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Canadian Patent Rule Amendments 

What You Need To Know 

New Small Entity Definition and Declarations 

New Entitlement Declarations 

Webinar, October 11, 2007 

The Power of Original Thought 

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Konrad Sechley: Vancouver 

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Ursula McGuinness: Hamilton 

(905) 540-7117 

ursula.mcguinness@gowlings.com 

James Longwell: Toronto 

(416) 862-4325 

james.longwell@gowlings.com 


Introduction 

As of June 2, 2007, new Canadian Patent Rules in force 

Key changes to the Rules include: 

• Small Entity Regime 

• Small Entity definition 

• Small Entity declaration 

• Relief mechanism when reduced fee paid incorrectly 

• Filing Applicant’s Proof of Entitlement 

• Declaration of Entitlement 

• Sequence Listings 

• Transitional Provisions 


Overview 


Overview – Transitional Provisions 

Rule changes affect cases with “effective filing date” of 

June 2, 2007 or later 

Effective filing date means: 

For PCT: the international filing date 

For non-PCT: the filing date in Canada 

For cases with an effective filing date before June 2, 

2007, it is possible to elect to use the old or new 

Rules in respect of sequence listing, entitlement 

declaration and PCT Completion requirements 


Overview – Small Entity 

Critical point of determining whether applicant is a Small 

Entity is: 

For Non-PCT: CA filing date and 

For PCT: CA national entry date 

Possible to correct entity status if incorrectly claimed at 

the time of filing/national entry (without undue delay) 

New Small Entity definition 

Signed Small Entity Declaration must be filed 

For cases pending as of June 2, 2007 

A new Small Entity Declaration should be filed before 

making any payment at the small entity rate 


Overview - Entitlement Declarations 

Applications with effective filing date after June 2, 2007 

require an Entitlement Declaration describing how the 

applicant is entitled, prior to filing, to apply for the 

patent 

Filing assignment from inventors no longer required 

Entitlement Declaration is a Completion requirement: 

• if Entitlement Declaration (or extension request) is not 

filed in response to a CIPO letter requisitioning 

completion: 

• application is abandoned 

• application can be reinstated within 12 months 


Overview – Sequence Listings 

New Rules adopt the PCT Sequence Listing standard 

Only electronic copy of Sequence Listing required 

Sequence Listing is a Completion requirement: 

• If Sequence Listing (or extension request) is not 

filed in response to a CIPO letter requisitioning 

completion: 

• application is abandoned 

• application can be reinstated within 12 months 


Small Entity Changes 


Small Entity Regime 

Following case law that cast a long shadow over the 

Patent Office’s Small Entity practices, new rules have 

been developed to re-invigorate Small Entity cases 

Applicant/patentee that is a Small Entity in respect of an 

invention may file a signed declaration and pay 

reduced government fees for certain matters 

A new corrective fee payment mechanism has also 

been introduced 


Small Entity Regime 

Entitlement to Small Entity is determined once, as of: 

• Non-PCT cases: 

filing date in Canada, if applicant originally identified in 

the petition meets the definition of Small Entity 

• PCT cases: 

national entry date in Canada, if applicant who 

complies with national entry requirements meets the 

definition of Small Entity 


Small Entity Definition 

Patent Rules, Sub-s. 3.01 (3): Small Entity 

Employs 50 or fewer employees or is a university 

but does not include an entity that: 

(a) is controlled directly or indirectly by an entity, other than a 

university, that employs more than 50 employees; or 

(b) has transferred or licensed or has an obligation, other 

than a contingent obligation, to transfer or license any 

right in the invention to an entity, other than a university, 

that employs more than 50 employees. 


Small Entity Definition 

Current definition is similar to the prior definition but 

adds a new requirement that the Small Entity is not 

controlled by a large entity 

Definition’s exact meaning remains unknown: 

• “university” is not defined 

• “controlled” is not defined 

Our recommended approach is to file as a large entity 


Small Entity Declaration 

A signed declaration claiming Small Entity entitlement must be 

filed: 

• Declaration to state that “believes that they are entitled to 

pay fees at the small entity level” pursuant to the new 

definition 

• Declaration must be signed by the applicant/patentee or its 

patent agent 

• Declaration may be filed as part of the petition or separately 

We can prepare and sign the Small Entity Declaration on your clear 

instructions; however, execution by the applicant is preferred 


Small Entity Declaration 

For Small Entity case pending prior to June 2, 2007: 

• Require filing new signed declaration when paying 

first fees at small entity rate from June 2, 2007 

• Patent Office position: 

• fees paid from June 2, 2007 at the small entity 

rate require a signed declaration on file, otherwise 

the application would become abandoned upon 

the expiration of the time limit for paying the fee 

• Often earlier filed Small Entity Declarations were 

filed as part of an unsigned petition 

• Old Declaration applied to old Small Entity definition 


Small Entity Payment Corrections 

Commissioner of Patents is authorized to grant patent 

applicants/holders an extension of time to allow 

correction of fees mistakenly paid at the small entity 

level providing certain conditions are satisfied 

Applies to national entry, examination, maintenance and 

final fee payments only 

• existing Patent Act provisions apply to filing fees (S. 

28(2)) 

New correction provision applies only to fees paid on or 

after June 2, 2007 


Small Entity Payment Corrections 

Generally, an extension may be authorized only if: 

• A statement is filed that, to the best of its knowledge, 

the small entity fee was paid in good faith and the 

subject application for the extension is being filed 

without undue delay after the applicant / patentee 

became aware that the standard fee should have been 

paid; 

• A fee top-up is paid to the standard fee payable at the 

time the reduced fee was paid; and 

• A time extension fee ($200) is paid in respect of each 

fee that is the subject of the extension application 


Entitlement Changes 


Entitlement Declaration 

Effective Filing Date in Canada is after June 2, 2007 

Filing an Entitlement Declaration is a Completion requirement 

Completion Letter will issue if Declaration is not filed within 

prescribed time, setting a response deadline that is later of: 

• 3 months from the date of the letter; or 

• 12 months from the effective filing date in Canada 

Response deadline may be extended upon request and 

payment of fee 

$200 fee payable when filing Entitlement Declaration in 

response to Completion Letter 



Effective Filing Date is on or after June 2, 2007 

To avoid a Completion Letter: 

• The prescribed time for Non-PCT application is: 

• 15 months from filing date (no priority claim), or 

• 15 months from earliest priority date 

• The prescribed time for PCT application is: 

• 3 months from date of National Entry 



Effective Filing Date is before June 2, 2007 

For PCT applications with International Filing Date prior 

to June 2, 2007, regardless of date of National Entry; 

and 

For Non-PCT applications filed prior to June 2, 2007: 

• An assignment; or 

• An Entitlement Declaration may be filed 

CIPO practice has changed recently regarding timelines 


New Courtesy 

Letter Example: 

Applications with 

Effective Filing Date 

before June 2, 2007 




CIPO Courtesy Letter sets a 6 month deadline from 

date of letter for filing Declaration or Assignment 

If response to Courtesy Letter is not filed, then second 

CIPO letter is issued setting the following deadline: 

• 3 months from date of second CIPO letter or 

• 12 months from filing date 

No completion fee required 

Can obtain an extension of time 

If no response – application becomes abandoned 




6 month CIPO Courtesy Letter 

No response 

3 month CIPO second letter 

File 

Assignment 

File 

Entitlement 

Declaration 

Request 

Extension 

Abandon 

Application 

No completion fee required 



inventor 

employment 

context 

agreement 

assignment 

consent 

court order 

other 

name 

change 



Entitlement Declaration must list each of the matters 

necessary to explain applicant’s entitlement from the 

inventor(s) and any intervening parties 

A complete “chain of title” between inventor(s) and applicant 

named in the Petition / Request for National Entry is 

required 

For PCT Applications, a Declaration that follows PCT Rule 

4.17 for entitlement as at the effective filing date is 

acceptable 

Otherwise, form of Declaration is prescribed by Form 3 of the 

Patent Rules which states that is applicable only to events 

that have occurred before the filing date 



Inventor as applicant: 

• no assignment to be filed 

Employment context: 

• each jurisdiction sets own criteria: 

• is an employee agreement in place 

• does the agreement have an IP clause requiring 

employee to transfer patent rights to company 

• was it executed by the employee 

• is the date of the agreement prior to the effective filing 

date of the application in Canada 

• does employer have entitlement as a matter of law 



Agreement / Consent: 

• oral or written agreement / consent is acceptable 

(consider confirming oral agreement in writing) 

• must relate to rights in Canada 

• date of agreement / consent is required for 

Declaration 

• date must be before the effective filing date in 

Canada 



Assignment: 

• date of assignment must be before the filing date 

in Canada 

• must relate to rights in Canada 

• assignment to applicant may be filed at CIPO but 

not required 

• assignments, changes of name or other 

transfers after the effective filing date must 

recorded with CIPO 



If assignment executed on or after Canadian filing date: 

• Determine if alternate entitlement is available 

• employment context 

• agreement / consent 

• confirmatory assignment 

• If no alternative, consider removing applicant 

(Sect 31) by affidavit and co-submit assignment 


Sequence Listing Changes 


Sequence Listing 

PCT format now acceptable: 

• applies to PCT national phase, and non-PCT applications 

Only electronic form will be retained: 

• if file paper copy of “Sequence Listing” CIPO will request 

removal 

CIPO is accepting paper copy if filed as a “Sequence Listing 

Table” 



Filing of a Sequence Listing is a Completion requirement 

Completion Letter will issue if listing not filed within 

prescribed time, setting a response deadline that is the 

later of: 

• 3 months from the date of the letter; or 

• 12 months from the effective filing date 

Response deadline may be extended upon request and 

payment of fee 

$200 fee payable when filing Sequence Listing in response 

to Completion Letter 

If Sequence Listing not filed, application is abandoned 



To avoid a Completion Letter: 

• The prescribed time for Non-PCT application is: 

• 15 months from filing date (no priority claim); or 

• 15 months from earliest priority date 

• The prescribed time for PCT application is: 

• 3 months from date of National Entry 


Transitional Provisions 


Overview Of Transitional Provisions 

Effective Filing Date before June 2, 2007 

Applicant may elect between old Rules and new Rules 

independently for issues relating to: 

• Entitlement 

• Completion (PCT only) 

• Sequence Listings 

• e.g., Applicant may elect to comply with new Rules for 

sequence listings and old Rules for entitlement 


S.40 and S.41 – Entitlement 


For purposes of Entitlement: 

• Applicant may file Entitlement Declaration 

OR 

• Applicant may file an Assignment 


s.42 – Completing the Application: PCT 


For purposes of completing a PCT application: 

• Can substitute former s.62 for new s.94 

• Requirements under old s.62 are lighter than 

requirements under new s.94, however, under old s.62 

the onus is on the applicant to comply within the 

prescribed period: 

• CIPO will not issue notice of non-compliance and the 

application will be deemed abandoned if the requirements 

are not met 

• Under new s.94 CIPO is required to notify PCT applicants 

that certain requirements have not been met and provide 

an opportunity to respond 


S.43 – Sequence Listing 


Applicant can elect which format of listings to file: 

• Sequence listing may be filed according to s.111-131 of the 

old Rules that required text data element headings e.g.: 

 

 

etc 

OR 

• Sequence listing may be filed according to s.2 of the new 

Rules that adopts the PCT standard using numerical data 

element headings e.g. 

 

etc 


Thank you 

If you have any questions please feel free to ask your 

Gowlings contact for further information 

Please visit: http://www.gowlings.com 

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