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Amendments to the Patent Rules to revise declaration of entitlement requirements come into force October 1, 2010

A new simplified declaration will avoid many of the difficulties posed by current declaration of entitlement requirements.

Rules Amending the Patent Rules (SOR/2009-319, registered November 26, 2009) were published in Part II of the Canada Gazette on December 9, 2009, and will come into force on October 1, 2010. Although many of the amendments are essentially editorial in nature, the amendments concern at least one matter of substance. This relates to the current requirement for a "declaration of entitlement" in a Canadian patent application.

Prior to June 2, 2007, an applicant was required to register evidence (usually in the form of an assignment) that the applicant was the legal representative of the inventor. Pursuant to amendments to the Canadian Patent Rules that came into force on June 2, 2007, this requirement was removed and replaced with a requirement for a declaration as to the applicant's entitlement, as of the filing date, to apply for and be granted a patent.

Although the 2007 amendments were intended to simplify the application procedure, the complexity of the prescribed declaration of entitlement form has proven to be problematic. The current declaration of entitlement form, which is based on a general purpose form prescribed in the PCT Administrative Instructions, requires identification of a specific basis of entitlement selected from a prescribed list including terms such as "an agreement," "consent," or "transfer of entitlement," none of which is defined in the Patent Act or Patent Rules. Furthermore, the form requires specific dates to be attributed to most of these bases of entitlement.

The amendments coming into force on October 1, 2010, will replace the requirement for the relatively complex declaration of entitlement document with a simple declaration that "the applicant is the legal representative of the inventor." The term "legal representatives" is defined broadly in the Patent Act as including "heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions."

The consequence of any inaccuracies in a declaration of entitlement is uncertain. Therefore, applicants may wish to refrain from filing declarations of entitlement in anticipation of the coming into force of the amended Patent Rules on October 1, 2010. This should at least be possible with respect to applications filed or entering the national phase on or after April 1, 2010, as any term set for filing a declaration of entitlement could not expire before October 1, 2010.

Finally, although neither the existing declaration of entitlement regime nor the simplified declaration procedure requires that an assignment from the inventor to the original applicant be registered in the Patent Office, there nevertheless remain provisions in the Patent Act relating to assignments. The interplay between these provisions and the Patent Rules regarding the declaration of entitlement or simplified declaration is not entirely clear. In particular, while the Patent Rules suggest that an assignment to someone other than the applicant will not be recognized, the Patent Act provides that an unregistered assignment is void against a subsequent assignee's claim under a registered assignment. Therefore, where there is an assignment in favour of an applicant, we cannot preclude the possibility that, if the assignment is not registered, it might be considered void against a subsequent assignment if the subsequent assignee managed to register the subsequent assignment. In view of this possibility, applicants may wish to take the cautious course of registering assignments from the inventors to the original applicant.