ARCHIVED — Amendments to the Patent Rules, 2010 : Backgrounder

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Introduction

In 2007, the Standing Joint Committee for the Scrutiny of Regulations (SJC), a parliamentary committee established under the Rules of the Senate and the Standing Orders of the House of Commons, conducted a review of the Patent Rules and raised a number of points with the Canadian Intellectual Property Office (CIPO). These points encouraged CIPO to clarify certain provisions in the Patent Rules on the basis of legality and procedural aspects.

Proposed amendments

In addition, the Patent Office took the opportunity to propose further amendments in order to bring greater legal certainty and reduce the administrative burden for applicants.

The proposed amendments are as follows:

  1. simplification of the definition of the term "description";
  2. clarifying the purpose of section 16(4);
  3. consolidation of provisions that address the establishment of a filing date;
  4. clarity regarding the confidential period;
  5. amendment of incorrect reference to a section of the Patent Act regarding the payment of maintenance fees;
  6. updating the reference to the definition of "small entity" in Form 3 of Schedule I to the Rules;
  7. general clarification of Form 3 of Schedule I to the Rules; and
  8. simplifying the completion requirements.

Consultations

This package of amendments was open for a first consultation from November 27, 2008, to January 5, 2009. In the second round of consultations, from January 27, 2009, to February 26, 2009, in response to comments received during the first consultation on Package 1, CIPO revised its proposal regarding inventorship and ownership and provided stakeholders with a further opportunity to submit their comments on this specific issue. According to this new proposal, the Patent Rules were amended so that neither a Declaration of Entitlement nor the registration of any assignments would be required to complete an application.

IP Administration Framework

These amendments support CIPO's 2009-2010 activities to support the IP Administrative Framework, as set out in the 2009-2010 CIPO Business Plan. This includes simplifying and clarifying administrative processes for the delivery of services and products, improving legal certainty and reducing the administrative burden for applicants. These amendments will assist applicants in obtaining patent rights and provide greater flexibility through the elimination of several administrative requirements and the clarification of some Patent Rules provisions. In addition, they also support CIPO's approach to make the Patent Rules more compatible with international standards.

The proposed regulatory amendments are consistent with CIPO's mission of accelerating Canada's economic development by fostering the use of the intellectual property system and the exploitation of intellectual property information, encouraging invention, innovation, and creativity in Canada; and administering Canada's intellectual property system.