New Patent Rules 


December 2010 - (Intellectual Property Brief)

Intellectual Property Brief

Effective October 1, 2010, the latest set of amendments to the Canadian Patent Rules came into force. The most substantial change, eliminating the requirement for applicants to file a Declaration of Entitlement, will simplify the application process and removes what was seemingly an unnecessarily onerous filing requirement.

Previously, an applicant was required to file a declaration establishing its entitlement to file the application as at the filing date of the application. This was particularly troublesome for PCT applications that enter national phase proceedings in Canada years after the international filing date and where, as is sometimes the case, assignment or other ownership details are sorted out after the international filing date. Furthermore, the declaration of entitlement was a completion requirement that had to be met within a prescribed time period or otherwise completion fees were required for the application to be accepted.

The amendments to the Patent Rules have removed the requirement for filing a declaration of entitlement. All that is required now is for the applicant to declare that it is the "legal representative" of the inventor(s).  There is no requirement that this be satisfied at the international filing date. Accordingly, the onus is now on the applicant and its agent to ensure the applicant is indeed the legal representative of the inventor(s) and to ensure that a declaration to this effect is on record at the patent office. Thus, the application process has been simplified, but care should be taken to ensure that the applicant is the legal representatives of the inventor(s) for the purposes of filing the application.

Various other amendments to the Rules have been enacted, dealing mainly with formal issues and to simplify or clarify the language used for consistency throughout the legislation.

The next set of amendments to the Rules are expected to be approved and come into force in early 2011. The proposed rule changes include special provisions for expedited examination of patent applications related to green technology, and specifically to "technology the commercialization of which would help to resolve or mitigate environmental impacts or that conserves the natural environment and resources." Furthermore, the accelerated examination fee would be waived for these applications.

Accelerated examination for green technology applications is already available in the United States, under a similar pilot program. Applicants interested in finding out more about this issue or who are considering taking advantage of this and other accelerated examination strategies can contact the author directly.

This article appeared in the Lang Michener LLP Intellectual Property Brief Winter 2010-2011.