Amendments to PCT national phase applications
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/patentee to decide how to proceed with respect to a particular application or other matter.
By this notice the Patent Office is issuing a reminder regarding its position with respect to the practice of amending PCT national phase patent applications.
Recent jurisprudence has highlighted the importance that communication with the patent office must be done by the authorized correspondent (Unicrop Ltd. v. Canada (Attorney General), 2010 FC 61; Unicrop Ltd. v. Canada (Attorney General) 2011 FCA 55; Excelsior Medical Corporation v. Canada (Attorney General), 2011 FC 407; Excelsior Medical Corp. v. Canada (Attorney General), 2011 FCA 303). Such actions include national phase amendments.
Thus, unless the applicant is the inventor, an appointment of agent must be done prior to submitting any amendments to the application, since, as previously stated, only amendments received from the authorized correspondent may be considered (subsection 6(1) of the Patent Rules).
Amendments submitted by a party other than the authorized correspondent during the national phase of PCT applications, including amendments submitted at the time of national entry, will not be entered for the application. The sender (as well as any authorized correspondent, if appointed) is informed of this action.
The practice expressed in this notice is effective immediately, and supersedes any previous practices, communicated or otherwise, related to amendments to PCT national phase applications.