Amendments to Canada's Patent Rules

On May 16, 2007, amendments to the Patent Rules (Rules), the Trade-marks Regulations (1996), the Industrial Design Regulations, the Integrated Circuit Topography Regulations, and the Copyright Regulations were published in the Canada Gazette, Part II. (Most of the amendments came into force on June 2, 2007. Sections 4, 5, 6, 8 and 9 of the Regulations amending the Trade-marks Regulations (1996), however, will come into force on October 1, 2007). The most significant amendments to the Rules are those relating to the small entity regime. Small entity provisions were introduced in 1985, but the Federal Court of Appeal's decision in Dutch Industries Ltd v The Commissioner of Patents, et al. created uncertainty. The amendments clarify that: Currently, the required format for filing an application that contains a nucleotide or sequence listing is different in Canada than for PCT applications. The amendment to the Rules harmonizes the Canadian format with the PCT standard by referencing the latter in the Rules. The Rules currently require an applicant who is not the inventor to file an assignment, as well as to pay an associated fee. Applicants will now be required to provide the information by way of a declaration, either in the petition or a separate form. The requirement in the Patent Act to register assignments of patents has not been amended. The amended Rules are intended to clarify certain practices for PCT national entries. For example, currently, the Commissioner may send a courtesy letter to applicants inviting them to submit application completion documents, but there is no obligation to do so. The amended Rules require the Commissioner to provide notice that the application is incomplete. Abandonment of the application will not occur until after the applicant has failed to respond to the notice. A number of additional minor amendments are intended to "improve and facilitate dealings with CIPO and to accommodate technological advances." For the text of the amendments and the Regulatory Impact Analysis Statement, see: http://canadagazette.gc.ca/partII/2007/20070516/html/index-e.html Summary by: Clare McCurley