Patent Rules
Small entity. The definition of a “small entity” has been amended to exclude: (a) an entity controlled directly or indirectly by another entity, other than a university, that employs more than 50 employees; and (b) an entity that has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.
In the event of a mistaken small entity payment, the Patent Office may grant an extension of time to pay the proper fee if the applicant or patentee states that, to the best of its knowledge, the small entity fee was paid in good faith and the request for the extension is being filed without undue delay.
The time extension is at the discretion of the Patent Office. Further, the definition of small entity retains imprecise language from the previous definition. As a result, at least until the policy and practice of the Canadian Patent Office in respect of accepting corrective fee payments become clear, we are maintaining our policy of submitting all fees at a standard level.
Assignments. A new requirement for an applicant to file a declaration of entitlement replaces the former title document registration requirements.
The declaration must state the basis for the applicant’s entitlement to apply. For example, the applicant may declare it is entitled as employer of the inventor(s), or by virtue of an assignment identified in the declaration.
It remains necessary to register title documentation to show any change of title from the original applicant, and any change of title after issuance of the patent.
Sequence listings. The amendments extend the use of the Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in International Patent Applications Under the PCT to non-PCT applications.
If a sequence listing is required, the specification must contain a sequence listing in electronic form. A paper copy of the sequence listing is no longer required.
It is not yet known how the Canadian Patent Office will catalogue, safeguard and publish sequence listings in electronic form. We therefore currently recommend that applicants include the content of the sequence listing in the text of the specification, in the form of a table.
Further information. A more detailed summary of these amendments to the Patent Rules may be found on our website. To request a copy, please contact the editors of this newsletter.
Other IP Regulations
The Trademarks Regulations have been amended to eliminate a number of government fees. The rules regarding service of documents in trademark oppositions have been revised to make it easier to serve documents.
Further amendments to shorten the time frames in trademark oppositions will come into effect on October 1, 2007.
Under the Copyright Regulations and the Industrial Design Regulations, the fees for obtaining certified copies of documents for use in certain court proceedings have been eliminated.