the inventor.

A correction of inventor identity is when the wrong person was identified in the application. For example, the wrong person, Bob, was named as inventor, when it should have been John.

A correction of name is meant to correct errors that do not change the identity such as incorrect spellings. For example, Bob was named as the inventor. Bob is a nickname and he should have been identified as Robert.

The Office is generally not in a position to be able to determine whether a correction of an inventor name corrects the identity or only the name of that person. Therefore, persons submitting requesting a correction request to the Office should clearly note the type of correction (identity or name only) and it will generally be treated accordingly.

If the inventor is also an applicant, a separate request to correct an error in the naming of the applicant will need to be submitted. Note that the timelines outlined in the Patent Rules to do so for corrections to applicant identities is shorter than those for inventor identities.

Note that corrections are distinct from changes of name. For more information, please see Section 6.07 of this Chapter.

Please note that no fee is required for correcting an error in the naming of an inventor during the application stage.

6.04.01 Correction of inventor identity

Date modified: October 2019

An incorrectly identified inventor for a patent application can be corrected by request from the applicant if it is submitted before a notice of allowance is sent (section 105 of the Patent Rules).

6.04.01 Correction of inventor identity

Date modified: October 2022

An incorrectly identified inventor for a patent application can be corrected by request from the applicant if it is submitted before a notice of allowance or conditional notice of allowance is sent (section 105 of the Patent Rules).

6.04.02 Correction of inventor name (no change in identity)

Date modified: September 2020

An error in the name of an inventor in a patent application that does not result in a change of identity can be corrected by request from the applicant so long as it is submitted on or before the payment of the final fee, or if the final fee is refunded, on or before it is paid again (section 106 of the Patent Rules).

1.01.01 Correction of inventor name (no change in identity)

Date modified: October 2022

An error in the naming of an inventor in a patent application that does not result in a change of identity can be corrected by request from the applicant so long as it is submitted on or before the payment of the final fee, or if the final fee is refunded, on or before it is paid again. The request must also contain a statement to the effect that the correction does not add or delete the name of an inventor or change the identity of a named inventor (section 106 of the Patent Rules).

6.04.03 Content of request to correct inventor name and/or identity in a patent application

Date modified: October 2019

All requests for corrections of a patent application must comply with the requirements for submitting written communications to the Commissioner. Every request must include:

• application number,
• name of the applicant(s), and
• a clear request for correction of an error of an identity or only the name.

(see Section 2.02.01 of Chapter 2 for more information)

6.04.03 Content of request to correct inventor name and/or identity in a patent application

Date modified: October 2022

All requests for corrections to the naming of an inventor in a patent application must comply with the requirements for submitting written communications to the Commissioner. Every request must include:

• application number,
• name of the applicant(s),
• a clear request for correction of an error of an identity or only the name, and
• any additional information that may be required, such as the statement outlined in paragraph 106(a), in the case of a correction that does not change the identity of the inventor.

(see Section 2.02.01 of Chapter 2 for more information)

It is the responsibility of the applicant to meet all obligations under the Patent Act and Patent Rules that are necessary to avoid the abandonment of a patent application.

It is the responsibility of the applicant to meet all obligations under the Patent Act and Patent Rules that are necessary to avoid the abandonment of a patent application.

If the application is abandoned after examination has started, examination will be suspended until the application is reinstated.

9.02.02 Deemed abandonment of patent applications under subsection 73(2) of the Patent Act

Date modified: September 2020

An application for patent will also be deemed to be abandoned under subsection 73(2) of the Patent Act in any other circumstance provided for in section 132 of the Patent Rules. Under Section 132, the application will be deemed to be abandoned if:

1. the applicant does not comply with notice sent under subsection 15(4) of the Patent Rules to provide a translation within two months of the date of the notice;
2. the notice sent under section 31 of the Patent Rules to appoint a patent agent is not complied with within three months of the date of the notice;
3. the applicant does not respond in good faith to a request of the Commissioner for further drawings under 27(5.2) of the Patent Act within three months of the date of the request;
4. the applicant does not respond in good faith to a notice sent under section 65 of the Patent Rules requiring the applicant to modify the application in order to meet the requirements within the time limit specified in the notice; and,
5. the applicant does not pay the final fee (see CIPO's webpage on Patent Fees) within four months of the date of the notice requiring the payment of the final fee.

9.02.02 Deemed abandonment of patent applications under subsection 73(2) of the Patent Act

Date modified: October 2022

An application for patent will also be deemed to be abandoned under subsection 73(2) of the Patent Act in any other circumstance provided for in subsection 132(1) of the Patent Rules. Under subsection 132(1), the application will be deemed to be abandoned if:

1. the applicant does not comply with a notice sent under subsection 15(4) of the Patent Rules to provide a translation within two months of the date of the notice;
2. the notice sent under section 31 of the Patent Rules to appoint a patent agent is not complied with within three months of the date of the notice;
3. the applicant does not respond in good faith to a request of the Commissioner for further drawings under 27(5.2) of the Patent Act within three months of the date of the request;
4. the applicant does not respond in good faith to a notice sent under section 65 of the Patent Rules requiring the applicant to modify the application in order to meet the requirements within the time limit specified in the notice; and,

1. the applicant does not make a request for continued examination of an application for a patent and pay the prescribed fee in accordance with subsection 85.1(3);
2. a notice of allowance is sent under subsection 86(1), (6), (10) or (12) and the applicant does not pay the final fee (see CIPO's webpage on Patent Fees) within the time referred to in the applicable subsection;
3. the applicant does not reply in good faith to a conditional notice of allowance of the Commissioner sent under subsection 86(1.1) and pay the final fee (see CIPO's webpage on Patent Fees) within the time referred to in that subsection; and the applicant does not comply with a notice of the Commissioner referred to in subsection 155.5(6) within the time referred to in that subsection.

Note: previous subsections 9.03.01, 9.03.02 and 9.03.03 renumbered as 9.03.02, 9.03.03 and 9.03.04, respectively

9.03.01 Reinstatement fee - applications abandoned for failure to respond to examiner's requisition and for failure to request continued examination

Date modified: October 2022

If an application is abandoned because the applicant failed to respond to an examiner's requisition made by the examiner under subsection 86(2) or (5) of the Patent Rules and because they failed to request continued examination under subsection 85.1(3) of the Patent Rules, the applicant does not need to pay two fees to request reinstatement as long as both failures are mentioned in the reinstatement request.

9.04.01 Transitional Provisions

Date modified: October 2019

An applicant requesting reinstatement of an application following a failure to pay a maintenance fee or a failure to request examination that occurred prior to the coming into force of the amended Patent Act and the Patent Rules (SOR/2019-251) on October 30, 2019 is not subject to the due care standard. Section 73 of the Patent Act, as it read immediately before the coming into force of the amended Patent Act and the Patent Rules (SOR/2019-251) on October 30, 2019, applies with respect to such requests for reinstatement.

9.04.01 Transitional Provisions

Date modified: October 2022

An applicant requesting reinstatement of an application following a failure to pay a maintenance fee or a failure to request examination that occurred prior to October 30, 2019 is not subject to the due care standard. Section 73 of the Patent Act, as it read immediately before October 30, 2019, applies with respect to such requests for reinstatement.

9.04.09 Office procedure – service standard

Date modified: October 2019

Unless the applicant is informed that the Commissioner intends to determine that due care required by the circumstances was not taken, applicants can expect a response to a request for reinstatement, including the Commissioner's determination with respect to the due care standard, within two months of receipt of the request in the Office, or two months from receipt of the last correspondence relating to the request.

9.04.09 Office procedure – service standard

Date modified: October 2022

Unless the applicant is informed that the Commissioner intends to determine that due care required by the circumstances was not taken, applicants can expect a response to a request for reinstatement, including the Commissioner's determination with respect to the due care standard, within six months of receipt of the request in the Office, or six months from receipt of the last correspondence relating to the request.

10.01 Tariff of fees

Date modified: June 2021

Fees with respect to patent applications, patents and other services related to them can be consulted on CIPO's webpage on Patent Fees, which includes categories on domestic applications, international applications, and patents.

10.01 Tariff of fees

Date modified: October 2022

Fees with respect to patent applications, patents and other services related to them can be consulted on CIPO's webpage on Patent Fees, which includes categories on domestic applications, international applications, and patents. The Tariff of Fees set out in Schedule 2 of the Patent Rules does not reflect current fee amounts for all fees. The Patent Fees web page should be considered the official source of patent fee information.

Information relating to the extensions of time for fee payments can be found in sections 2.03.03g and 2.03.03h.

Additionally, the name of the applicant or patentee and, if applicable, the name of the patent agent or registered foreign practitioner signing the declaration must be indicated. The following small entity declaration tool is available and applicants / patentees are encouraged to use the standard form.

A fee may only be paid at the small entity rate in respect of an application or a patent if a signed small entity declaration is submitted by the deadline applicable for that fee. If a standard fee payment was made prior to the compliant small entity declaration and also before the deadline applicable for that fee, a refund, upon written request, for the difference between the standard and small fee amounts can be made.

Additionally, the name of the applicant or patentee and, if applicable, the name of the patent agent or registered foreign practitioner signing the declaration must be indicated. The following small entity declaration tool is available to applicants and patentees.

A fee may only be paid at the small entity rate in respect of an application or a patent if a signed small entity declaration is submitted by the deadline applicable for that fee. If a standard fee payment was made prior to the compliant small entity declaration and also before the deadline applicable for that fee, the applicable fee is the prescribed standard fee. If a small entity declaration is submitted after a standard fee is paid, but before the fee-payment deadline, the standard fee payment will not be considered an overpayment and a refund of the difference between the standard and small fee amounts will not be provided for that particular payment.

10.04 Refunds

Date modified: June 2021

The Commissioner will issue refunds following a written request by the client if permitted by subsection 139(1), of the Patent Rules. The refundable fee types or refund conditions are as follows:

1. Any fee, other than the Application Fee, paid at filing for a regular national application that was then withdrawn not later than 14 days after the earliest date of any document received by the Commissioner.
2. Any fee, other than the fees of International Applications (including the transmittal fee, the search fee, a fee for additional search, the preliminary examination fee, a fee for additional examination, and the basic national fee) as seen on CIPO's webpage on Patent Fees, paid at entry into national phase for a PCT national phase application that was then withdrawn not later than 14 days after the national phase entry date.
3. A fee paid for the registration of a document where said document was not submitted
4. A fee paid for advertising on the website in respect of section 65 of the Patent Act under Abuse of Rights where the application was not advertised
5. A fee paid for the request of a copy of a document where the request was withdrawn before the copy was made
6. A fee paid for the request of a copy of a document where the Office did not possess that document
7. Any overpayment of fee, including any payment in excess of a fee already paid in full and any payment of a fee where payment is not or no longer prescribed by the Patent Act and Rules
8. Any fee waived by the Commissioner (see Section 10.05 in this Chapter).

In accordance with subsection 139(2) of the Patent Rules, the Commissioner does not issue refunds under any circumstances for a request received later than three years after the day on which the fee was paid.

10.04 Refunds

Date modified: October 2022

The Commissioner will issue refunds following a written request by the client if permitted by subsection 139(1), of the Patent Rules. The refundable fee types or refund conditions are as follows:

1. Any fee, other than the Application Fee, paid at filing for a regular national application that was then withdrawn not later than 14 days after the earliest date of any document received by the Commissioner
2. Any fee, other than the fees of International Applications (including the transmittal fee, the search fee, a fee for additional search, the preliminary examination fee, a fee for additional examination, and the basic national fee) as seen on CIPO's webpage on Patent Fees, paid at entry into national phase for a PCT national phase application that was then withdrawn not later than 14 days after the national phase entry date
3. A fee paid for the registration of a document where said document was not submitted
4. A fee paid for advertising on the website in respect of section 65 of the Patent Act under Abuse of Rights where the application was not advertised
5. A fee paid for the request of a copy of a document where the request was withdrawn before the copy was made
6. A fee paid for the request of a copy of a document where the Office did not possess that document
7. Any overpayment of fee, including any payment in excess of a fee already paid in full and any payment of a fee where payment is not or no longer prescribed by the Patent Act and Rules
8. Any fee paid, if the payment of the fee is waived by the Commissioner
9. A fee paid for the continued examination of an application, if the withdrawal of an examiner's report by the examiner cancels the requirement to request continued examination
10. Any fee that is to be refunded under the Patent Rules.

In accordance with subsection 139(2) of the Patent Rules, the Commissioner does not issue refunds under paragraphs 139(1)(a) to (h) if the request for a refund is received later than three years after the day on which the fee was paid.

Note: some text moved to new 10.05.01

10.05 Waiver of fees

Date modified: September 2020

The Commissioner may waive payment of the fees for the request of a correction under subsection 109(1) of the Patent Rules or to submit a request to reissue a patent under section 47 of the Patent Act. The correction or reissue request must be the result of an error by the Commissioner and the Commissioner must be satisfied that the circumstances justify the waiver.

The Office encourages patentees to make the request for the waiver of the fee with their request for a correction or reissue as well as provide a justification explaining how the error resulted from the Commissioner. The Office will review the request for a waiver and the justification. If the fee has been provided and the Commissioner agrees to waive the fee, it will be automatically refunded without request. If the fee has not been provided and the Commissioner does not agree to waive the fee, then the fee will be requested before the Office proceeds any further with the request for a correction or a reissue.

10.05 Waiver of fees

Date modified: October 2022

The Commissioner may waive payment of the fees for the request of a correction under subsection 109(1) of the Patent Rules, to submit a request to reissue a patent under section 47 of the Patent Act, or to apply for an extension of time when there is a delay in receipt of an examiner's report (see section 2.03.03(e)(ii)).

Note: based on text formerly found in section 10.05

The correction or reissue request must be the result of an error by the Commissioner and the Commissioner must be satisfied that the circumstances justify the waiver.

The Office encourages patentees to make the request for the waiver of the fee with their request for a correction or reissue as well as provide a justification explaining how the error resulted from the Commissioner. The Office will review the request for a waiver and the justification. If the fee has been provided and the Commissioner agrees to waive the fee, it will be automatically refunded without request. If the fee has not been provided and the Commissioner does not agree to waive the fee, then the fee will be requested before the Office proceeds any further with the request for a correction or a reissue.

10.05.01 Waiver of fees – correction or reissue request

Date modified: October 2022

In order to waive the fee for requesting a correction or to submit a request for reissue of a patent, the correction or reissue request must be the result of an error by the Commissioner and the Commissioner must be satisfied that the circumstances justify the waiver.

The Office encourages patentees to make the request for the waiver of the fee with their request for a correction or reissue as well as provide a justification explaining how the error resulted from the Commissioner. The Office will review the request for a waiver and the justification. If the fee has been provided and the Commissioner agrees to waive the fee, it will be automatically refunded without request. If the fee has not been provided and the Commissioner does not agree to waive the fee, then the fee will be requested before the Office proceeds any further with the request for a correction or a reissue.

N/A

10.05.02 Waiver of fees – Extension of Time - Delayed Receipt of Examiner's Report

Date modified: October 2022

In order to waive the fee for requesting an extension of time in the case of delayed receipt of an examiner's report, the Commissioner must be satisfied that the circumstances justify the waiver.

In general, the fee will be waived if the following requirements are met:

• the examiner's report was received by the applicant more than one month after the day on which it was sent,
• the applicant applies for the extension within 14 days after the date of receipt of the examiner's requisition, and
• the applicant provides evidence satisfactory to the Commissioner of the date of receipt.

Under these circumstances, the Commissioner may extend the period of time to reply to the examiner's requisition to a maximum of 6 month from the date of receipt of the examiner's requisition or (see section 2.03.03e(ii)).

If the above requirements to waive the fee are met but the applicant does not provide any justification for an extension of time, the Commissioner will extend the time to reply to the examiner's requisition to 4 months from the date of receipt of the examiner's requisition.

If the applicant requests an extension of time beyond 4 months from the date of receipt, the applicant must provide justification for the extension and pay the fee for requesting an extension of time as set out in section 2.03.03e. The fee will not be waived.

The Office encourages applicants to make the request for the waiver of the fee with their request for an extension of time. The Office will review the request for a waiver. If the fee has been provided and the Commissioner agrees to waive the fee, it will be automatically refunded without request. If the fee has not been provided and the Commissioner does not agree to waive the fee, then the fee will be requested before the Office proceeds with the review of the request for an extension of time.

With the advent of the Service Fee Act, given Royal Assent on June 22, 2017, we aim to meet CIPO's service standards targets 100% of the time.

Consult CIPO's web site for information on client service standards here.

With the advent of the Service Fee Act, given Royal Assent on June 22, 2017, we aim to meet CIPO's service standard targets 100% of the time.

Consult CIPO's web site for information on client service standards here. For more information about remissions under the Service Fees Act, see CIPO's web page on Remissions at CIPO.

In accordance with subsection 35(1) of the Patent Act, a request for examination may be made by any person*, as long as it is in the manner specified in section 79 of the Patent Rules and accompanied by the necessary fee prescribed in subsection 80(1) of the Patent Rules. This fee may be reduced if the application has been the subject of an International Search by the Commissioner, under PCT processes. The Commissioner of Patents also has the authority under subsection 35(2) of the Patent Act to require an applicant to make a request for examination of an application.

In accordance with subsection 35(1) of the Patent Act, a request for examination may be made by any person*, as long as it is in the manner specified in section 79 of the Patent Rules and accompanied by the necessary fee prescribed in subsection 80(1) of the Patent Rules (see CIPO's webpage on Patent Fees). The prescribed fee for requesting examination is composed of the basic fee and a fee for each claim in excess of 20 included in the application (see section 11.01.01). There are reduced fee amounts for the basic fee if the application has been the subject of an International Search by the Commissioner, under the PCT. The Commissioner of Patents also has the authority under subsection 35(2) of the Patent Act to require an applicant to make a request for examination of an application.

Note: previous subsections 11.01.01 and 11.01.02 renumbered as 11.01.02 and 11.01.03

11.01.01 Excess Claim Fee

Date modified: October 2022

The prescribed fee for requesting examination is composed of the basic fee and a fee for each claim in excess of 20 included in the application (see CIPO's webpage on Patent Fees). When a request for examination is made the applicant will be responsible for counting the number of claims in the application and paying the appropriate fee. If more than 20 claims are included, the person requesting examination must pay the excess claim fee for each claim in excess of 20 in order for the Office to consider the request for examination to be successfully made. The Office will verify that the correct amount has been paid by counting the number of claims contained in the application on the date that the request for examination is made.

A claim that defines the subject-matter of an invention in the alternative, including a dependent claim within the meaning of section 63 of the Patent Rules that refers to more than one preceding claim, counts as a single claim for the purposes of determining the number of claims.

If the applicant did not pay the proper fee, including the excess claim fee, the request for examination is not successfully made. The applicant can pay additional monies so the proper fee is paid or can amend the application after requesting examination to reduce the number of claims such that the amount that was paid is greater than or equal to the amount due. The fee for requesting examination will be considered paid on the day the additional monies are paid or the amendment is made, as the case may be.

If the number of excess claims is increased after requesting examination and the patent application is in condition for allowance, the applicant will be required to pay for the increase in excess claims as part of the final fee. The excess claim fee amount due as part of the final fee will be assessed based on the maximum number of claims in the application at any time after the request for examination is made until the day the final fee is paid (see sections 25.01 and 25.01.01).

Note: this text was formerly found in subsection 11.01.02

If a request for examination is not received within the prescribed time limit a late fee of $150 will be required in addition to the examination fee (s35(3)(a) of the Patent Act, and section 82 of the Patent Rules) irrespective of any mailing of a Commissioner's Notice. The Commissioner's Notice under paragraph 35(3)(b) of the Patent Act will be sent to the applicant shortly after the due date. The notice will require the applicant to make the request and pay the request for examination fee and the late fee before the end of two months after the date of the notice.

Note: revised text based on text from former subsection 11.01.02

If a request for examination is not received within the prescribed time limit a late fee of $150 will be required in addition to the examination fee (s35(3)(a) of the Patent Act, and section 82 of the Patent Rules) irrespective of any mailing of a Commissioner's Notice. The Commissioner's Notice under paragraph 35(3)(b) of the Patent Act will be sent to the applicant shortly after the due date. The notice will require the applicant to make the request and pay the request for examination fee, including the excess claim fee owing (see section 11.01.01) and the late fee before the end of two months after the date of the notice.

11.02 Examination timelines

Date modified: September 2020

Once formalities processing is completed and a request for examination is made under section 35 of the Patent Act, the patent application is referred to the appropriate patent examiner and is examined in due course. For examination timelines see CIPO's Service Standards here.

The purpose of examination is, at each stage, to perform a thorough analysis of the patent application to determine whether it complies with the requirements of the Patent Act and the Patent Rules. After receiving a request for examination, an examiner will analyse the application taking into consideration the originally filed application and any amendments that have been subsequently received in the Patent Office.

After having performed this analysis, the examiner will either allow the application in accordance with subsection 86(1) of the Patent Rules or issue a requisition detailing the application's defects in accordance with subsection 86(2) of the Patent Rules. Where a requisition is issued, the applicant has four months from the date of the requisition to respond. It is possible to request an extension of time to the prescribed time to respond to the examiner's requisition up to six months after the date of the requisition under subsection 3(1) and section 132 of the Patent Rules. Please see Chapter 2 for more information on extensions of time.

11.02 Examination timelines

Date modified: October 2022

Once formalities processing is completed and a request for examination is made under section 35 of the Patent Act, the patent application is referred to the appropriate patent examiner and is examined in due course. For examination timelines see CIPO's Service Standards here.

Note: previous section 11.04 renumbered as 11.05

11.04 Examination Process

Date modified: October 2022

The purpose of examination is, at each stage, to perform a thorough analysis of the patent application to determine whether it complies with the requirements of the Patent Act and the Patent Rules. After a request for examination is made, an examiner will analyse the application taking into consideration the originally filed application and any amendments that have been subsequently received in the Patent Office.

11.04.01 Initial Examination

Date modified: October 2022

In the initial stage of examination, after examining the application for defects with respect to the Patent Act and Patent Rules, the examiner will:

• approve the application for allowance, generally resulting in the issuance of a Notice of Allowance (see 25.01);
• issue a conditional notice of allowance detailing the minor defects in the application that are preventing approving the application for allowance (see 25.01.01); or
• issue an "examiner's report" detailing the application's defects (see 12.04); or
• conduct an examiner-initiated interview to detail the application's defects to provide an opportunity for the applicant to amend the application prior to the issuance of an examiner's report (see 12.06.02).

Where an examiner's report is issued, the applicant has four months from the date of the report to respond with arguments and/or amendments that cause the application to comply with the Patent Act and Patent Rules. See sections 11.05.03 and 11.05.04 for more information on submitting an amendment in response to an examiner's report.

It is possible to request an extension of time to the prescribed time to respond to the examiner's requisition up to six months after the date of the requisition under subsection 3(1) and section 131 of the Patent Rules. Please see section 2.03.03 for more information on extensions of time.

11.04.02 Later Examination

Date modified: October 2022

After the applicant responds to an examiner's report, the examiner will take into account any arguments and amendments and assess whether the application complies with the Patent Act and Patent Rules. Similar to the initial stage of examination, this may result in the examiner issuing: a notice of allowance; a conditional notice of allowance; an examiner's report; or an interview (see 11.04.01). However, unlike in the initial stage of examination, the examiner in later stages of examination may reject the application in a specific type of examiner's report called a Final Action. For more information on the rejection of an application and Final Action reports, see Chapter 26.

Subject to the issuance of a notice of allowance or a conditional notice of allowance is issued, after a request for examination is made, the examiner will send a maximum of three examiner's reports detailing defects in the application²⁶. In order for examination to continue after the third report is sent, or after a notice of allowance or a conditional notice of allowance is issued, a request for continued examination will be required (see section 11.04.02a).

11.04.02a Requesting Continued Examination after initial request for examination

Date modified: October 2022

If, after the initial request for examination is made, the examiner has issued three examiner's reports detailing the application's defects, the applicant will be required under subsection 85.1(1) of the Patent Rules to request continued examination in order for examination to continue after the third report is sent.²⁷

If, following the notification of the need to request continued examination, the request for continued examination is not made on time, the application will be deemed abandoned under paragraph 132(1)(e) of the Patent Rules.

In the course of examination, if a notice of allowance or a conditional notice of allowance is issued before three examiner's reports detailing the application's defects are sent, the applicant will be required to request continued examination under subsection 85.1(4) of the Patent Rules in order for examination to continue after the notice of allowance or a conditional notice of allowance is issued.

Examiner's reports that have been withdrawn do not count towards the number of reports sent for the purpose of requesting continued examination (see 12.04.03 for more information on withdrawal of an examiner's report).

11.04.02b Requesting Continued Examination – Subsequent Requests

Date modified: October 2022

If a compliant request for continued examination is made, the examiner may send up to a maximum of two more reports. In order for examination to continue after the second report is sent after a request for continued examination is made, a subsequent request for continued examination under subsection 85.1(2) of the Patent Rules will be required.²⁸

The examiner will notify the applicant in the second report they must request continued examination and pay the prescribed fee not later than four months after the date the notice is sent. The applicant will be required to request continued examination under subsection 85.1(2) of the Patent Rules in order for examination to continue after they have been notified.²⁹

If, following the notification of the need to request continued examination, the request for examination is not made on time, the application will be deemed abandoned under paragraph 132(1)(e) of the Patent Rules.

11.04.02c Requesting Continued Examination to set aside a notice of allowance or conditional notice of allowance

Date modified: October 2022

An applicant can also request continued examination under subsection 85.1(4) of the Patent Rules after a notice of allowance or a conditional notice of allowance is sent. A compliant request will set aside the notice of allowance or conditional notice of allowance. The applicant must make the request and pay the prescribed fee (see CIPO's webpage on Patent Fees) no later than four months after it was sent and before the day on which the final fee is paid. If a compliant request for continued examination is made, the examiner may send up to a maximum of two more reports (see section 11.04.02b). After a compliant request for continued examination is made, 85.1(1) of the Patent Rules does not apply and a notice requiring a request for continued examination will be sent by the examiner only under 85.1(2) of the Patent Rules, i.e. if two examiner's reports have been sent since the most recent request for continued examination was made.

It is important to note that applicants may not request continued examination to set aside the notice of allowance or conditional notice of allowance under subsection 85.4(1) of the Patent Rules when the application has been deemed abandoned for failure to pay the final fee under subsection 73(2) of the Patent Act and paragraph 132(1)(f) or 132(1)(g) of the Patent Rules.

In accordance with subsection 100(3) of the Patent Rules, if a conditional notice of allowance is set aside, any amendments made to the application from the day the conditional notice of allowance is sent until the day on which the conditional notice allowance is set aside are considered never to have been made.

Note: this text was formerly found in section 11.04

Once a filing date has been established, the applicant can amend the content of their application, the specification (which consists of the description and the claims) and the drawings before the patent is issued (subsection 38.2(1) of the Patent Act). Beyond the issuing of the Notice of Allowance, no amendments are permitted, other than what can be narrowly defined as an obvious error under section 100 of the Patent Rules. The amendment is made to the application on the day it is submitted.

Applicants can submit an amendment voluntarily or in response to an examiner's report. The Office will process any request by the applicant to amend a patent application. However, those amendments must also abide the overarching restriction defined in subsection 38.2 (2) of the Patent Act, wherein any such amendment must not add new matter that cannot reasonably be inferred from that which was contained in the application at filing. The request must be made in writing and comply with the requirements outlined in the Patent Rules. Please see section 2.02 for information on requirements for submitting written communications to the Office and Chapter 5 for information on who can represent applicants with respect to prosecution of patent applications.

Note: revised text based on text from former section 11.04

Once a filing date has been established, the applicant can amend the content of their application, the specification (which consists of the description and the claims) and the drawings before the patent is issued (subsection 38.2(1) of the Patent Act). Once a notice of allowance or a conditional notice of allowance is issued, no amendments are permitted, other than what can be narrowly defined as an obvious error under section 100 of the Patent Rules, unless the amendments are those referred to in a conditional notice of allowance or the notice of allowance or conditional notice of allowance are withdrawn or set aside. The amendment is made to the application on the day it is submitted.

Applicants can submit an amendment voluntarily or in response to a requisition or a conditional notice of allowance. The Office will process any request by the applicant to amend a patent application. However, those amendments must also abide the overarching restriction defined in subsection 38.2(2) of the Patent Act, wherein any such amendment must not add new matter that cannot reasonably be inferred from that which was contained in the application at filing (see Chapter 20 for more information on new matter). Amendments causing changes to the number of claims may have an effect on the excess claim fees required when requesting examination or paying the final fee (see section 25.01 and 25.01.01).

The request must be made in writing and comply with the requirements outlined in the Patent Rules. Please see section 2.02 for information on requirements for submitting written communications to the Office and Chapter 5 for information on who can represent applicants with respect to prosecution of patent applications.

11.04.01 Voluntary amendments

Date modified: September 2020

A voluntary amendment may be made to a patent application at any time during the prosecution and before the issuing of the Notice of Allowance; however they will not be entered nor examined until a request for examination has been received. In other words, the document will be visible in the 'Documents' tab on the Canadian Patents Database when it is received by the Office, but the amendment will not be visible in the 'Claims', 'Description' and/or 'Representative Drawing' tab until a request for examination is received.

A voluntary amendment will be considered to be publicly disclosed on the later of the date the application is laid open to public inspection or on the date the amendment is placed on file. Note that this could have implications for the patentability of any new subject-matter disclosed in the amendments. Please see Chapter 20 for more information.

11.05.01 Voluntary amendments

Date modified: October 2022

A voluntary amendment may be made to a patent application at any time during the prosecution and before the issuing of the notice of allowance or a conditional notice of allowance; however they will not be entered nor examined until a request for examination has been received. In other words, the document will be visible in the 'Documents' tab on the Canadian Patents Database when it is received by the Office, but the amendment will not be visible in the 'Claims', 'Description' and/or 'Representative Drawing' tab until a request for examination is received.

A voluntary amendment will be considered to be publicly disclosed on the later of the date the application is laid open to public inspection or on the date the amendment is placed on file. Note that this could have implications for the patentability of any new matter disclosed in the amendments, particularly if there is desire to file a new patent application based on the disclosed new matter. Please see sections 18.01.01a, 18.02.01a, 18.04 and Chapter 20 for more information.

11.04.02 Amendments to PCT applications

Date modified: September 2020

Amendments made to Patent Cooperation Treaty (PCT) applications during the international phase under Article 19 and 34 made before the national phase entry date in Canada become part of the national phase application at the time of national entry. Whether those amendments under Articles 19 and 34 were submitted by the applicant or otherwise made available from WIPO's Patentscope database, the specification and drawings on file as of national entry will incorporate those pages, replacing each page altered by that amendment. Otherwise, any amendments made during the international phase after the national phase entry date in Canada will not be included in the PCT national phase application as amendments under PCT articles. However, after the national phase entry date, the applicant may submit any amendment voluntarily, subject to the same amendments requirements as a regularly filed patent application in Canada.

11.05.02 Amendments to PCT applications

Date modified: October 2022

Amendments made to Patent Cooperation Treaty (PCT) applications during the international phase under Article 19 and 34 made before the national phase entry date in Canada become part of the national phase application at the time of national entry. Whether those amendments under Articles 19 and 34 were submitted by the applicant or otherwise made available from WIPO's Patentscope database, the specification and drawings on file as of national entry will incorporate those pages, replacing each page altered by that amendment. Otherwise, any amendments made during the international phase after the national phase entry date in Canada will not be included in the PCT national phase application as amendments under PCT articles. However, after the national phase entry date, the applicant may submit any amendment voluntarily, subject to the new matter requirements described in Chapter 20.

11.04.03 Amendments in response to an examiner's requisition

Date modified: October 2019

During their review of a patent application for compliance with the Patent Act and the Patent Rules, examiners will identify defects and communicate these to applicants in a report otherwise known as an examiner's requisition under section 86 of the Patent Rules.

When an amendment is submitted in response to an examiner's requisition identifying defects in the application, a written statement (see Section 11.04.04a of this Chapter) must explain the manner in which the amendment overcomes the defects.

11.05.03 Amendments in response to an examiner's report or notice

Date modified: October 2022

During the course of examination, the examiner may identify defects in the specification or drawings of an application, and communicate these defects to the applicant with an examiner's report (see 11.04.01, 11.04.02 and 12.04), or in a notice, such as a conditional notice of allowance (see 25.01.01) or a notice requiring additional drawings (see 12.05.01).

When an amendment to the specification or drawings is submitted in response to an examiner's report or notice, a written statement (see section 11.05.05a) must explain the manner in which the amendment overcomes the defects.

Note: previous subsections 11.04.04, 11.04.04a, 11.04.04b and 11.04.05 renumbered as 11.05.05, 11.05.05a, 11.05.05b, and 11.05.06

11.05.04 Corrections to translations

Date modified: October 2022

The applicant may submit a correction to the translated specification or drawings of a PCT national phase application. It may be necessary to correct a translation, rather than submit an amendment where issues of new matter could arise (see Chapter 20).

Note: this text was formerly found in subsection 11.04.04a

Under the rules for written communications, an amendment will be deemed to be received on the date that the Office receives the physical or electronic delivery of the correspondence. However, during the course of the substantive examination if the examiner cannot determine what is intended to be changed in a proposed amendment after considering the covering page including the statement and instructions, then the replacement pages may be removed from the specification and/or drawings as the amendment does not comply with section 102 of the Patent Rules. In such cases, where the amendment is submitted in response to an examiner's requisition, the submission will be considered a response to the requisition, despite the removal of the replacement pages from the specification and/or drawings. This may cause the prosecution of the patent application to be needlessly prolonged. The issue of a non-compliant statement or instructions may be addressed in a subsequent examiner's requisition or interview.

Note: revised text based on text from former subsection 11.04.04a

Under the rules for written communications, an amendment will be deemed to be received on the date that the Office receives the physical or electronic delivery of the correspondence. However, during the course of the substantive examination if the examiner cannot determine what is intended to be changed in a proposed amendment after considering the covering page including the statement and instructions, then the replacement pages may be removed from the specification and/or drawings as the amendment does not comply with section 102 of the Patent Rules. In such cases, where the amendment is submitted in response to an examiner's report or notice (see 11.05.03), the submission will be considered a response to the requisitions or requirements contained within the report or notice, despite the removal of the replacement pages from the specification and/or drawings. This may cause the prosecution of the patent application to be needlessly prolonged. The issue of a non-compliant statement or instructions may be addressed in a subsequent examiner's report or interview.

11.04.04b Cover letter for amendments

Date modified: October 2019

The cover letter should follow the following format and order:

• a header noting the type of amendment, in uppercase characters:
  • Voluntary amendment
  • Voluntary amendment following pct national phase entry
  • Amendment / response to examiner's requisition
  • Amendment after allowance – obvious error
• Statement explaining the purpose of the amendment
• Instructions for entering the amendment

11.05.05b Cover letter for amendments

Date modified: October 2022

The cover letter should follow the following format and order:

• a header noting the type of amendment, in uppercase characters:
  • Voluntary amendment
  • Voluntary amendment following pct national phase entry
  • Amendment / response to examiner's requisition
  • Amendment / response to conditional notice of allowance
  • Amendment after allowance – obvious error
  • Amendment after conditional notice of allowance – obvious error
• Statement explaining the purpose of the amendment
• Instructions for entering the amendment

12.01 Examination

Date modified: April 2018

The purpose of examination is, at each stage, to perform a thorough analysis of the patent application to determine whether it complies with the requirements of the Patent Act and Patent Rules. After receiving a request for examination an examiner will analyse the application taking into consideration the originally filed application and any amendments that have been received in the Patent Office.

After having performed this analysis, the examiner will either allow the application in accordance with subsection 86(1) of the Patent Rules or issue a report detailing the application's defects in accordance with subsection 86(2) of the Patent Rules. Where a report is to be issued, it should be as comprehensive as possible, to enable the applicant to make informed decisions regarding the continued prosecution of their application and, if possible, to place the application in a condition for allowance [see Chapter 25]. In some cases, the examiner may initiate a telephone interview, in lieu of issuing a report, where such an interview may advance the prosecution expeditiously.

Note that an application for which examination has been requested may be examined prior to being laid open to public inspection under section 10 of the Patent Act, but an examiner will not approve an application for allowance until it has been laid open.

12.01 Examination

Date modified: October 2022

As introduced in Chapter 11, the purpose of examination is, at each stage, to perform a thorough analysis of the patent application to determine whether it complies with the requirements of the Patent Act and Patent Rules. As part of this thorough analysis, the examiner performs a purposive construction of the claims (see 12.02), and considers a search of the prior art (see 12.03).

After examining the application, if the application is considered compliant with the Patent Act and Patent Rules, the examiner will approve the application for allowance, generally resulting in a Notice of Allowance in accordance with subsection 86(1) of the Patent Rules (see chapter 25).

Where the examiner considers that the application does not comply with the Patent Act and Patent Rules, they may communicate the defects to the applicant using:

• an examiner's report (see 12.04), which may be a Final Action (see chapter 26);
• an examiner-initiated interview (see 12.06.02); or,
• a conditional notice of allowance (see 25.01.01).

Note that an application for which examination has been requested may be examined prior to being laid open to public inspection under section 10 of the Patent Act, but an examiner will not approve an application for allowance, nor issue a conditional notice of allowance, until it has been laid open.

Further note that examination will be suspended for applications which are deemed abandoned (e.g. for failing to respond to an examiner's report or for failing to pay a fee), until those applications are reinstated.

N/A

It should be noted that, in accordance with subsection 15(3.2) and 155.5(4) of the Patent Rules, text matter that is not in English or French:

• in the sequence listing of a regular Canadian application; or
• in the specification or drawings of a PCT national application,

should not be taken into account for the purposes of interpreting the scope of protection sought or obtained for the invention, unless that text matter is in free text of a sequence listing, in a non-language dependent field.³³

The scope of the search of the prior art performed by a Canadian examiner at the national phase is determined in part by the extent to which relevant prior art has been identified in any earlier searches. Further, examiners are not required to search claimed matter that is determined to be non-statutory, to lack practical utility or that is not supported by the application as filed (e.g. where new matter has been introduced contrary to subsection 38.2(2) or 38.2(3.1) of the Patent Act).

Where claimed matter is not required to be searched for any of the foregoing reasons, but it is evident from the specification as a whole that a claim to related subject-matter requiring a search could be made, a search should generally be performed on this related matter. By way of example, a claim to a method of medical treatment need not be searched, but if it is clear that a statutory claim could be made on related matter (such as a related use), this matter should be searched.

Where the claimed subject-matter has been the subject of a comprehensive international search by an International Searching Authority, a Canadian examiner will nevertheless perform at least a search of Canadian patent documents to identify documents relevant to double-patenting or to anticipation under paragraphs 28.2(1)(c) and 28.2(1)(d) of the Patent Act.

The scope of the search of the prior art performed by a Canadian examiner at the national phase is determined in part by the extent to which relevant prior art has been identified in any earlier searches. Further, examiners are not required to search claimed matter having defects relating to unity of invention (see chapter 21), divisional requirements (see section 21.10), or new matter (see chapter 20).

Where the claimed subject-matter has been the subject of a comprehensive international search by an International Searching Authority, a Canadian examiner will nevertheless perform at least a search of Canadian patent documents to identify documents relevant to double-patenting or to anticipation under paragraphs 28.2(1)(c) and 28.2(1)(d) of the Patent Act (see sections 18.06, 18.01.01c and 18.01.01d).

12.04 Examiner's reports

Date modified: June 2015

An examiner's report is an examiner's official means of communicating with an applicant. A report will contain at least one requisition as well as information provided to clarify the scope or content of each requisition. A report will also indicate the time limit within which the applicant must respond to each requisition in order to avoid abandonment. [For more information on abandonment and time limits see Chapter 9 of this manual.]

Under subsection 86(2) of the Patent Rules, where an examiner has reasonable grounds to believe that an application does not comply with the Patent Act and Patent Rules, the applicant must be informed of the application's defects and must be requisitioned to amend the application to comply or to provide arguments as to why the application does comply. Where an examiner has identified one or more defects, these will be detailed in the report and, for the purposes of paragraph 73(1)(a) of the Patent Act, they are considered to be a single requisition. The beginning of this requisition can generally be identified in a report by text such as "The examiner has identified the following defects in the application". The requisition ends with a paragraph such as "In view of the foregoing defects, the applicant is requisitioned, under subsection 86(2) of the Patent Rules, to amend the application in order to comply with the Patent Act and the Patent Rules or to provide arguments as to why the application does comply". If it appears that prosecution has reached an impasse, the examiner may issue a final action. See chapter 26 for further details.

Reports may also include additional requisitions under sections 85 and 94 of the Patent Rules. More information on these types of requisitions is given in sections 12.04.01 and 12.04.02.

Each separate requisition made in a report must be responded to within the time period indicated in the report or the application will be abandoned in accordance with paragraph 73(1)(a) of the Patent Act. For each requisition on the basis of which the application was deemed to be abandoned, a specific request for reinstatement must be made, a separate reinstatement fee must be paid, and any required actions must be taken.

An examiner's report will usually include additional content that does not form part of a requisition, but which provides useful information regarding the report. This content may indicate the date of the most recent amendments and, in the case of a first report, their origin (international stage or national stage), an indication of the number of claims on file, a statement regarding the search performed, and an identification of any prior art documents discovered and a discussion of their pertinence.

The report may also include general comments on the prosecution and discussions relating to points raised by the applicant in their correspondence. Where there appears to be a disagreement between the applicant and the examiner as to the construction of the claims, the report may include the examiner's identification of the person skilled in the art and the common general knowledge. The report may also set out the examiner's understanding of the problem that the inventor set out to solve, the solution that the inventor has contemplated, and the essential elements that lead to that solution.

Where an examiner has deferred the search and examination of the claims this will be indicated in the report along with the reasons leading to the deferral. An examiner may, for example, choose to defer the search and examination of the claims in situations where a unity of invention defect is identified; where an application intended to be a divisional does not appear to be entitled to divisional status; or in situations where the examiner has determined that the claims are directed to non-statutory subject-matter.

If the examiner considers the application compliant with the Patent Act and the Patent Rules, it will be approved for allowance per section 86(1) of the Patent Rules. See chapter 25 for further details.

12.04 Examiner's reports

Date modified: October 2022

An examiner's report is an official means of communicating with an applicant. The term "examiner's report" or "report" means a notice from the examiner that identifies defects in the application and which contains a requisition under subsection 86(2) or 86(5) of the Patent Rules.

Under subsection 86(2) of the Patent Rules, where an examiner has reasonable grounds to believe that an application does not comply with the Patent Act and Patent Rules, the applicant must be informed of the application's defects and must be requisitioned to amend the application to comply or to provide arguments as to why the application does comply. Where an examiner has identified one or more defects, these will be detailed in the report and, for the purposes of paragraph 73(1)(a) of the Patent Act, they are considered to be a single requisition. The beginning of this requisition can generally be identified in a report by text such as "The examiner has identified the following defects in the application". The requisition ends with a paragraph such as "In view of the foregoing defects, the applicant is requisitioned, under subsection 86(2) of the Patent Rules, to amend the application in order to comply with the Patent Act and the Patent Rules or to provide arguments as to why the application does comply".

In later stages of prosecution, if it appears that prosecution has reached an impasse, a specific type of examiner's report, called a Final Action, may be issued. A Final Action includes a requisition to which the applicant must respond under subsection 86(5) of the Patent Rules. See chapter 26 for further details.

Additional requisitions under sections 85 and 94 of the Patent Rules may be included in examiner's reports. More information on these types of requisitions is given in sections 12.04.01 and 12.04.02.

In addition to requisitions, an examiner's report may include informative statements requiring action from the applicant. In particular, in accordance with section 85.1 of the Patent Rules, the report may inform the applicant that there is a requirement to make a request for continued examination and pay a fee in order for examination to continue. More information on the request for continued examination is provided in sections 11.04.02a and 11.04.02b.

Each separate requisition, and any separate requirement to make a request for continued examination, made in a report must be responded to within the time period indicated in the report or the application will be abandoned in accordance with paragraph 73(1)(a) of the Patent Act or 132(1)(e) of the Patent Rules. For more information on abandonment, time limits and reinstatement, see Chapter 9 of this manual.

An examiner's report will usually include additional content that does not form part of a requisition, but which provides useful information regarding the report. This content may indicate the date of the most recent amendments and, in the case of a first report, their origin (international stage or national stage), an indication of the number of claims on file, a statement regarding the search performed, and an identification of any prior art documents discovered and a discussion of their pertinence.

The report may also include general comments on the prosecution and discussions relating to points raised by the applicant in their correspondence. Where there appears to be a disagreement between the applicant and the examiner as to the construction of the claims, the report may include the examiner's identification of the person skilled in the art and the common general knowledge. The report may also set out the examiner's understanding of the problem that the inventor set out to solve, the solution that the inventor has contemplated, and the essential elements that lead to that solution.

An examiner's report should be as comprehensive as possible, to enable the applicant to make informed decisions regarding the continued prosecution of their application and, if possible, to place the application in a condition for allowance [see Chapter 25].

However, there may be circumstances where a comprehensive search and examination is not conducted (see 12.03). Where an examiner has deferred the search and examination of the claims this will be indicated in the report along with the reasons leading to the deferral (see 12.03).

The examiner does not issue a report when there are reasonable grounds to believe that:

• the application is compliant with the Patent Act and the Patent Rules; or
• the application contains only certain minor defects, and in the absence of these minor defects, the application would comply with the Patent Act and Patent Rules.

In these cases, the examiner will approve the application for allowance, or issue a conditional notice of allowance. See chapter 25 for further details.

1. vi. in the event of delays of greater than one month between the date of the examiner's report and the date the report is received by the applicant, upon receipt of evidence satisfactory to the Commissioner (see 2.02.09d).

1. vi. in the event of delays of greater than one month between the date of the examiner's report and the date the report is received by the applicant, and where the report contains a requisition or requirement under section 85, 85.1 or 94 of the Patent Rules. See 2.02.09d for more information on the evidence and timelines required to withdraw a report under these circumstances.

N/A

If a request is successful, the Office will withdraw the report. An effect of withdrawing the report is the removal of the applicant's obligation to respond to any requisitions or requirements contained therein within the specified time limits.

Another effect of withdrawing the report is that the withdrawn report does not contribute to the overall report count as it relates to the requirement to request for continued examination (see 11.04.02a). In many cases following withdrawal of a report, the Office issues a new report to which the applicant must respond. The time limit to respond to the new report is based on the date identified in the new report.

Where the request to withdraw the report relates to an allegedly improper:

• requisition under section 85 or 94.1 of the Patent Rules in a report; or
• statement or notice informing the applicant of a requirement to request for continued examination under section 85.1 of the Patent Rules,

the report, including the requisition under 86(2) or 86(5) of the Patent Rules, will generally not be withdrawn. Instead, if it is determined that the requisition or requirement was inappropriately included in the report, the applicant will be notified that only the specific improperly-identified requisition or requirement has been withdrawn. The withdrawal of a specific requisition or requirement in such a manner will result in the removal of the applicant's obligation to respond to the relevant requisition or requirement without removing the obligation to respond to the other requisitions or any requirements.

Note: previous subsections 12.05.02-12.05.03 renumbered as 12.05.03-12.05.04

12.05.02 Correction of national phase translation

Date modified: October 2022

For PCT applications that were internationally filed with some or all of the text matter in the specification or drawings in a language other than English or French, a translation of that text matter into English or French is required by the national phase entry date in accordance with paragraph 154(1)(b), 154(1)(b.1) or section 155.1 of the Patent Rules (see Chapter 33).

If, during the course of examination, the Commissioner or the examiner has reasonable grounds to believe that the translation submitted to meet the requirements of 154(1)(b), 154(1)(b.1) or 155.1 of the Patent Rules contains errors, they will issue a notice to inform the applicant of the errors. Any corrections in response to the notice must be received prior to the issuance of a notice of allowance or a conditional notice of allowance, unless the notice of allowance or conditional notice of allowance is withdrawn or set aside (see section 11.05.04). A failure to respond to the request to the corrected translation could have implications on the analysis of new matter, should any amendments attempt to rely on the erroneous content (see chapter 20).

N/A

12.05.05 Notice requiring a request for continued examination

Date modified: October 2022

Certain examiner's reports should include a statement informing the applicant of their need to request for continued examination under section 85.1 of the Patent Rules (see sections 11.04.02a, 11.04.02b and 12.04). If a report fails to inform an applicant of their need to make a request continued examination, and that information should have been present in the report, the examiner will issue a separate notice informing the applicant of their need to make a request for continued examination.

In order to avoid abandonment under paragraph 132(e) of the Patent Rules, the applicant must request for continued examination and pay the prescribed fee no later than 4 months after the date of the notice (as described in 11.04.02a and 11.04.02b).

An interview concerning the prosecution of an application, including an application that has received a final action, may be requested at any stage of the prosecution and will be conducted by the examiner in charge of the application. During the interview the examiner may provide further explanation about the defects identified in a report or clarify certain points concerning the invention. It should be noted that interviews do not replace the normal prosecution of an application. An examiner will not provide definitive verbal opinions or agree to accept amendments to the specifications during an interview.

An interview concerning the prosecution of an application, including an application that has received a final action, may be requested at any stage of the prosecution, unless the application is abandoned. The interview will be conducted by the examiner in charge of the application. During the interview the examiner may provide further explanation about the defects identified in a report or clarify certain points concerning the invention. It should be noted that interviews do not replace the normal prosecution of an application. An examiner will not provide definitive verbal opinions or agree to accept amendments to the specifications during an interview.

The Patent Examination Interview Service promotes direct communication between CIPO's patent examiners and patent agents or unrepresented inventors by allowing for the prosecution of patent applications by telephone. The Service encourages patent examiners to contact the appointed patent agent or common representative or single applicant if no agent has been appointed by phone in situations where advancing prosecution is likely, such as when there are only a few minor defects remaining in an application.

The Patent Examination Interview Service promotes direct communication between CIPO's patent examiners and patent agents or unrepresented inventors by allowing for the prosecution of patent applications by telephone, or using an online platform for video- or tele-conferencing. The Service encourages patent examiners to contact the appointed patent agent or common representative or single applicant if no agent has been appointed by phone in situations where advancing prosecution is likely, such as when there are only a few minor defects remaining in an application.

In accordance with section 51 of the Patent Rules, the description must not contain drawings¹¹⁰ but may contain chemical or mathematical formulae.¹¹¹ For greater clarity, a chemical formula may be presented in the description in graphical form (i.e. as a structure).¹¹² The description may also contain information presented in tables. In accordance with subsection 14(2) of the Patent Rules, any formula or table may, where it aids presentation, be presented sideways (i.e. in landscape format) with the top of the formula or table at the left side of the sheet. Otherwise, subsection 14(1) of the Patent Rules provides that pages of the description must be used upright (i.e. in portrait format).

In accordance with section 51 of the Patent Rules, the description must not contain drawings¹¹⁰ but may contain chemical or mathematical formulae.¹¹¹ For greater clarity, a chemical formula may be presented in the description in graphical form (i.e. as a structure).¹¹² The description may also contain information presented in tables. In accordance with subsection 14(2) of the Patent Rules, any formula or table may, where it aids presentation, be presented sideways (i.e. in landscape format). Otherwise, subsection 14(1) of the Patent Rules provides that pages of the description must be used upright (i.e. in portrait format).

Note that one amendment that is always permissible from the standpoint of "new matter" is the inclusion of the language of the originally filed claims in the description of a non-divisional application.

Note that one amendment that is always permissible from the standpoint of "new matter" is the inclusion of the language of the originally filed claims in the description of a non-divisional application that was originally filed in English or French.

"paragraph 132(c)"

"paragraph 132(1)(c)"

15.01.01 Amendments to drawings

Date modified: October 2019

Subsection 38.2(1) of the Patent Act states that the specification and any drawings furnished as part of an application may be amended before the patent is issued.

Drawings may not be amended to add matter not reasonably to be inferred from the specification or drawings as originally filed, except in so far as it is admitted in the specification that the matter is prior art with respect to the application (subsections 38.2(2) and 38.2(4) of the Patent Act).

Detailed information on making amendments to patent applications can be found in Chapters 11 and 20 of this manual.

15.01.01 Amendments to drawings

Date modified: October 2022

Subsection 38.2(1) of the Patent Act states that the specification and any drawings furnished as part of an application may be amended before the patent is issued.

Drawings may not be amended to add new matter.

Detailed information on making amendments to patent applications can be found in Chapters 11 and 20 of this manual.

New Subject-Matter

New Matter

"new subject-matter"

"new matter"

20.01 New subject-matter

Date modified: October 2019

Under the Patent Act, the specification and drawings of an application may be amended, as long as the amendments, inter alia, do not contain new subject-matter when compared to what was filed originally. Subsections 38.2(2) to 38.2(4) of the Patent Act provide limits on what matter can form part of an amendment, anything outside of which is considered new subject-matter.

20.01 New matter

Date modified: October 2022

Under the Patent Act, the specification and drawings of an application may be amended, as long as the amendments, inter alia, do not contain new matter when compared to what was filed originally. Subsections 38.2(2) to 38.2(4) of the Patent Act and sections 155.6 and 155.7 of the Patent Rules provide limits on what matter can form part of an amendment, anything outside of which is considered new matter.

Note: this text was formerly found in subsection 20.01.01

According to subsection 38.2(2) of the Patent Act, the specification and drawings may not be amended to describe subject-matter cannot reasonably be inferred from the specification and drawings as originally filed.^[254] Where a translation of the specification and drawings is submitted to satisfy subsection 15(2) or 15(3) of the Patent Rules, these translations replace the originally filed specification and drawings (see sections 3.02.04c and 3.02.03). Consequently examination of new subject-matter will proceed on the basis of the submitted translated documents.

Note: revised text based on text from former subsection 20.01.01

These requirements apply to all applications originally filed in English or French and that are not divisional applications.

According to subsection 38.2(2) of the Patent Act, the specification and drawings may not be amended to describe matter that cannot reasonably be inferred from the specification and drawings as originally filed.²⁵⁴

N/A

20.03 Applications originally filed in a language other than English or French

Date modified: October 2022

There are specific new matter requirements for applications that are originally filed in a language other than English or French. Those requirements differ slightly for regularly-filed Canadian (non-PCT) applications (see section 20.03.01) and PCT national phase applications (see section 20.03.02).

N/A

20.03.01 Regularly-filed Canadian (non-PCT) applications

Date modified: October 2022

Amendments to regularly-filed Canadian (non-PCT) applications that are originally filed in a language other than English or French must meet the requirements of subsection 38.2(3) of the Patent Act, which requires amendments to be reasonable to infer from both:

• the specification and drawings contained in the application on its filing date; and
• the specification or drawings contained in the application immediately after the text matter is replaced by an English or French translation, in accordance with the regulations.

For regularly-filed Canadian (non-PCT) applications filed in a language other than English or French, the translated documents submitted to satisfy subsection 15(2) or 15(3) of the Patent Rules, replace the originally filed specification and drawings (see sections 3.02.04c and 3.02.03). Consequently examination of new matter will proceed on the basis of these translated documents.

N/A

20.03.02 PCT national phase applications

Date modified: October 2022

Subsection 159(1) of the Patent Rules indicates that subsection 38.2(3) of the Patent Act does not apply to PCT national phase applications.

Instead, PCT national phase applications originally filed in a language other than English or French must meet the amendment requirements set forth in subsection 155.6(1) of the Patent Rules. In particular, any amendments to these applications, after they enter national phase, must be reasonable to infer from both:

• the specification and drawings contained in the international application on its filing date; and
• the translated text matter in the specification and drawings (submitted to comply with paragraph 154(1)(b), 154(1)(b.1), or section 155.1 of the Patent Rules) and any untranslated text matter in a sequence listing that is not language-dependent free text.²⁶⁰

It follows that, for PCT national phase applications filed in a language other than English or French, amendments cannot be based on untranslated (e.g. non-English, non-French) text matter in the specification or drawings, unless:

• those amendments are reasonable to infer from the remainder of the specification and drawings (i.e. excluding the untranslated terms); or
• those untranslated terms are present in non-language-dependent free text in the sequence listing.

There may be circumstances where PCT national phase applications are filed in a language other than English or French, but contain English or French text matter in the sequence listing. Where the sequence listing contains text matter in English or French and that same text matter is provided in another language, for the purposes of assessing new matter under subsection 155.6(1) of the Patent Rules, the other language must be disregarded (subsection 155.6(2) of the Patent Rules).

N/A

20.03.02a Corrections to translations of PCT national phase applications

Date modified: October 2022

If an amendment is reasonable to infer from the originally filed PCT national phase application (which was filed in a language other than English or French), but is not reasonable to infer from the national phase translated text in the specification and drawings due to an error in the translation, there may be opportunity to correct the translation in accordance with subsection 155.2(2) of the Patent Rules.

Where a compliant corrected translation is submitted, it is considered submitted on the date of the original translation. As such, any compliant corrected translation is to be used as a basis for new matter assessment under subsection 155.6(1) of the Patent Rules.

It should be noted that a failure to translate certain terms is not considered an error in the translation, and as such, untranslated terms cannot be corrected within the provisions of subsection 155.2(2) of the Patent Rules.

Note: this text was formerly found in subsection 20.01.02

The issue of new subject-matter in divisional applications arises upon filing of the divisional application (section 91 of the Patent Rules) and upon amendment of the divisional application (subsection 38.2(3.1) of the Patent Act).

Note: revised text based on text from former subsection 20.01.02

The issue of new matter in divisional applications arises upon filing of the divisional application and upon amendment of the divisional application.

Note: this text was formerly found in subsection 20.01.02a

20.01.02a New subject-matter when filing a divisional application

Date modified: October 2019

Upon examination, the content of a divisional application is assessed as of its presentation date. This content is compared to the content of the original parent application on its filing date (Where the original parent application is also a divisional application then it is the presentation date of the original parent application that is relevant). Any matter neither contained in nor reasonably inferable from said original parent application is considered to be new.

A divisional application cannot be filed with subject-matter that could not have been hypothetically added to the specification and/or drawings of the original parent application under subsection 38.2 of the Patent Act. It follows that where the original parent application is also a divisional application then it, in turn, must be assessed for new matter with respect to its original parent application to determine hypothetical compliance with subsection 38.2(3.1) of the Patent Act (see 20.01.02b), and this determination must be repeated for every application present in the chain of divisional applications. If the matter is considered new for any application in the chain then it is considered to be new for the divisional application.

Where matter present in a divisional application at its presentation date is considered new and it is not admitted in the specification as being prior art, a defect will be identified under section 91 of the Patent Rules.

Note: revised text based on text from former subsection 20.01.02a

20.04.01 New matter when filing a divisional application

Date modified: October 2022

Upon examination, the content of a divisional application is assessed as of its presentation date. This content is compared to the content of the original parent application on its filing date (Where the original parent application is also a divisional application then it is the presentation date of the original parent application that is relevant). Any matter neither contained in nor reasonably inferable from said original parent application is considered to be new.

Note: this text was formerly found in subsection 20.01.02a

A divisional application cannot be filed with subject-matter that could not have been hypothetically added to the specification and/or drawings of the original parent application under subsection 38.2 of the Patent Act. It follows that where the original parent application is also a divisional application then it, in turn, must be assessed for new matter with respect to its original parent application to determine hypothetical compliance with subsection 38.2(3.1) of the Patent Act (see 20.01.02b), and this determination must be repeated for every application present in the chain of divisional applications. If the matter is considered new for any application in the chain then it is considered to be new for the divisional application.

Where matter present in a divisional application at its presentation date is considered new and it is not admitted in the specification as being prior art, a defect will be identified under section 91 of the Patent Rules.

Note: revised text based on text from former subsection 20.01.02a

20.04.01a Regularly-filed Canadian (non-PCT) applications

Date modified: October 2022

For regularly-filed Canadian (non-PCT) applications, a divisional application cannot be filed with matter that could not have been hypothetically added to the specification and/or drawings of the original parent application under section 38.2 of the Patent Act. It follows that where the original parent application is also a divisional application then it, in turn, must be assessed for new matter with respect to its original parent application to determine hypothetical compliance with subsection 38.2(3.1) of the Patent Act (see 20.04.02), and this determination must be repeated for every application present in the chain of divisional applications. If the matter is considered new for any application in the chain then it is considered to be new for the divisional application.

Where matter present in a divisional application of a regularly-filed Canadian (non-PCT) application at its presentation date is considered new and it is not admitted in the specification as being prior art, a defect will be identified under section 91 of the Patent Rules.

N/A

20.04.01b PCT national phase applications

Date modified: October 2022

For divisional applications of PCT national phase applications, the requirements set forth in section 155.7 of the Patent Rules must be met.

An analysis similar to that conducted for regularly-filed Canadian (non-PCT) applications (see section 20.04.01a) must be conducted to determine if the matter of the specification and drawings of the divisional at the presentation date could be hypothetically added to the parent application (or where the parent application is a divisional, whether the matter could be hypothetically added to its parent application without introducing new matter).²⁶¹

However, since PCT national phase applications have specific new matter requirements allowing for corrections of mis-translations when the original PCT application was filed in a language other than English or French, there is an additional analysis to conduct when those situations arise.

Specifically, there must be a determination as to whether the matter of the specification and drawings in the divisional application, if hypothetically added to the specification and drawings of the original PCT application and the translation of the same would introduce new matter in view of subsection 155.6(1) of the Patent Rules (see section 20.03.02).

Where matter present in a divisional application of a PCT national phase application at its presentation date is considered new and it is not admitted in the specification as being prior art, a defect will be identified under section 155.7 of the Patent Rules.

Note: this text was formerly found in subsection 20.01.02b

20.01.02b New subject-matter when amending a divisional application

Date modified: October 2019

Subsection 38.2(3.1) of the Patent Act states that the specification and drawings of a divisional application may not be amended to add matter that (a) could not have been added to the original parent application; and (b) cannot be reasonably inferred from the divisional application at its presentation date. Subsection 38.2(4) of the Patent Act provides an exception for matter that is admitted as prior art. Situations where the original parent application is also a divisional application are more complex and follow an analysis analogous to that explained in section 20.01.02a above.

The requirements of subsection 38.2(3.1) and 38.2(4) of the Patent Act mean matter present in the original parent application but missing from the divisional application cannot be added to the divisional application after its presentation date unless the matter was otherwise inferable from the divisional application at its presentation date, or admitted as prior art.

Note: revised text based on text from former subsection 20.01.02b

20.04.02 New matter when amending a divisional application

Date modified: October 2022

Subsection 38.2(3.1) of the Patent Act states that the specification and drawings of a divisional application may not be amended to add matter that (a) could not have been added to the original parent application; and (b) cannot be reasonably inferred from the divisional application at its presentation date. Subsection 38.2(4) of the Patent Act provides an exception for matter that is admitted as prior art. Situations where the original parent application is also a divisional application are more complex and follow an analysis analogous to that explained in section 20.04.01 above.

The requirements of subsections 38.2(3.1) and 38.2(4) of the Patent Act and subsections 155.6(3) and 155.6(4) of the Patent Rules mean matter present in the original parent application but missing from the divisional application cannot be added to the divisional application after its presentation date unless the matter was otherwise inferable from the divisional application at its presentation date, or admitted as prior art.

N/A

20.04.02a PCT national phase applications

Date modified: October 2022

Amendments to PCT national phase applications require a similar analysis as is presented in section 20.04.02,²⁶² however, they must additionally meet the requirements set forth in subsection 155.6(3) of the Patent Rules. Subsection 155.6(3) of the Patent Rules requires a special analysis when the original PCT application was filed in a language other than English or French, in order to allow for the corrections to mis-translations.

Specifically, there must be a determination as to whether the matter of the amendment, if hypothetically added to the specification and drawings of the original PCT application and the text matter of the translation (excluding untranslated matter in the non-language dependent free text of the sequence listing), would introduce new matter in view of subsection 155.6(1) of the Patent Rules (see 20.03.02).

Where new matter is identified in an amendment to a divisional application based on a PCT national phase application, a defect is identified under subsection 155.6(3) of the Patent Rules, or paragraph 38.2(3.1)(b) of the Patent Act.

Note: this text was formerly found in section 20.01.02c

20.01.02c Transitional considerations

Date modified: October 2019

For divisional applications filed before October 30, 2019, the matter present in the specification and drawings upon filing of the divisional and the matter introduced to the specification and drawings by an amendment made before October 30, 2019 will be evaluated based upon subsections 38.2(2) and 38.2(3) of the Patent Act in force as of the date of filing of the divisional application or date of amendment, respectively. For greater clarity, any amendments made on or after October 30, 2019 to a divisional application filed before October 30, 2019 will be assessed as detailed in section 20.01.02b.

Note: revised text based on text from former subsection 20.01.02c

20.05 Transitional considerations

Date modified: October 2022

For divisional applications filed before October 30, 2019, the matter present in the specification and drawings upon filing of the divisional and the matter introduced to the specification and drawings by an amendment made before October 30, 2019 will be evaluated based upon subsections 38.2(2) and 38.2(3) of the Patent Act in force as of the date of filing of the divisional application or date of amendment, respectively. For greater clarity, any amendments made on or after October 30, 2019 to a divisional application filed before October 30, 2019 will be assessed as detailed in section 20.04.02.

Whenever a report is written that identifies lack of unity of invention as a defect, an indication must be included in the report of the extent of the search and examination performed on the application as a whole.

As noted in 21.07, a report identifying a lack of unity may be limited in scope to address only that defect. This will usually be the case where a lack of unity is identified at the outset of prosecution. Where a lack of unity is identified later in prosecution, the facts of the case may be such that it is more efficient to identify this defect in parallel with a comprehensive examination of some or all of the claims, rather than interrupting the substantive examination in order to deal with the unity of invention defect alone.

Even where a lack of unity of invention is identified as a defect at the outset of prosecution, if the examiner believes (for example, in view of corresponding patents issued in other jurisdictions) they know which group of claims an applicant will elect for prosecution, they may include in their report an identification of all the defects associated with these claims. The choice of the examiner does not replace the applicant's right to make their one-time election [see 21.07]. If the applicant elects a different group of claims for prosecution from the one the examiner chose to examine, prosecution proceeds on the basis of the claims elected by the applicant.

As noted in 21.07 and 12.03, substantive search and examination of the application may be deferred, and the report may be limited in scope to address only the unity defect. Alternatively, it may be determined that it is more efficient to identify the unity defect in parallel with a comprehensive examination of some or all of the claims.

If examination proceeds on the basis of only some claims (e.g. on the basis of a group identified by the examiner), an indication must be included in the report of the extent of search and examination performed.

The choice of the examiner to search and examine certain claims does not replace the applicant's right to make their one-time election [see 21.07]. If the applicant elects a different group of claims for prosecution from the one the examiner chose to examine, prosecution proceeds on the basis of the claims elected by the applicant.

21.10 Examination of divisional applications

Date modified: October 2019

A divisional application will be examined in its regular order according to the date on which the parent application's request for examination was made.

Where a request for examination has been made on a divisional application, examination will include a determination of whether the application is entitled to divisional status. The content of the specification and drawings of the purported divisional application are compared to that of the parent application to determine if the claims of the divisional application are directed to a different invention than the claims of the parent, and if the divisional application contains any subject-matter that could not have been reasonably inferred from the parent application as filed (or at its presentation date if the parent application is a divisional).

If, at filing or during the course of prosecution, the claims in the purported divisional application are not directed to a different invention than those of the parent application, the later-filed application is not a proper divisional application within the meaning of section 36 of the Patent Act. Note that if the filing of a divisional application was "directed by the Patent Office", the doctrine of double-patenting does not apply between the divisional and any of its parent or sibling applications.

If the purported divisional application has a presentation date after October 30, 2019 and contains new matter with respect to its respective parent application, it is defective under section 91 of the Patent Rules.

Should an amendment introduce new matter to a divisional application, subsection 38.2(3.1) of the Patent Act will apply (please see section 20.01.02b for more information on how the requirements relating to new matter affect divisional applications).

If, during examination, the later-filed application is considered to be not entitled to divisional status, the applicant will be notified of this conclusion and of the examiner's reasons for so concluding. An applicant may respond to a requisition identifying the application as not entitled to divisional status by amending the application so that it becomes entitled to divisional status, or by providing arguments sufficient to convince the examiner that it should be so entitled.

21.10 Examination of divisional applications

Date modified: October 2022

Where a request for examination has been made on a divisional application, examination will be conducted in a manner similar to a regular application; however, there are additional requirements specific to divisional applications which must also be assessed. The content of the specification and drawings of the purported divisional application are compared to that of the parent application to determine if the claims of the divisional application are directed to a different invention than the claims of the parent, and if the divisional application was filed with new matter. See section 20.04.01 for information on new matter when filing a divisional application.

If, at filing or during the course of prosecution, the claims in the purported divisional application are not directed to a different invention than those of the parent application, the later-filed application is not a proper divisional application within the meaning of section 36 of the Patent Act. Note that if the filing of a divisional application was "directed by the Patent Office", the doctrine of double-patenting does not apply between the divisional and any of its parent or sibling applications.

If the purported divisional application has a presentation date after October 30, 2019 and contains new matter with respect to its respective parent application, it is defective under section 91 or 155.7 of the Patent Rules (see section 20.04.01).

Should an amendment introduce new matter to a divisional application, subsection 38.2(3.1) of the Patent Act or 155.6 of the Patent Rules will apply (please see section 20.04.02 for more information on how the requirements relating to new matter affect amendments to divisional applications).

23.05.07 Sequence listings

Date modified: July 2022

The description of an application must contain a sequence listing if the specification discloses a nucleotide or amino acid sequence, other than one that belongs to the prior art. In some cases, the provision of a sequence listing may be needed to satisfy administrative requirements (e.g., section 58 of the Patent Rules), and to "correctly and fully describe the invention and its operation or use as contemplated by the inventor" (i.e., subsection 27(3) of the Patent Act).

The guidance provided in 23.05.07a to 23.05.07f applies to applications filed on or after July 1, 2022. For applications having a filing date before July 1, 2022, the sequence listing may, for the purposes of section 58(1) of the Patent Rules, comply with the PCT sequence listing standard either defined in the current Patent Rules (i.e., WIPO ST.26) or as defined in the Patent Rules as they read immediately before July 1, 2022 (i.e., WIPO ST.25).^[321]

23.05.07 Sequence listings

Date modified: October 2022

The description of an application must contain a sequence listing if the specification discloses a nucleotide or amino acid sequence, other than one that belongs to the prior art.

The sequence listing may include either, or both, English and French text matter³²⁹ and may be different from the language of the remainder of the description. The sequence listing may also include text matter that is in a language other than English or French. It should be noted, however, that not all text matter contained in a sequence listing is necessarily considered in interpreting the scope of protection for the disclosed invention. In particular, subsection 15(3.1) of the Patent Rules states:

"If a sequence listing contains text matter that is both in English and in French, only the following version of the text matter is taken into account for the purpose of interpreting the scope of protection sought or obtained:

1. if the sequence listing contains an indication that either English or French is the original language of that text matter, the version that is in that original language; and
2. in any other case, the version that is in the same language as the claims.".

When a language other than English or French is found in the language-dependent free text of a sequence listing, as per subsection 15(3.2) of the Patent Rules, that language is not taken into account for the purpose of interpreting the scope of protection sought or obtained (see also 12.02). Further, amendments to the specification and drawings of a PCT national phase application cannot be based on untranslated text matter (non-English and non-French) in the sequence listing unless that untranslated text matter is not language-dependent free text (see 20.03.02). More information on free text and language-dependent free text can be found in paragraphs 85-88 of the PCT sequence listing standard, WIPO Standard 26 (ST.26). See also 23.05.07b for an introduction to ST.26.

In some cases, the provision of a sequence listing may be needed to satisfy administrative requirements (e.g., section 58 of the Patent Rules), and to "correctly and fully describe the invention and its operation or use as contemplated by the inventor" (i.e., subsection 27(3) of the Patent Act).

If a sequence listing is found to contain errors, any correction of the listing must comply with the requirements of section 38.2 of the Patent Act. That is, no new matter may be added to the specification or drawings as originally filed and any correction made to a sequence listing must be reasonably inferable from the specification or drawings as filed (except for amendments to divisional applications which have further requirements see section 20.01.02). Where the corrected sequence could only be determined by, for example, re-sequencing a sample, the correction is not reasonably to be inferred.

If a sequence listing is found to contain errors, any correction of the listing must comply with the requirements of section 38.2 of the Patent Act. That is, no new matter may be added to the specification or drawings as originally filed and any correction made to a sequence listing must be reasonably inferable from the specification or drawings as filed except for amendments to divisional applications and amendments to applications that were originally filed containing text matter in a language other than English or French, which have further requirements, see 20.04 and 20.03, respectively. Where the corrected sequence could only be determined by, for example, re-sequencing a sample, the correction is not reasonably to be inferred.

In accordance with paragraph 93(1)(b) of the Patent Rules, the applicant must, before the day on which the application becomes open to public inspection at the Patent Office, inform the Commissioner of the name of the IDA and the accession number given by the IDA to the deposit. This information must be included in the description as required by subsection 93(1)(c) of the Patent Rules.

In accordance with paragraph 93(1)(b) of the Patent Rules, the applicant must, before the day on which the application becomes open to public inspection at the Patent Office, inform the Commissioner of the name of the IDA and the accession number given by the IDA to the deposit. In accordance with subsection 93(1.1), for a PCT national phase application that is published by WIPO on or before the national phase entry date, the requirement in paragraph 93(1)(b) is considered to be met only if the information referred to in that paragraph was furnished in accordance with the requirements of the Patent Cooperation Treaty before the day on which the international application is published. This information must be included in the description as required by subsection 93(1)(c) of the Patent Rules.

In accordance with the Patent Rules, whenever a deposit of a biological material is made with another IDA under Article 4(1)(b)(i) or (ii) (paragraph 93(1)(f) of the Patent Rules) or transferred to a substitute IDA under Rule 5 of the Budapest Treaty (paragraph 93(1)(d) of the Patent Rules) the applicant or patentee must inform the Commissioner of the accession number given by the new or substitute IDA to the deposit not later than the three-month period after the date of issuance of a receipt by that IDA.

In accordance with the Patent Rules, whenever a deposit of a biological material is made with another IDA under Article 4(1)(b)(i) or (ii) (paragraph 93(1)(f) of the Patent Rules) or transferred to a substitute IDA under Rule 5 of the Budapest Treaty (paragraph 93(1)(d) of the Patent Rules) the applicant or patentee must inform the Commissioner of the accession number given by the new or substitute IDA to the deposit not later than three months after the date of issuance of a receipt by that IDA. If the application is a PCT national phase application, the applicant must inform the Commissioner before the later of three months after the date of issuance of a receipt by that IDA and three months after the national phase entry date of the application.

25.01 Allowance and notice of allowance

Date modified: September 2020

When an examiner has reasonable grounds to believe that a patent application complies with the requirements of the Patent Act and Patent Rules, the Commissioner will notify the applicant under subsection 86(1) of the Patent Rules, via a notice of allowance, that the application has been found to be allowable. In the notice, the Commissioner will require the applicant to pay the final fee listed in item 13 of Schedule 2 of the Patent Rules no later than four months after the date of the notice. If the final fee is not paid within the four-month period, the application will be deemed abandoned under paragraph 73(1)(a) of the Patent Act.

Where the examiner approves an application for allowance following the review of the response following a rejection under subsection 86(5) of the Patent Rules (i.e. Final Action), the Commissioner will notify the applicant, via notice of allowance, that the rejection is withdrawn and the application has been found to be allowable under subsection 86(6) of the Patent Rules (a notice of allowance). The applicant is required to pay the final fee (see CIPO's website on Patent Fees) not later than four months after the date of the notice. If the final fee is not paid within the four-month period, the application will be deemed abandoned under paragraph 73(1)(a) of the Patent Act.

25.01 Allowance and notice of allowance

Date modified: October 2022

When an examiner has reasonable grounds to believe that a patent application complies with the requirements of the Patent Act and Patent Rules, the Commissioner will notify the applicant under subsection 86(1) of the Patent Rules, via a notice of allowance, that the application has been found to be allowable.

In the notice, the Commissioner will require the applicant to pay the final fee (see CIPO's website on Patent Fees) no later than four months after the date of the notice. If the final fee is not paid within the four-month period, the application will be deemed abandoned under paragraph 132(1)(f) of the Patent Rules.

The final fee is composed of the basic fee, a fee for each page of the specification and drawings in excess of 100 other than pages of a sequence listing submitted in electronic form, and an excess claim fee³⁴⁶ for each claim in excess of 20 that was not already paid when requesting examination.

To calculate the excess claim fee, the Office will look at the maximum number of excess claims in the application from the date of the request for examination until the application is allowed.

For example, in the following scenario, the applicant would have to pay the fee for 4 excess claims to comply with the notice of allowance:

• the applicant requested examination with 26 claims (6 excess claims)
• during examination, the applicant submitted a voluntary amendment which brought the total number of claims to 30 (10 excess claims)
• during examination, the applicant submitted a second voluntary amendment which brought the total number of claims to 18 (the maximum number of claims is unchanged)
• the application was allowed with 18 claims (the maximum number of claims is unchanged)
• the maximum number of claims in this application from the date the request for examination was made until the application was allowed is 30.

The maximum number of claims in the above example is 30. This means that the applicant must pay for 10 additional claims. Since the applicant already paid for 6 excess claims, the notice of allowance will require the applicant to pay for 4 additional excess claims. Where the examiner approves an application for allowance following the review of the response following a rejection under subsection 86(5) of the Patent Rules (i.e. Final Action), the Commissioner will notify the applicant, via notice of allowance, that the rejection is withdrawn and the application has been found to be allowable under subsection 86(6) of the Patent Rules (a notice of allowance). The applicant is required to pay the final fee (see CIPO's website on Patent Fees) not later than four months after the date of the notice. If the final fee is not paid within the four-month period, the application will be deemed abandoned under paragraph 132(1)(f) of the Patent Rules.

Note: previous subsections 25.01.01 and 25.01.02 renumbered as 25.01.02 and 25.01.03

25.01.01 Conditional allowance and conditional notice of allowance

Date modified: October 2022

Where an examiner has reasonable grounds to believe that the application contains only certain minor defects, and if not for those defects, the application would otherwise comply with the Patent Act and Patent Rules, the Commissioner will notify the applicant under subsection 86(1.1) of the Patent Rules, via a conditional notice of allowance. The conditional notice of allowance will provide an indication to the applicant that the application will be found allowable if the outstanding minor defects are satisfactorily addressed with amendments or arguments.

Examples of minor defects that could be included in a conditional notice of allowance:

• failing to meet the margin requirements (section 47 of the Patent Rules);
• failing to meet the line spacing or font size requirements (section 48 of the Patent Rules);
• a failure to have each of the petition, the abstract, the description and the claims beginning on a new page (section 49 of the Patent Rules);
• a failure to number the pages of the specification, or description and claims, consecutively (subsection 50(1) or section 193 of the Patent Rules);
• the inclusion of drawings in the petition, abstract, description or claims (subsection 51(1) of the Patent Rules);
• the inclusion of trademarks in the abstract, description or claims without identifying the trademark as such (section 52 of the Patent Rules);
• the inclusion of statements in the description that incorporate a document by reference (section 57 of the Patent Rules);
• the failure to comply with the sequence listing requirements (section 58 of the Patent Rules); and/or
• a failure to comply with the drawing requirements (section 59 of the Patent Rules).

In the notice, the Commissioner will require the applicant to make the amendments to address the defects set out in the conditional notice of allowance and pay the final fee (see CIPO's website on Patent Fees) no later than four months after the date of the notice.

The final fee is composed of the basic fee, a fee for each page of the specification and drawings in excess of 100 other than pages of a sequence listing submitted in electronic form, and an excess claim fee³⁴⁷ for each claim in excess of 20 that was not already paid when requesting examination.

To calculate the excess claim fee, the Office will look at the maximum number of excess claims in the application from the date of the request for examination until the application is allowed.

For example, in the following scenario, the application would have to pay the fee for 4 excess claims to comply with the fee component of the conditional notice of allowance:

• the applicant requested examination with 26 claims (6 excess claims)
• during examination, the applicant submitted a voluntary amendment which brought the total number of claims to 30 (10 excess claims)
• during examination, the applicant submitted a second voluntary amendment which brought the total number of claims to 18 (the maximum number of claims is unchanged)
• the application was allowed with 18 claims (the maximum number of claims is unchanged)
• the maximum number of claims in this application from the date the request for examination was made until the application was allowed is 30.

The maximum number of claims in the above example is 30. This means that the applicant must pay for 10 additional claims. Since the applicant already paid for 6 excess claims, the notice of allowance will require the applicant to pay for 4 additional excess claims.

If the applicant does not reply in good faith to the conditional notice of allowance and the final fee is not paid within the four-month period, the application will be deemed abandoned under paragraph 132(1)(g) of the Patent Rules.

Note: this text was formerly found in subsection 25.01.01

25.01.01 No amendments after allowance

Date modified: September 2020

Examination ceases once a notice of allowance has been sent. Amendments after allowance are not permitted as per subsection 100(1) of the Patent Rules, except to correct an obvious error under subsection 100(2) of the Patent Rules.

The mechanism for the correction of obvious errors does not include the replacement for "better quality" pages of the specification or drawings.

Pages otherwise identical to the current pages, but replacing inferior quality ones and that have no pre-existing defect that would have been identified in a previous examiner's report would be considered as an amendment, rather than as a correction of an obvious error, and, as such, cannot be accepted, pursuant to subsection 100(1) of the Patent Rules.

The alternative would be to pay to initiate the withdrawal of the notice of allowance and to return the application to examination whereby the submission of such pages in the form of a voluntary amendment would be permissible.

Note: revised text based on text from former subsection 25.01.01

25.01.02 Amendments after notice of allowance or conditional notice of allowance

Date modified: October 2022

Examination ceases once a notice of allowance has been sent. Amendments after a notice of allowance is sent are not permitted as per subsection 100(1)(a) of the Patent Rules, unless: the notice of allowance is withdrawn (see section 25.02), or the amendment corrects an obvious error under subsection 100(2) of the Patent Rules (see section 25.01.03).

Amendments after a conditional notice of allowance is sent are not permitted as per subsection 100(1)(a), unless: the amendments are limited to those that address the defects identified in the conditional notice of allowance (paragraph 100(1)(b) of the Patent Rules); or those that correct obvious errors (subsection 100(2) of the Patent Rules) (see section 25.01.03).

Where an impermissible amendment is submitted after a conditional notice of allowance is sent, the notice will be withdrawn (subsection 86(15) of the Patent Rules), and the application will be examined without taking into account the impermissible amendments and any other amendments made from the day the conditional notice of allowance was sent to the day the conditional notice of allowance was withdrawn (subsection 100(3) of the Patent Rules).

Note: this text was formerly found in subsection 25.01.02

25.01.02 Exception – amendment of an obvious error

Date modified: September 2020

An applicant may amend obvious errors in the specification and drawings after a notice of allowance has been sent and on the date or before the date of the payment of the final fee under subsection 100(2) of the Patent Rules. The basis for obviousness of the error are the specifications and drawings contained in the application on the day the notice of allowance was sent. The amendment is permissible if it is obvious that something other than what appears in the specification and the drawings was intended and that nothing other than the proposed amendment could have been intended, although the final determination of obviousness will be determined by the examiner. There is no fee for the correction under this subsection.

Note: revised text based on text from former subsection 25.01.02

25.01.03 Exception – amendment of an obvious error

Date modified: October 2022

An applicant may amend obvious errors in the specification and drawings after a notice of allowance has been sent if the amendment is submitted on or before the date of the payment of the final fee under subsection 100(2) of the Patent Rules.

An applicant may amend obvious errors in the specification and drawings after a conditional notice of allowance has been sent if the amendment is submitted on or before the date on which the applicant replies in good faith to the conditional notice of allowance.

The basis for obviousness of the error are the specifications and drawings contained in the application on the day the notice of allowance or the conditional notice of allowance was sent. The amendment is permissible if it is obvious that something other than what appears in the specification and the drawings was intended and that nothing other than the proposed amendment could have been intended, although the final determination of obviousness will be determined by the examiner. There is no fee for the correction under this subsection.

The mechanism for the correction of obvious errors does not include the replacement for "better quality" pages of the specification or drawings.

Pages otherwise identical to the current pages, but replacing inferior quality ones and that have no pre-existing defect that would have been identified in a previous examiner's report would be considered as an amendment, rather than as a correction of an obvious error, and, as such, cannot be accepted, pursuant to subsection 100(1) of the Patent Rules.

25.02 Withdrawal from allowance

Date modified: September 2020

During the course of normal operations and prosecution, a notice of allowance can be withdrawn by two mechanisms in the Patent Rules. Under subsection 86(17) of the Patent Rules, the application may be returned to examination upon request and payment of a fee from the applicant. As well, under subsection 86(14) of the Patent Rules, the Commissioner has discretion and may act to withdraw the notice, if the application is found not to be compliant under the Rules. In both cases, the notice of allowance is deemed never to have been sent.

25.02 Withdrawal of notice of allowance or conditional notice of allowance

Date modified: October 2022

During the course of normal operations and prosecution, a notice of allowance may be withdrawn under subsection 86(14) of the Patent Rules.

A conditional notice of allowance can be withdrawn under subsection 86(14.1) or subsection 86(15) of the Patent Rules. Applicants can also request that a notice of allowance or a conditional notice of allowance be set aside by requesting continued examination (see section 11.04.02c).

25.02.01 Withdrawal upon request by the applicant – return to examination

Date modified: September 2020

An applicant can request the Commissioner to withdraw a notice of allowance and send the application back for further examination. The applicant must make the request and pay the prescribed fee (see CIPO's webpage on Patent Fees) no later than four months after it was sent, and/or before the day on which the final fee is paid.

It is important to note that applicants may not request a withdrawal of allowance under subsection 86(17) of the Patent Rules when the application has been deemed abandoned for failure to pay the final fee under subsection 73(2) of the Patent Act and paragraph 132(e) of the Patent Rules.

25.02.01 Withdrawal by the Commissioner – notice of allowance

Date modified: October 2022

The Commissioner will withdraw a notice of allowance under subsection 86(14) of the Patent Rules before a patent is issued if the examiner has reasonable grounds to believe that the application does not comply with the Patent Act and the Patent Rules, except when the defects would not affect the readability, clarity or validity of the patent, if it were granted. The notice of allowance will not be withdrawn if the application is deemed abandoned.

An application may be withdrawn from allowance, for example, in view of applicable prior art identified in a protest or in a filing of prior art under section 34.1 of the Patent Act.

The Commissioner will inform the applicant by notice that the notice of allowance has been withdrawn and refund the final fee, if it has been paid. The examiner will inform the applicant that the application does not comply with the Patent Act and Patent Rules.

25.02.02 Withdrawal by the Commissioner

Date modified: October 2019

The Commissioner may withdraw a notice of allowance before a patent is issued under subsection 86(14) of the Patent Rules if they have reasonable grounds to believe that the application does not comply with the Patent Act and the Patent Rules and if the application is not deemed abandoned.

An application may be withdrawn from allowance, for example, in view of applicable prior art identified in a protest or in a filing of prior art under section 34.1 of the Patent Act.

The Commissioner will inform the application by notice that the notice of allowance has been withdrawn and refund the final fee, if it has been paid. Under subsection 86(14) of the Patent Rules the notice of allowance will be considered to have never been sent and the application be subject to further examination.

25.02.02 Withdrawal by the Commissioner – Conditional notice of allowance

Date modified: October 2022

The Commissioner will withdraw a conditional notice of allowance before a patent is issued under subsection 86(14.1) of the Patent Rules if the examiner has reasonable grounds to believe that the application does not comply with the Patent Act or the Patent Rules, except when the defects would not affect the readability, clarity or validity of the patent, if it were granted. The notice of allowance will not be withdrawn if the application is deemed abandoned.

An application may be withdrawn from conditional allowance under subsection 86(14.1) of the Patent Rules, for example, in view of applicable prior art identified in a protest or in a filing of prior art under section 34.1 of the Patent Act.

The Commissioner will withdraw a conditional notice of allowance under subsection 86(15) of the Patent Rules before a patent is issued if the applicant has replied to the conditional notice of allowance in good faith, but the application still does not comply with the Patent Act and the Patent Rules.

An application may be withdrawn from conditional allowance under 86(15) of the Patent Rules, for example, if impermissible amendments (e.g. non-obvious and not addressing defects identified in the conditional notice of allowance) were introduced by the applicant in their response to the conditional notice of allowance.

The Commissioner will inform the applicant by notice that the conditional notice of allowance has been withdrawn and refund the final fee, if it has been paid.

The examiner will inform the applicant that the application does not comply with the Patent Act or Patent Rules.

If a conditional notice of allowance is withdrawn by the Commissioner, any amendments made to the application after the conditional notice of allowance is sent and before the day on which the conditional notice allowance is withdrawn are considered never to have been made.

25.03 Issuance of a patent on payment of final fee

Date modified: September 2020

Once the applicant pays the final fee, the Office will prepare the application to issue a granted patent. If the payment is conditional, such as recordal of a transfer under section 49 of the Patent Act or an amendment of an obvious error under subsection 100(2) of the Patent Rules, the Office will process those requests before starting the preparations to grant the patent, thus the currently recognized applicant or patentee will always be listed. Please consult CIPO's service standards for information on the expected time to prepare a granted patent.

25.03 Issuance of a patent on payment of final fee

Date modified: October 2022

Once the applicant pays the final fee, and, if applicable, corrects any minor defects noted in a conditional notice of allowance, the Office will prepare the application to issue a granted patent. If the payment is conditional, such as upon recordal of a transfer under section 49 of the Patent Act or upon amendment of an obvious error under subsection 100(2) of the Patent Rules, the Office will process those requests before starting the preparations to grant the patent, thus the currently recognized applicant or patentee will always be listed. Please consult CIPO's service standards for information on the expected time to prepare a granted patent.

27.01.01a Exception – patent granted with outstanding maintenance fee for patent application

Date modified: October 2019

If a patent is granted for a patent application for which the maintenance fee was not paid within the 12-month period preceding the day on which the patent was issued, the amount of that unpaid maintenance fee will be added to the first maintenance fee after the patent is granted. A late fee of $150 will also be required (subsection 112(5) of the Patent Rules).

27.01.01a Exception – patent granted with outstanding maintenance fee for patent application

Date modified: October 2022

If a patent is granted on the basis of a patent application for which a maintenance fee for an anniversary of the filing date that fell within the 12-month period was not paid before the day on which the patent was issued, the amount of that unpaid maintenance fee will be added to the first maintenance fee after the patent is granted. A late fee of $150 will also be required (subsection 112(5) of the Patent Rules).

27.03.01 Transitional Provisions

Date modified: September 2020

Section 78.55 of the Patent Act specifies that section 46 of the Patent Act, as it read immediately before the coming into force on October 30, 2019 of the amended Patent Act and the Patent Rules (SOR/2019-251) applies to maintenance fee due dates (not including the period of grace) before October 30, 2019. If the maintenance fee due date (not including the period of grace) is before October 30, 2019 and the maintenance fee, which can be found on CIPO's webpage on Patent Fees, is not paid on or before that due date, the patentee will have a 12-month grace period.

27.03.01 Transitional Provisions

Date modified: October 2022

Section 78.55 of the Patent Act specifies that section 46 of the Patent Act, as it read immediately before October 30, 2019, applies to maintenance fee due dates (not including the period of grace) before October 30, 2019. If the maintenance fee due date (not including the period of grace) is before October 30, 2019 and the maintenance fee, which can be found on CIPO's webpage on Patent Fees, is not paid on or before that due date, the patentee will have a 12-month grace period.

28.04 Error in the name of patentee or inventor

Date modified: September 2020

Patentees are able, within 12 months of the patent's issuance, to request correction of errors in the name of the patentee or the inventor so long as it does not change their identity under paragraph 109(1)(a) of the Patent Rules. The correction may be made after the 12-month period so long as the request is submitted before the end of 12 months after the day the patent is issued.

The Office is generally not in a position to be able to determine whether a request to correct the name of the patentee or inventor under section 109 of the Patent Rules will result in a change of their identity. Because any ambiguity in this regard could result in a processing delay and/or refusal of the request, persons submitting a correction request to the Office under section 109 are encouraged to clearly state that the correction will not result in a change of identity.

28.04 Error in the naming of a patentee or inventor

Date modified: October 2022

Patentees are able, within 12 months of the patent's issuance, to request correction of errors in the naming of the patentee or the inventor so long as it does not change their identity under paragraph 109(1)(a) of the Patent Rules. The correction may be made after the 12-month period so long as the request is submitted before the end of 12 months after the day the patent is issued. The request must contain a statement to the effect that the correction does not add or delete the name of a patentee or an inventor or change the identity of a named patentee or inventor, as the case may be.

32.01 Introduction

Date modified: October 2019

Transitional provisions in the amended Patent Act and the Patent Rules (SOR/2019-251) aim to preserve rights and deadlines that applicants and patentees benefited from under previous patent legislative regimes.

A series of transitional provisions in the Patent Act (sections 78.1 to 78.6) and the Patent Rules (sections 165 to 235) define the conditions and requirements for filing, prosecution and maintenance of existing patent applications and patents following the transition to the new patent legislative regime on October 30, 2019.

The transitional provisions in the Patent Rules define three categories of patent applications that are subject to transitional provisions. They are:

• Category 1 application – an application for a patent for which the filing date is before October 1, 1989;
• Category 2 application – an application for a patent for which the filing date is on or after October 1, 1989 and before October 1, 1996; and
• Category 3 application – an application for a patent for which the filing date is on or after October 1, 1996 and before October 30, 2019.

Determining which set of provisions of the Patent Act and/or the Patent Rules applies may be based on:

• the filing date of the application (section 78.2 of the Patent Act) , or
• the date of the event or action taken by the applicant/patentee (e.g. the date the request for priority was made, the date that the applicant failed to taken action)

Deadlines to respond to notices sent before October 30, 2019, the coming-into-force date (CIF) of the Patent Rules (SOR/2019-251), will remain unchanged after CIF.

This chapter focuses on transitional provisions and other rules concerning Category 3 applications, and current valid patents with filing dates before October 30, 2019.

32.01 Introduction

Date modified: October 2022

Transitional provisions in the amended Patent Act and the Patent Rules (SOR/2019-251) aim to preserve rights and deadlines that applicants and patentees benefited from under previous patent legislative regimes.

A series of transitional provisions in the Patent Act (sections 78.1 to 78.6) and the Patent Rules (sections 165 to 235) define the conditions and requirements for filing, prosecution and maintenance of existing patent applications and patents following the transition to the new patent legislative regime on October 30, 2019.

The transitional provisions in the Patent Rules define two categories of patent applications that are subject to transitional provisions. They are:

• Category 1 application – an application for a patent for which the filing date is before October 1, 1989;
• Category 3 application – an application for a patent for which the filing date is on or after October 1, 1996 and before October 30, 2019.

Determining which set of provisions of the Patent Act and/or the Patent Rules applies may be based on:

• the filing date of the application (section 78.2 of the Patent Act) , or
• the date of the event or action taken by the applicant/patentee (e.g. the date the request for priority was made, the date that the applicant failed to taken action).

Deadlines to respond to notices sent before October 30, 2019, the coming-into-force date (CIF) of the Patent Rules (SOR/2019-251), will remain unchanged after October 30, 2019.

This chapter focuses mainly on transitional provisions and other rules concerning Category 3 applications, and current valid patents with filing dates before October 30, 2019.

The chapter also includes transitional provisions due to the coming-into-force of the College of Patent Agents and Trademark Agents Act and College of Patent Agents and Trademark Agents Regulations (SOR/2021-131) on June 28, 2021 (see section 32.05.04) and transitional provisions due to the coming-into-force of certain provisions of the Patent Rules amending the Patent Rules (SOR/2022-XXX) on October 3, 2022 (see section 32.13).

32.02 Communicating with the Patent Office

Date modified: October 2019

The dates accorded to communications sent or received is governed by the Patent Rules in effect on that date. Note that as of October 30, 2019 and the coming into force of the amendment to section 8.1 of the Patent Act and subsection 10(4) of the Patent Rules, it will be possible to establish a date of receipt for communications submitted to the Office on days it is closed if they are submitted electronically. For more information, please see Chapter 2.

32.02 Communicating with the Patent Office

Date modified: October 2022

The dates accorded to communications sent or received is governed by the Patent Rules in effect on that date. Note that as of October 30, 2019 and in accordance with section 8.1 of the Patent Act and subsection 10(4) of the Patent Rules, it will be possible to establish a date of receipt for communications submitted to the Office on days it is closed if they are submitted electronically. For more information, please see Chapter 2.

32.02.01 Presentation of documents

Date modified: October 2019

Under the former Patent Rules, the Commissioner did not have regard to documents submitted in a language other than English or French. After October 30, 2019, the Commissioner must have regard to documents in a language other than English or French if they are submitted or made available with respect to Category 3 applications in circumstances outlined in section 215 of the Patent Rules:

1. subsection 196(1) of Patent Rules: a copy of a previously filed application or a reference to a digital library is submitted;
2. subsection 29(1) of the former Patent Rules: a prior art requisition is submitted;
3. paragraph 58(1)(a) of the former Patent Rules: a copy of the international application is submitted;
4. section 89 of the former Patent Rules: a certified copy of the priority document is submitted

32.02.01 Presentation of documents

Date modified: October 2022

Under the rules as they read prior to October 30, 2019 ("former Patent Rules"), the Commissioner must have regard to documents in a language other than English or French if they are submitted or made available with respect to Category 3 applications in circumstances outlined in section 215 of the Patent Rules:

1. subsection 196(1) of Patent Rules: a copy of a previously filed application or a reference to a digital library is submitted;
2. subsection 29(1) of the former Patent Rules: a prior art requisition is submitted;
3. paragraph 58(1)(a) of the former Patent Rules: a copy of the international application is submitted;
4. section 89 and 180 of the former Patent Rules: a certified copy of the priority document is submitted.

An extension of time authorized by the Commissioner under sections 26, 26.1 and 27 of the former Patent Rules to extend time for doing something that ends after October 30, 2019 remains valid after the coming into force of the Patent Rules (SOR/2019-251).

An extension of time authorized by the Commissioner under sections 26, 26.1 and 27 of the former Patent Rules to extend time for doing something that ends after October 30, 2019 remains valid after October 30, 2019.

As of the coming-into-force (CIF) of the College of Patent Agents and Trademark Agents Act, the College of Patent Agents and Trademark Agents Regulations, and the associated amendments to the Patent Rules, patent agents must reside in Canada. As of the CIF date, the appointment of any patent agent that is not a resident of Canada in respect of any patent application, patent or other business before the Office is revoked. If the non-resident patent agent appointed an associate patent agent who is a resident of Canada, that resident patent agent is deemed to be appointed as the patent agent in respect of that business.

As of the CIF date, a patent agent is defined as an individual who holds a patent agent licence or a patent agent in training licence. Firms are not considered to be patent agents. Therefore, as of the CIF date, in any case where a firm was previously appointed as the patent agent in respect of an application, patent or other business before the Office, all of the patent agents at the firm are deemed to be appointed as patent agent in respect of that business. If a firm was previously appointed as the associate patent agent by a patent agent who resides in Canada, all of the patent agents at the firm are deemed to be appointed as the associate patent agent in respect of that business. If a firm was previously appointed as the associate patent agent by a patent agent who is not a resident of Canada, all of the patent agents at the firm are deemed to be appointed as patent agent in respect of that business.

As of June 28, 2021, patent agents must reside in Canada. As of June 28, 2021, the appointment of any patent agent that is not a resident of Canada in respect of any patent application, patent or other business before the Office is revoked. If the non-resident patent agent appointed an associate patent agent who is a resident of Canada, that resident patent agent is deemed to be appointed as the patent agent in respect of that business.

As of June 28, 2021, a patent agent is defined as an individual who holds a patent agent licence or a patent agent in training licence. Firms are not considered to be patent agents. Therefore, as of the CIF date, in any case where a firm was previously appointed as the patent agent in respect of an application, patent or other business before the Office, all of the patent agents at the firm are deemed to be appointed as patent agent in respect of that business. If a firm was previously appointed as the associate patent agent by a patent agent who resides in Canada, all of the patent agents at the firm are deemed to be appointed as the associate patent agent in respect of that business. If a firm was previously appointed as the associate patent agent by a patent agent who is not a resident of Canada, all of the patent agents at the firm are deemed to be appointed as patent agent in respect of that business.

Restoration of the right of priority is available for patent applications that have a filing date that is after October 30, 2019, the coming-into-force date of the Patent Rules (SOR/2019-251).

Restoration of the right of priority is available for patent applications that have a filing date that is after October 30, 2019.

Abandonment under section 132 of the Patent Rules (SOR/2019-251) does not apply to Category 3 applications. Section 203 of the Patent Rules (SOR/2019-251) will apply and for the purposes of subsection 73(2) of the Patent Act. A Category 3 application is deemed to be abandoned if:

• A notice is sent under section 31 of the Patent Rules (SOR/2019-251) (requiring the applicant to appoint a patent agent) and the requirements are not complied with within three months after the date of the notice;
• The applicant does not reply in good faith to a request of the Commissioner for further drawings under subsection 27(5.2) of the Patent Act not later than three months after the date of the request;
• The applicant does not reply in good faith to a notice of the Commissioner referred to in section 65 of the Patent Rules (SOR/2019-251) (requiring the applicant to modify the application due to non-compliance) within three months of the date of the notice; or
• The applicant does not pay the final fee which is indicated on CIPO's webpage on Patent Fees, within the applicable time referred to in subsections 86(1), (6), (10) or (12) or 199(2) or (5) of the Patent Rules (SOR/2019-251).

An applicant requesting reinstatement of an application following a failure to pay a maintenance fee or a failure to request examination that occurred prior to the coming into force of the amended Patent Act and the Patent Rules (SOR/2019-251) on October 30, 2019 is not subject to the due care standard.

Section 73 of the Patent Act, as it read immediately before the coming into force of the amended Patent Act and the Patent Rules (SOR/2019-251) on October 30, 2019, applies with respect to reinstatement of applications deemed abandoned in these circumstances.

Abandonment under section 132 of the Patent Rules (SOR/2019-251) does not apply to Category 3 applications. Section 203 of the Patent Rules (SOR/2019-251) will apply and for the purposes of subsection 73(2) of the Patent Act. A Category 3 application is deemed to be abandoned if:

• A notice is sent under section 31 of the Patent Rules (SOR/2019-251) (requiring the applicant to appoint a patent agent) and the requirements are not complied with within three months after the date of the notice;
• The applicant does not reply in good faith to a request of the Commissioner for further drawings under subsection 27(5.2) of the Patent Act not later than three months after the date of the request;
• The applicant does not reply in good faith to a notice of the Commissioner referred to in section 65 of the Patent Rules (SOR/2019-251) (requiring the applicant to modify the application due to non-compliance) within three months of the date of the notice;
• The applicant does not pay the final fee which is indicated on CIPO's webpage on Patent Fees, within the applicable time referred to in subsections 86(1), (6), (10) or (12) or 199(2) or (5) of the Patent Rules (SOR/2019-251); or
• The applicant does not reply in good faith to a conditional notice of allowance of the Commissioner sent under subsection 86(1.1) and pay the final fee which is indicated on CIPO's webpage on Patent Fees, within the applicable time referred to in that subsection.

An applicant requesting reinstatement of an application following a failure to pay a maintenance fee or a failure to request examination that occurred prior to October 30, 2019 is not subject to the due care standard.

Section 73 of the Patent Act, as it read immediately before October 30, 2019, applies with respect to reinstatement of applications deemed abandoned in these circumstances.

In those cases of Category 3 applications as discussed above, where the final fee was not refunded and upon re-allowance, the Commissioner will not require payment in a notice of allowance sent after the reinstatement of the application (subsection 204(b) of the Patent Rules). Additionally, the refund does not automatically trigger a return to examination of the application.

In those cases of Category 3 applications as discussed above, where the final fee was not refunded and upon re-allowance, the Commissioner will not require payment in a notice of allowance or a conditional notice of allowance sent after the reinstatement of the application (subsection 204(b) of the Patent Rules). Additionally, the refund does not automatically trigger a return to examination of the application.

Section 78.55 of the Patent Act specifies that section 46 of the Patent Act, as it read immediately before the coming into force on October 30, 2019 of the amended Patent Act and the Patent Rules (SOR/2019-251) applies to maintenance fee due dates (not including the period of grace) before October 30, 2019. If the maintenance fee due date (not including the period of grace) is before October 30, 2019 and the maintenance fee is not paid on or before that due date, the patentee will have a 12-month grace period as per item 31 or 32 of Schedule II of the former Patent Rules as they read immediately before the coming into force date of October 30, 2019.

Section 78.55 of the Patent Act specifies that section 46 of the Patent Act, as it read immediately before October 30, 2019 of the amended Patent Act and the Patent Rules (SOR/2019-251) applies to maintenance fee due dates (not including the period of grace) before October 30, 2019. If the maintenance fee due date (not including the period of grace) is before October 30, 2019 and the maintenance fee is not paid on or before that due date, the patentee will have a 12-month grace period as per item 31 or 32 of Schedule II of the former Patent Rules as they read immediately before October 30, 2019.

N/A

33.13 Changes due to the coming-into-force of the Patent Rules Amending the Patent Rules (SOR/2022-XXX)

Date modified: October 2022

The excess claim fee applicable when requesting examination and when paying the final fee applies to applications for which examination was requested on or after October 3, 2022.

A request for continued examination is required under subsection 85.1(1) of the Patent Rules in respect of applications for which examination has been requested on or after October 3, 2022.

If an applicant requests continued examination under subsection 85.1(3) or (4) of the Patent Rules on or after October 3, 2022, the applicant will be required to make a subsequent request for continued examination after two examiner reports are issued.

A conditional notice of allowance under subsection 86(1.1) of the Patent Rules may be sent in respect of any application on or after October 3, 2022.

• Translation: If the international application is not entirely in English or French, the applicant must on the PCT national phase entry date submit a translation of the application (other than any text matter contained in a sequence listing) into English or French.

• Translation: If the description and claims contained in the international application are entirely in a language other than English or French, other than any sequence listing, the applicant must submit a translation of the description and claims (other than any a sequence listing) into English or French.

Priority Date Used in calculating Deadlines relating to National Phase Entry in Canada

Priority date used in calculating time limits relating to national phase entry in Canada

• Translation: If the international application is not entirely in English or French, the applicant must on the PCT national phase entry date submit a translation of the application (other than any text matter contained in a sequence listing) into English or French.

• Translation: If the description and claims contained in the international application are entirely in a language other than English or French, other than any sequence listing, the applicant must submit a translation of the description and claims (other any sequence listing) into English or French.

"deadline"

"time limit"

N/A

33.02.04 Translation of elements of application

Date modified: October 2022

An application may enter national phase with elements of the application in a foreign language. However, if a translation of those elements, or any part of those elements are not provided on or before the national phase entry date, various consequences may arise depending on the element of the application that is missing a translation.

The applicant must also provide a complete copy of the element of the application that contains the translated text matter and the text matter that is already in English or French. If a complete copy is provided, the applicant does not have to provide translations of the parts that are not in English or French.

If the applicant does not provide translations of the parts of the description or claims, or the text matter in a drawing or sequence listing, the untranslated text will not be taken into account for the purpose of interpreting the scope of protection being sought (see 12.02).

If the applicant does not provide a translation of an Article 19 statement, the statement may be disregarded by the Commissioner.

N/A

33.02.05 Notice requiring a translation of complete copy

Date modified: October 2022

If the applicant does not provide a translation of the abstract or the article 4 PCT request (RO/101), or if the applicant does not provide a complete copy of the description, claims, text matter in a drawing, or language-dependent free text contained in a sequence listing, the Commissioner may by notice require the applicant to provide the translation of the complete copy no later than three months after the date of the notice.

If the applicant does not comply with the notice, the application will be deemed to be abandoned under subsection 132(1)(h) of the Patent Rules.

N/A

33.02.06 Correction of Error in translations

Date modified: October 2022

If an applicant discovers an error in a translation that was submitted to the Commissioner on or before the national phase entry date of any element of an international application, the applicant may, under subsection 155.2(2) of the Patent Rules, correct the translation by submitting the following before the day on which a notice of allowance or a conditional notice of allowance is sent or, if that notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4) of the Patent Rules, before the day on which a notice of allowance or a conditional notice of allowance is sent again:

1. the corrected translation
2. a request that the corrected translation replace the original translation
3. a statement to the effect that
   1. at the time the original translation was submitted, it would have been obvious to a skilled translator fluent in both the original language and the language of translation that the original translation contained an error and that the corrected translation is an accurate translation,
   2. the error in the original translation occurred in spite of due care having been taken in its preparation, and
   3. the request is being made within a reasonable time after the applicant became aware of the error.

"name"

"naming"

Correction of error in name of applicant

Correction of error in the naming of an applicant

"name"

"naming"

In general, a PCT national phase application is subject to Canada's Patent Act and Patent Rules on the national phase entry date. However, there are certain exceptions and the following sections of the Patent Act do not apply to PCT national phase applications:

• Subsection 27(2) of the Patent Act (late fee and notice) regarding the petition and the application fee;
• Subsection 27(7) of the Patent Act (Application fee not paid);
• Section 27.01 of the Patent Act (Reference to a previously filed application);
• Section 28 of the Patent Act (various filing requirements);
• Section 28.01 of the Patent Act (Addition to the specification or addition of drawings to the application); and
• Subsection 78.1(2) of the Patent Act (Definition of "filing date") and subsection 78.2 of the Patent Act (transitional provisions respecting the filing date).

In general, a PCT national phase application is subject to Canada's Patent Act and Patent Rules on the national phase entry date. However, there are certain exceptions and the following sections of the Patent Act do not apply to PCT national phase applications:

• Subsection 27(7) of the Patent Act (Application fee not paid);
• Section 27.01 of the Patent Act (Reference to a previously filed application);
• Section 28 of the Patent Act (various filing requirements);
• Section 28.01 of the Patent Act (Addition to the specification or addition of drawings to the application);
• Subsection 38.2(3) of the Patent Act (language other than English or French); and
• Subsection 78.1(2) of the Patent Act (Definition of "filing date") and subsection 78.2 of the Patent Act (transitional provisions respecting the filing date).

33.08 Extensions of time

Date modified: October 2019

The extension of time periods under section 78 of the Patent Act does not apply in respect of a period of time fixed under the Patent Act for furnishing to the Commissioner in relation to an international application that has become a PCT national phase application, a document or information in accordance with the PCT before that international application became a PCT national phase application.

If a period of time was extended under Rule 80.5 of the Regulations under the PCT when the application was an international application, it is also considered to be extended when that application is a PCT national phase application.

33.08 Extensions of time

Date modified: October 2022

Section 78 of the Patent Act does not apply to international applications during the international phase. During the international phase, extensions of time are available only as provided for under the PCT and the Regulations under the PCT, including under PCT Rules 80.5, 82 and 82quater. Detailed information about extensions of time during the international phase is available in the PCT Applicant's Guide.

"the coming into force date of the Patent Rules"

"October 30, 2019"

34.02.02 List of Commissioner's notices

Date modified: June 2021

The following is a list of Commissioner's notices that can be sent under the Patent Act and the Patent Rules as well as their legislatives references :

Patent Act

• Subsection 28(2) Minimum Filing Requirements Not Met
• Subsection 27(7) Application Fee Not Paid
• Paragraph 27.1(2)b) Maintenance Fee Not Paid (Application)
• Paragraph 35(3)b) Request for Examination Not Done
• Subsection 35(5) Required Examination
• Subparagraph 46(1)(2)b) Maintenance Fee Not Paid (Patent)

Patent Rules

• Subsection 15(4) Translation Required
• Subsection 31(1) Appointment of Patent Agent Required
• Sections 40, 41, 41.1 Notice of Disregarded Communication
• Section 65 Compliance
• Subsection 72(1) Notice of Missing Parts
• Subsection 74(4) Copy of Priority Document Required
• Subsections 86(1),(6),(10),(12) Notice of Allowance
• Subsection 109(3) Missing Information or Fee for Correction of an Error in a Patent
• Subsection 154(7) PCT Legal Representative Entitlement Notice

34.02.02 List of Commissioner's notices

Date modified: October 2022

The following is a list of Commissioner's notices that can be sent under the Patent Act and the Patent Rules as well as their legislatives references:

Patent Act

• Subsection 28(2) Minimum Filing Requirements Not Met
• Subsection 27(7) Application Fee Not Paid
• Paragraph 27.1(2)b) Maintenance Fee Not Paid (Application)
• Paragraph 35(3)b) Request for Examination Not Done
• Subsection 35(5) Required Examination
• Subparagraph 46(1)(2)b) Maintenance Fee Not Paid (Patent)

Patent Rules

• Subsection 15(4) Translation Required
• Subsection 31(1) Appointment of Patent Agent Required
• Sections 40, 41, 41.1 Notice of Disregarded Communication
• Section 65 Notice of Non-Compliance
• Subsection 72(1) Notice of Missing Parts
• Subsection 74(4) Copy of Priority Document Required
• Subsection 85.1(1) and 85.1(2) Notice Requiring Continued Examination (this notice will likely be contained in an examiner's report (see section 34.04 below))
• Subsections 86(1), (6), (10), (12) Notice of Allowance
• Subsection 86(1.1) Conditional Notice of Allowance
• Subsections 86(14) Notice of Withdrawal of Notice of Allowance
• Subsections 86(14.1), (15) Notice of Withdrawal of Conditional Notice of Allowance
• Subsection 109(3) Missing Information or Fee for Correction of an Error in a Patent
• Subsection 154(7) PCT Applicant Entitlement Notice
• Subsection 155.2(1) PCT Notice of Error in Translation
• Subsection 155.5(6) PCT Compliance Notice for Translation

• Abandonment letters – prior to the coming into force of the Patent Rules (SOR/2019-251) formerly known as notices of abandonment

• Abandonment letters – prior to October 30, 2019 formerly known as notices of abandonment

Examiner requisitions and notices take a different form than notices from the Commissioner. An examiner's requisition or notice is unilingual and the date is located in the top corner of the document. Each examiner's requisition or notice includes an opening paragraph that indicates the required time period for response. The consequence for non-response within that time is identified in the opening or closing paragraph of the requisition or notice. The due date does not appear on the requisition or notice. The applicant can calculate the due date using the time period specified in the opening paragraph and adding it to the date provided on the notice or requisition. If the time period ends on a prescribed or designated day, the time period is deemed extended under subsection 78(1) of the Patent Act. For more information on time limits and deemed extensions of time, please Chapter 2. More information on examiner requisitions and notices can be found in sections 12.04 and 12.05.

Examiner reports and notices take a different form than notices from the Commissioner. An examiner's report or notice is unilingual and the date is located in the top corner of the document. Each examiner's report or notice includes an opening paragraph that indicates the required time period for response for each requisition and may inform the applicant of a requirement to request for continued examination within a required time period. The consequence for non-response within that time is identified in the opening or closing paragraph of the requisition or notice. The due date for each requisition does not appear on the requisition or notice. The applicant can calculate the due date using the time period specified in the opening paragraph and adding it to the date provided on the notice or requisition. If the time period ends on a prescribed or designated day, the time period is deemed extended under subsection 78(1) of the Patent Act. For more information on time limits and deemed extensions of time, please Chapter 2. More information on examiner reports and notices can be found in sections 12.04 and 12.05.

N/A

34.05 Conditional notices of allowance

Date modified: October 2022

The conditional notice of allowance also takes a different form than other notices from the Commissioner. The first page of the conditional notice of allowance will be bilingual like other notices from the Commissioner The due date to response to the conditional notice of allowance as well as the fee owing will be indicated in the top right corner of the notice. The defects listed in the conditional notice of allowance will be on the second page and unilingual. The notice will include the consequence of not responding to the conditional notice of allowance and not paying the fee (abandonment). For more information on time limits and deemed extensions of time, please see Chapter 2. More information on conditional notice of allowance can be found in section 25.01.01.

N/A

26-27 This does not apply to applications for which the request for examination was made prior to October 3, 2022.

28-29 This does not apply to applications for which the request for examination was made prior to October 3, 2022 unless there was a request for continued examination made under subsection 85.1(4) (see section 11.04.02c) on or after October 3, 2022.

N/A

33 More information on free text and language-dependent free text can be found in paragraphs 85-88 of the PCT sequence listing standard, WIPO Standard 26 (ST.26).

N/A

260 More information on free text and language-dependent free text can be found in paragraphs 85-88 of the PCT sequence listing standard, WIPO Standard 26 (ST.26).

N/A

261 While the analysis is similar, the requirements providing authority differ. Regularly-filed Canadian (non-PCT) applications must meet the requirements of section 91 of the Patent Rules, which indicates that the matter hypothetically added to the parent application must comply with all of section 38.2 of the Patent Act, with exception to subsection (4). PCT national phase applications must meet the requirements provided in section 155.7 of the Patent Rules, in which hypothetical amendments to the parent application must comply with subsection 38.2(1), without taking into account subsection (4). Subsection 38.2(1) of the Patent Act permits amendments subject to subsections 38.2(2)-(4). Subsections 38.2(3) and 38.2(3.1)(a) of the Act do not apply to PCT national phase applications, per section 159 of the Patent Rules. Accordingly, equivalents of these provisions are included in section 155.7 by reference to subsections 155.6(1) and 155.6(3) of the Patent Rules (by the broad, over-arching reference to section 155.6 of the Rules). As 155.6(4) provides similar requirements to 38.2(4) it is also not taken into account for the analysis.

N/A

262 While the analysis is similar, the requirements providing authority differ. Amendments to regularly-filed Canadian (non-PCT) applications must meet the requirements of subsection 38.2(3.1) of the Patent Act. As paragraph 38.2(1)(a) of the Act does not apply to PCT national phase applications (according to section 159 of the Patent Rules), it cannot be applied. Instead, the provisions of subsection 155.6(3) of the Rules permits an equivalent provision for PCT applications, while requiring further analysis for applications filed in a language other than English or French. Paragraph 38.2(3.1)(b) of the Act still applies to PCT national phase applications.

N/A

329 Section 46 of the Patent Rules indicates that the text matter in the abstract, the description, the drawings and the claims, other than any text matter contained in a sequence listing, must be entirely in English or entirely in French.

N/A

346-347 Applicable only for applications for which examination is requested on or after October 30, 2022.