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 New
Rules relating to Entitlement to File an Application Coming
into Force on October 1, 2010
Catherine Lemay
Proposed amendments to the Canadian Patent Rules are
moving forward as anticipated (see
September 2009 newsletter). The amendments were
published in Part II of the Canada Gazette on December
9, 2009 and are scheduled to come into force on October 1,
2010.
The anticipated
amendments are aimed at improving legal certainty, simplifying
processes, and ultimately reducing administrative burdens in
patent prosecution. Although the majority of the proposed
amendments appear to be house-keeping in nature, one
substantive change will affect the requirements for completing
a Canadian patent application and specifically, the
requirement to establish entitlement to file an application.
Requirement to File
“Declarations of Entitlement” Removed
When the proposed
changes take effect on October 1, 2010, an applicant will no
longer, for the purposes of “completing an application”, be
required to file a “Declaration of Entitlement”. Instead, the
newly proposed rules state that if the inventor is the
applicant, the application must simply contain a statement to
that effect. When the applicant is not the inventor, the
application must contain a declaration that the applicant is
the “legal representative” of the inventor(s) or, in the case
of PCT national phase applications, either a declaration that
the applicant is the “legal representative” or a declaration
in accordance with Rule 4.17 of the Regulations under the
PCT. A “legal representative” of the inventor should include
the owner of the rights to the invention, but may, as defined
in section 2 of the Patent Act include “heirs,
executors, administrators, guardians, curators, tutors,
assigns and all other persons claiming through or under
applicants for patents and patentees of inventions”.
The statement that
the applicant is the inventor or the declaration that the
applicant is the “legal representative” will also no longer be
required to “complete” an application. Thus, there will be no
prescribed timeline for providing the information to the
Canadian Patent Office. Instead, applicants that do not comply
with the requirements at the time of filing an application,
will be requisitioned by the Commissioner of Patents to do so
before the later of 3 months following the date of the
requisition and 12 months after the filing date of the
application.
The new rules will
come into force on October 1, 2010; however, transitional
provisions do provide applicants filing directly into Canada
(i.e. non PCT national phase applicants) the option of
substituting the current requirement of filing a Declaration
of Entitlement with the new requirements explained above.
Furthermore, applicants filing applications into Canada on or
after April 1, 2010 and having difficulties gathering the
necessary information/documentation to prepare a declaration
of entitlement, may wish to consider withholding from filing a
Declaration of Entitlement as it is unlikely that they would
have a final deadline to file a declaration of entitlement in
advance of October 1, 2010. The same is true of applications
entering the national phase on or after April 1, 2010.
Registration of
Assignments
Although the new
rules do not require the registration of assignments for
“completing” an application or evidencing an applicant’s
entitlement to file the application, the Canadian Patent
Act suggests that assignments should be registered.
Accordingly, applicants should record at the Canadian Patent
Office all chain of title documents from the inventor(s) to
the applicant, as well as any other changes in ownership (e.g.
assignments, mergers, name changes, etc.) as soon as possible
and, preferably, no later than at the time of payment of the
final issue fee in order to ensure that the patent grants in
the proper name and to minimize any issues that may arise with
regard to subsequent transfers of title and with regard to a
patentee’s rights in cases of enforcement.
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