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 Proposed
Amendments to the Canadian Patent Rules
Catherine Lemay
On
July 11, 2009,
proposed amendments to the Patent Rules were published
in the Canada Gazette, Part I for public comment.
According to the Federal Government, the regulatory
amendments, which are scheduled to take effect 30 days after
they are registered, 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 (if adopted) affect the requirements
for completing a Canadian patent application and specifically,
the requirement to establish entitlement to file an
application.
Evolution of Changes
In recent years, many amendments to the Patent Rules
have been made with respect to the process by which an
Applicant applies for a patent in Canada. Prior to
June 2, 2007,
the Patent Rules specified that an applicant who was
not the inventor was required to register evidence (generally
in the form of an assignment) to establish that the Applicant
was the legal representative
of the inventor. Pursuant to the June 2, 2007 amendments, the
above requirement was removed and an Applicant is now
required, as part of the completion requirements for the
filing of an application, to submit a declaration as to the
Applicant’s entitlement, as of the filing date, to file for
and be granted a patent (referred to as “Declaration of
Entitlement”). Some of the possible bases/grounds of
entitlement include an assignment, an agreement, employment,
etc.
Requirement to File
“Declaration of Entitlement” Removed
The effect of the
July 11, 2009
proposed amendment will be that an
Applicant
will no longer,
for the purposes of “completing” an application,
be required to file a “Declaration of Entitlement”. The newly
proposed rule states that if the inventor is the applicant,
the application must simply contain a statement to that
effect.
When the
Applicant
is not the inventor, a statement that the applicant is the
“legal representative” of the inventor(s) will be sufficient
to complete the application. As for the current “Declaration
of Entitlement” regime, no further evidence in the form of
assignments will be required for completing an application. 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”.
Registration of Assignments
It should be noted, however, that although the present
requirement to file a “Declaration of Entitlement” and the new
proposed amendments do not require the registration of
assignments for “completing” an application, the Canadian
Patent Act suggests that assignments should be
registered.
Section 49(1) of the Patent Act, provides that “a
patent may be granted to any person to whom an inventor […]
has assigned in writing his right to obtain it…”
[emphasis added]. The Patent Act also
provides that “[e]very assignment of a patent […] shall be
registered in the Patent Office in the manner determined by
the Commissioner”
(section 50) and that an assignment affecting a Canadian
patent is void against a subsequent assignee unless the
assignment is registered at the Patent Office (section 51).
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 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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