Correction of errors introduced in the naming of an applicant at the time of filing or national entry
Note: This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/right holder to decide how to proceed with respect to a particular application or other matter.
Errors may sometimes occur in the naming of an applicant at the time of filing or national entry and may complicate and slow down the prosecution of a patent application. In its efforts to minimize prosecution delays, maintain accurate records and ensure that patents are always granted to the correct entity, the Patent Office wishes to clarify its position on the mechanisms available to address these situations and the requirements associated with each of those mechanisms.
This practice notice is intended to cover certain situations where the information appearing on CIPO's records relating to the identity of the applicant does not reflect what the inventor(s) or their legal representative(s) intended it to.
In order to determine the appropriate approach for addressing the discrepancy, one must identify which of the following situations applies and take the associated action.
1. Where it appears that one of the joint applicants should not have been joined or that another applicant or other applicants should have been joined
Subsection 31(3) provides that where an application is filed by joint applicants and it subsequently appears that one or more of them has had no part in the invention, the prosecution of the application may be carried on by the remaining applicant or applicants on satisfying the Commissioner by affidavit that the remaining applicant or applicants is or are the sole inventor or inventors.
The Office takes the position that subsection 31(3) only applies where an application is originally filed by joint applicants and only to the applicants who originally filed the application. Upon the receipt of a request complying with subsection 31(3), the Office will remove the applicant who had no part in the invention from the list of original applicants.
Subsection 31(4) provides that where an application is filed by one or more applicants and it subsequently appears that one or more further applicants should have been joined, the further applicant or applicants may be joined on satisfying the Commissioner that they should be so joined, and that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay.
The Office takes the position that subsection 31(4) only applies where the Commissioner is satisfied that one or more applicants should be joined to at least one identified existing applicant.
A request made under either subsection 31(3) or (4) must in addition:
- clearly identify the subsection under which the request is submitted;
- clearly identify the applicant(s) to be removed or added; and
- be accompanied by the required information (an affidavit under subsection 31(3) or information satisfying the Commissioner of the appropriate facts under subsection 31(4)).
2. Where the incorrect information on record results from an error that qualifies as a clerical error
Where the error in the naming of the applicant qualifies as a clerical error (whether it is made in the petition, the PCT Request, or the request for national entry), the error may be corrected, generally by way of certificate, following a request under section 8 of the Patent Act or section 35 of the Patent Rules. Such a request must:
- be submitted by the authorized correspondent;
- specify the provision under which the request is submitted;
- be accompanied by the prescribed fee, where applicable;
- specify the instrument of record in respect of which the correction is requested; and
- provide information satisfying the Commissioner that the error is clerical in nature (to that effect, the request may specify the circumstances that led to the error and which qualify the error to be considered a clerical error).
3. Where the error in the petition, PCT Request, or request for entry into the national phase does not qualify as a clerical error
In the absence of any clear guidance in the Patent Act and Rules on how to handle situations that do not fall within the categories previously listed, the Office will follow instructions submitted by the authorized correspondent provided that they adhere to the guidelines defined in paragraphs 3.1 and 3.2 below.
The Office takes no position regarding the legal consequences that effecting a correction under the following approach may have on the validity of the patent, on the validity of a priority claim or on the entitlement of an application to divisional status. It will be the responsibility of the authorized correspondent to ensure that the potential impact is taken into consideration.
Note that modifying the request for national entry in a way that would impact the name of the applicant may trigger the sending of a requisition under subsection 58(5) of the Patent Rules.
3.1. Where the requester establishes that the error was made in the naming of the correct applicant and did not result in the naming of an existing different entity
Where the requester establishes that the mistake was introduced in the naming of the correct applicant, that the error did not result in the identification of an existing different entity, and that the error was due to inadvertence or mistake without any intention to mislead, Office records may be corrected upon request.
The request must be submitted by the authorized correspondent (or the correct applicant if no agent has been appointed) and must contain a statement signed by the correct applicant or the authorized correspondent to the effect that
- the error arose while attempting to identify the entity now identified as the correct applicant;
- the error arose from inadvertence or mistake without any deceptive intention; and
- the mistakenly identified applicant does not exist; or
- the mistakenly identified applicant is the same entity as the correct applicant.
3.2. Where the error resulted in the identification of an incorrect applicant
Where the error resulted in the identification in the petition, PCT Request, or request for national entry of an entity different from the correct applicant, the Office may proceed to amend the name of the applicant on record where it is established that the incorrectly identified applicant is not the inventor nor the legal representative of the inventor and has had no part in the invention.
A request for correction must be submitted by the authorized correspondent (or the correct applicant if no agent has yet been appointed) and must contain:
- a statement signed by the incorrectly identified applicant to the effect that their name appeared on the petition, request for national entry, or PCT request in error; and
- a statement signed by the correct applicant or the authorized correspondent to the effect that the person or entity now identified as the correct applicant is the inventor or the legal representative of the inventor and that the error arose from inadvertence or mistake without any deceptive intention.