JUS-96-460-01
R.S.C. 1985, c. P-4, as am. R.S.C. 1985, c. 33 (3rd Supp.); S.C.
1992, c.1; 1993,
c.2; c. 15; c. 44; 1994, c. 26; c. 47; 1995, c 1; 1996, c. 8
copyright 1998-2007 Donald M. Cameron
Department of
Justice Canada Version
Table of Contents
Short Title
Interpretation
Her Majesty
Patent Office and Officers
Rules and Regulations
Proof of Patents
Patent Agents
Appeals
Use of Patents by Government
Government Owned Patents
Use of Patents for International Humanitarian Purposes to Address Public Health
Problems
Patents Relating to Nuclear Energy
General
Application for Patents
Joint
Applications
Improvements
Filing of Prior Art
Examination
Divisional Applications
Drawings, Models and Biological Materials
Amendments to Specifications and Drawings
Refusal of Patents
Grant of Patents
Form and Term of Patents
Reissue of Patents
Disclaimers
Re-Examination
Assignments and
Devolutions
Legal Proceedings in Respect
of Patents
Infringement
Impeachment
Judgments
Conditions
Abandonment and Reinstatement of Applications
Interpretation
Pricing Information
Excessive Prices
Sales and Expense Information
Inquiries
Patented Medicine Prices Review Board
Regulations
Meetings with Minister
Agreements with Provinces
Schedule 1
Schedule 2
Schedule 3
Schedule 4
1. This Act may be cited as the Patent
Act.
[R.S., c. P-4, s. 1.]
2. In this Act, except as otherwise provided,
"applicant"
"applicant" includes
an inventor and the legal representatives of an applicant or inventor;
"claim date"
"claim date" means the date of a claim in an application
for a patent in Canada, as determined in accordance with section
28.1;
"Commissioner"
"Commissioner" means the Commissioner of Patents;
"country"
"country" includes a Member
of the World Trade Organization, as defined in subsection 2(1) of the World
Trade Organization Agreement Implementation Act;
"filing date"
"filing
date" means, in relation to an application for a patent in Canada, the
date on which the application is filed, as determined in accordance with section
28;
"invention"
"invention" means any
new and useful art, process, machine, manufacture or composition of matter, or
any new and useful improvement in any art, process, machine, manufacture or
composition of matter;
"legal representatives"
"legal representatives" includes heirs, executors,
administrators, guardians, curators, tutors, assigns and all other persons
claiming through or under applicants for patents
and patentees of inventions;
"Minister"
"Minister" means the
Minister of Industry or such other member of the Queen's Privy Council for
Canada as is designated by the Governor in Council as the Minister for the
purposes of this Act;
"patent"
"patent" means letters patent
for an invention;
"patentee"
"patentee" means the person for the time being entitled to
the benefit of a patent;
"predecessor in title"
"predecessor in title" includes any person through whom an
applicant for a patent
in Canada claims the right to the patent;
"prescribed"
"prescribed"
means prescribed by rules or regulations of the Governor in Council and, in the
case of a fee, includes a fee determined in the manner prescribed;
"prescribed fee" [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 1]
"priority date" [Repealed, 1993, c. 15, s. 26]
"regulation" and "rule"
"regulation" and "rule" include rule, regulation and
form;
"request for priority"
"request for priority" means a request under
section 28.4.
"work on a commercial scale"
"work on a commercial scale" [Repealed, 1993, c. 44, s. 189]
[R.S., 1985, c. P-4, s. 2; R.S.,
1985, c. 33 (3rd Supp.), s. 1; 1992, c. 1, s. 145(f); 1993, c. 2, s. 2,
c. 15, s. 26, c. 44, s. 189; 1994, c. 47, s. 141; 1995, c. 1, s. 62.]
2.1 This Act is binding on Her Majesty in
right of Canada or a province.
[1993, c. 44, s. 190.]
3. There shall be attached to the Department
of Industry, or to such other department of the Government of Canada as may be
determined by the Governor in Council, an office called the Patent
Office.
[ R.S., 1985, c. P-4, s. 3; 1992, c. 1, s.
145(f); 1995, c. 1, s. 63.]
4. (1) The Governor in Council may appoint a Commissioner of Patents who shall, under the direction of the Minister, exercise the powers and perform the duties conferred and imposed on that officer by or pursuant to this Act.
(2) The Commissioner shall receive all applications, fees, papers, documents and models for patents, shall perform and do all acts and things requisite for the granting and issuing of patents of invention, shall have the charge and custody of the books, records, papers, models, machines and other things belonging to the Patent Office and shall have, for the purposes of this Act, all the powers that are or may be given by the Inquiries Act to a commissioner appointed under Part II of that Act.
(3) The Commissioner holds office during pleasure and shall be paid such annual salary as may be determined by the Governor in Council.
(4) The Commissioner may, after consultation with the Minister, delegate to any person he deems qualified any of his powers, duties and functions under this Act, except the power to delegate under this subsection.
(5) Any decision under this Act of a person
authorized to make the decision pursuant to subsection (4) may be appealed in
the like manner and subject to the like conditions as a decision of the
Commissioner under
this Act.
[R.S., c. P-4, s. 4; 1984, c. 40, s. 57.]
5. (1) An Assistant Commissioner of Patents may be appointed in the manner authorized by law and shall be a technical officer experienced in the administration of the Patent Office.
(2) When the
Commissioner is
absent or unable to act, the Assistant Commissioner, or, if he also is at the
same time absent or unable to act, another officer designated by the Minister,
may exercise the powers and shall perform the duties of the
Commissioner.
[R.S., c. P-4, s. 5.]
6. There may be appointed in the manner
authorized by law such principal examiners, examiners, associate examiners and
assistant examiners, clerks, stenographers and other assistants as are necessary
for the administration of this Act.
[R.S., c. P-4, s.
6.]
Officers of Patent Office not to deal in patents
7. (1) No officer or employee of the Patent Office shall buy, sell, acquire or traffic in any invention, patent or right to a patent, or any interest therein, and every purchase, sale, assignment, acquisition or transfer of any invention, patent or right to a patent, or any interest therein, made by or to any officer or employee is void.
(2) Subsection (1) does not apply to a sale by an
original inventor or to an acquisition under the last will, or by the intestacy,
of a deceased person.
[R.S., c. P-4, s. 7.]
8. Clerical errors in any instrument of record
in the Patent Office do not invalidate the instrument, but they may be corrected
under the authority of the Commissioner.
[R.S., 1985, c. P-4, s. 8; 1993, c. 15, s. 27.]
Electronic or other submission of documents, information or fees
8.1 (1) Subject to the regulations, any document, information or fee that is authorized or required to be submitted to the Commissioner under this Act may be submitted in electronic or other form in any manner specified by the Commissioner.
(2) For the purposes of this Act, any document,
information or fee submitted in accordance with subsection (1) is deemed to be
received by the Commissioner at the
time provided by the regulations.
[1993, c. 15, s.
27.]
Storage of documents or information in electronic or other form
8.2 Subject to the regulations, any document
or information received by the Commissioner under
this Act in electronic or other form may be entered or recorded by any
information storage device, including any system of mechanical or electronic
data processing, that is capable of reproducing stored documents or information
in intelligible form within a reasonable time.
[1993, c. 15, s.
27.]
9. If any patent is destroyed or lost, a
certified copy may be issued in lieu thereof on payment of the
prescribed
fee.
[R.S., c. P-4, s. 9.]
10. (1) Subject to subsections (2) to (6) and section 20, all patents, applications for patents and documents filed in connection with patents or applications for patents shall be open to public inspection at the Patent Office, under such conditions as may be prescribed.
(2) Except with the approval of the applicant, an application for a patent, or a document filed in connection with the application, shall not be open to public inspection before a confidentiality period of eighteen months has expired.
Beginning of confidentiality period
(3) The confidentiality period begins on the filing date of the application or, where a request for priority has been made in respect of the application, it begins on the earliest filing date of any previously regularly filed application on which the request is based.
(4) Where a request for priority is withdrawn on or before the prescribed date, it shall, for the purposes of subsection (3) and to the extent that it is withdrawn, be considered never to have been made.
(5) An application shall not be open to public inspection if it is withdrawn in accordance with the regulations on or before the prescribed date.
(6) A prescribed date referred to in subsection
(4)
or (5) must be no later than the date on which the confidentiality period expires.
[R.S., 1985, c. P-4, s. 10; R.S., 1985, c. 33 (3rd Supp.),
s. 2; 1993, c. 15, s. 28.]
11. Notwithstanding the exception in section
10, the Commissioner, on
the request of any person who states in writing the name of the inventor, if
available, the title of the invention and the number and date of a patent said
to have been granted in a named country other than
Canada, and who pays or tenders the prescribed fee, shall inform that person
whether an application for a patent of the same invention is or is not pending
in Canada.
[R.S., c. P-4, s. 11.]
12. (1) The Governor in Council may make rules or regulations
(a) respecting the form and contents of applications for patents;
(b) respecting the form of the Register of Patents and of the indexes thereto;
(c) respecting the registration of assignments, transmissions, disclaimers, judgments or other documents relating to any patent;
(d) respecting the form and contents of any certificate issued pursuant to this Act;
(e) prescribing the fees or the manner of determining the fees that may be charged in respect of the filing of applications for patents or the taking of other proceedings under this Act or under any rule or regulation made pursuant to this Act, or in respect of any services or the use of any facilities provided thereunder by the Commissioner or any person employed in the Patent Office;
(f) prescribing the fees or the manner of determining the fees that shall be paid to maintain in effect an application for a patent or to maintain the rights accorded by a patent;
(g) respecting the payment of any prescribed fees including the time when and the manner in which such fees shall be paid, the additional fees that may be charged for the late payment of such fees and the circumstances in which any fees previously paid may be refunded in whole or in part;
(h) for carrying into effect the terms of any treaty, convention, arrangement or engagement that subsists between Canada and any other country;
(i) for carrying into effect, notwithstanding anything in this Act, the Patent Cooperation Treaty done at Washington on June 19, 1970, including any amendments, modifications and revisions made from time to time to which Canada is a party;
(j) respecting the entry on, the maintenance of and the removal from the register of patent agents of the names of persons and firms, including the qualifications that must be met and the conditions that must be fulfilled by a person or firm before the name of the person or firm is entered thereon and to maintain the name of the person or firm on the register;
(j.1) respecting the submission of documents, information or fees under section 8.1, including
(i) the documents, information or fees that may be submitted in electronic or other form under that section,
(ii) the persons or classes of persons by whom they may be submitted, and
(iii) the time at which they are deemed to be received by the Commissioner;
(j.2) respecting the entering or recording of any document or information under section 8.2;
(j.3) prescribing the manner in which an application for a patent may be withdrawn and, for the purposes of subsections 10(4) and (5), prescribing the date, or the manner of determining the date, on or before which a request for priority or an application for a patent must be withdrawn;
(j.4) respecting requests for priority, including
(i) the period within which priority must be requested,
(ii) the manner in which and period within which the Commissioner must be informed of the matters referred to in subsection 28.4(2),
(iii) the documentation that must be filed in support of requests for priority, and
(iv) the withdrawal of requests for priority;
(j.5) respecting the time within which requests for mination must be made and prescribed fees must be paid under subsection 35(1);
(j.6) respecting the deposit of biological material for the purposes of section 38.1;
(j.7) respecting the manner in which amendments may be made to specifications or drawings furnished as part of an application for a patent;
(j.8) authorizing the Commissioner to extend, subject to any prescribed terms and conditions, the time fixed by or under this Act for doing anything where the Commissioner is satisfied that the circumstances justify the extension;
(k) prescribing any other matter that by any provision of this Act is to be prescribed; and
(l) generally, for carrying into effect the objects and purposes of this Act or for ensuring the due administration thereof by the Commissioner and other officers and employees of the Patent Office.
(2) Any rule or regulation made by the Governor in
Council has the same force and effect as if it had been enacted herein.
[R.S., 1985, c. P-4, s. 12; R.S., 1985, c. 33 (3rd Supp.), s. 3;
1993, c. 15, s. 29.]
13. (1) The Commissioner shall cause a seal to be made for the purposes of this Act and may cause to be sealed therewith every patent and other instrument and copy thereof issuing from the Patent Office.
(2) Every court, judge and person shall take notice
of the seal of the Patent Office, shall admit the impressions thereof in
evidence in like manner as the impressions of the Great Seal are admitted in
evidence and shall take notice of and admit in evidence, without further proof
and without production of the originals, all copies or extracts certified under
the seal of the Patent Office to be copies of or extracts from documents
deposited in that Office.
[R.S., c. P-4, s. 13.]
Certified copies of patents as evidence
14. In any action or proceeding respecting a
patent authorized to be had or taken in Canada under this Act, a copy of any
patent granted in any other country, or any official
document connected therewith, purporting to be certified under the hand of the
proper officer of the government of the country in which the patent has been
obtained, may be produced before the court or a judge thereof, and the copy of
the patent or document purporting to be so certified may be admitted in evidence
without production of the original and without proof of the signature or
official character of the person appearing to have signed it.
[
R.S., c. P-4, s. 14.]
15. A register of patent agents shall be kept
in the Patent Office on which shall be entered the names of all persons and
firms entitled to represent applicants in the
presentation and prosecution of applications for patents or in other business
before the Patent Office.
[ R.S., 1985, c. P-4, s. 15; R.S.,
1985, c. 33 (3rd Supp.), s. 4.]
16. For gross misconduct or any other cause
that he may deem sufficient, the Commissioner may
refuse to recognize any person as a patent agent or attorney either generally or
in any particular case.
[ R.S., c. P-4, s. 16.]
17. In all cases where an appeal is provided
from the decision of the Commissioner to the
Federal Court under this Act, the appeal shall be had and taken pursuant to the
Federal Courts Act and the rules and practice of that Court.
[R.S., c. P-4, s. 17; R.S., c. 10(2nd Supp.), s. 64.]
18.(1) Whenever an appeal to the Federal Court from the decision of the Commissioner is permitted under this Act, notice of the decision shall be mailed by the Commissioner by registered letter addressed to the interested parties or their respective agents.
(2) The appeal shall be taken within three months
after the date of mailing of the notice, unless otherwise provided by or under
this Act.
[R.S., 1985, c. P-4, s. 18; 1993, c. 15, s.
30.]
Government may apply to use patented invention
19. (1) Subject to section 19.1, the Commissioner may, on application by the Government of Canada or the government of a province, authorize the use of a patented invention by that government.
(2) Subject to section 19.1, the use of the patented invention may be authorized for such purpose, for such period and on such other terms as the Commissioner considers expedient but the Commissioner shall settle those terms in accordance with the following principles:
(a) the scope and duration of the use shall be limited to the purpose for which the use is authorized;
(b) the use authorized shall be non-exclusive; and
(c) any use shall be authorized predominantly to supply the domestic market.
(3) The Commissioner shall notify the patentee of any use of the patented invention that is authorized under this section.
(4) Where the use of the patented invention is authorized, the authorized user shall pay to the patentee such amount as the Commissioner considers to be adequate remuneration in the circumstances, taking into account the economic value of the authorization.
(5) The Commissioner may, on application by the patentee and after giving all concerned parties an opportunity to be heard, terminate the authorization if the Commissioner is satisfied that the circumstances that led to the granting of the authorization have ceased to exist and are unlikely to recur, subject to such conditions as the Commissioner deems appropriate to protect the legitimate interests of the authorized user.
Authorization not transferable
(6) An authorization granted under this section is
not transferable.
[R.S., 1985, c. P-4, s. 19; 1993, c. 44, s.
191.]
Conditions for authorizing use
19.1 (1) The Commissioner may not authorize the use of a patented invention under section 19 unless the applicant establishes that
(a) it has made efforts to obtain from the patentee on reasonable commercial terms and conditions the authority to use the patented invention; and
(b) its efforts have not been successful within a reasonable period.
(2) Subsection (1) does not apply in cases of national emergency or extreme urgency or where the use for which the authorization is sought is a public non-commercial use.
(3) The Commissioner may not, under section 19, authorize any use that is a prescribed use unless the proposed user complies with the prescribed conditions.
Limitation on use of semi-conductor technology
(4) The Commissioner may
not, under section 19, authorize any use of semi-conductor technology other than
a public non-commercial use.
[1993, c. 44, s. 191; 1994, c. 47,
s. 142.]
19.2 Any decision made by the Commissioner under
section 19 or 19.1 is subject to appeal to the Federal Court.
[1993, c. 44, s. 191.]
19.3 (1) The Governor in Council may make regulations for the purpose of implementing, in relation to patents, Article 1720 of the Agreement.
(2) In subsection (1), "Agreement" has the same
meaning as in subsection 2(1) of the North American Free Trade Agreement
Implementation Act.
[1993, c. 44, s. 191.]
Assignment to Minister of National Defence
20. (1) Any officer, servant or employee of the Crown or of a corporation that is an agent or servant of the Crown, who, acting within the scope of his duties and employment, invents any invention in instruments or munitions of war shall, if so required by the Minister of National Defence, assign to that Minister on behalf of Her Majesty all the benefits of the invention and of any patent obtained or to be obtained for the invention.
(2) Any person other than a person described in subsection (1) who invents an invention described in that subsection may assign to the Minister of National Defence on behalf of Her Majesty all the benefits of the invention and of any patent obtained or to be obtained for the invention.
Inventor entitled to compensation
(3) An inventor described in subsection (2) is entitled to compensation for an assignment to the Minister of National Defence under this Act and in the event that the consideration to be paid for the assignment is not agreed on, it is the duty of the Commissioner to determine the amount of the consideration, which decision is subject to appeal to the Federal Court.
Proceedings before Federal Court
(4) Proceedings before the Federal Court under subsection (3) shall be held in camera on request made to the court by any party to the proceedings.
(5) An assignment to the Minister of National Defence under this Act effectually vests the benefits of the invention and patent in the Minister of National Defence on behalf of Her Majesty, and all covenants and agreements therein contained for keeping the invention secret and otherwise are valid and effectual, notwithstanding any want of valuable consideration, and may be enforced accordingly by the Minister of National Defence.
Person making assignment and person having knowledge thereof
(6) Any person who has made an assignment to the Minister of National Defence under this section, in respect of any covenants and agreements contained in such assignment for keeping the invention secret and otherwise in respect of all matters relating to that invention, and any other person who has knowledge of such assignment and of such covenants and agreements, shall be, for the purposes of the Security of Information Act, deemed to be persons having in their possession or control information respecting those matters that has been entrusted to them in confidence by any person holding office under Her Majesty, and the communication of any of that information by the first mentioned persons to any person other than one to whom they are authorized to communicate with, by or on behalf of the Minister of National Defence, is an offence under section 4 of the Security of Information Act.
Minister may submit application for patent
(7) Where any agreement for an assignment to the Minister of National Defence under this Act has been made, the Minister of National Defence may submit an application for patent for the invention to the Commissioner, with the request that it be examined for patentability, and if the application is found allowable may, before the grant of any patent thereon, certify to the Commissioner that, in the public interest, the particulars of the invention and of the manner in which it is to be worked are to be kept secret.
(8) If the Minister of National Defence so certifies, the application and specification, with the drawing, if any, and any amendment of the application, and any copies of those documents and the drawing and the patent granted thereon shall be placed in a packet sealed by the Commissioner under authority of the Minister of National Defence.
(9) The packet described in subsection (8) shall, until the expiration of the term during which a patent for the invention may be in force, be kept sealed by the Commissioner, and shall not be opened except under the authority of an order of the Minister of National Defence.
Delivery of secret application
(10) The packet described in subsection (8) shall be delivered at any time during the continuance of the patent to any person authorized by the Minister of National Defence to receive it, and shall, if returned to the Commissioner, be kept sealed by him.
(11) On the expiration of the term of the patent, the packet described in subsection (8) shall be delivered to the Minister of National Defence.
(12) No proceeding by petition or otherwise lies to have declared invalid or void a patent granted for an invention in relation to which a certificate has been given by the Minister of National Defence under subsection (7), except by permission of the Minister.
Prohibition of publication and inspection
(13) No copy of any specification or other document or drawing in respect of an invention and patent, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open to the inspection of the public, but, except as otherwise provided in this section, this Act shall apply in respect of the invention and patent.
(14) The Minister of National Defence may at any time waive the benefit of this section with respect to any particular invention, and the specification, documents and drawing relating thereto shall thereafter be kept and dealt with in the regular way.
(15) No claim shall be allowed in respect of any infringement of a patent that occurred in good faith during the time that the patent was kept secret under this section, and any person who, before the publication of the patent, had in good faith done any act that, but for this subsection would have given rise to a claim, is entitled, after the publication, to obtain a licence to manufacture, use and sell the patented invention on such terms as may, in the absence of agreement between the parties, be settled by the Commissioner or by the Federal Court on appeal from the Commissioner.
(16) The communication of any invention for any improvement in munitions of war to the Minister of National Defence, or to any person or persons authorized by the Minister of National Defence to investigate the invention or the merits thereof, shall not, nor shall anything done for the purposes of the investigation, be deemed use or publication of the invention so as to prejudice the grant or validity of any patent for the invention.
Order to keep non-assigned application secret
(17) The Governor in Council, if satisfied that an invention relating to any instrument or munition of war, described in any specified application for patent not assigned to the Minister of National Defence, is vital to the defence of Canada and that the publication of a patent therefor should be prevented in order to preserve the safety of the State, may order that the invention and application and all the documents relating thereto shall be treated for all purposes of this section as if the invention had been assigned or agreed to be assigned to the Minister of National Defence.
(18) The Governor in Council may make rules for the
purpose of ensuring secrecy with respect to applications and patents to which
this section applies and generally to give effect to the purpose and intent
thereof.
[R.S., c. P-4, s. 20; R.S., c. 10(2nd Supp.), s.
64., S.C. 2001, c. 41, s. 36]
Agreement between Canada and other government
21. Where by any agreement between the
Government of Canada and any other government it is provided that the Government
of Canada will apply section 20 to inventions disclosed in any application for a
patent assigned or agreed to be assigned by the inventor to that other
government, and the Commissioner is
notified by any minister of the Crown that the agreement extends to an invention
in a specified application, the application and all the documents relating
thereto shall be dealt with as provided in section 20, except subsections (3)
and (4), as if the invention had been assigned or agreed to be assigned to the
Minister of National Defence.
[R.S., c. P-4, s. 21.]
USE OF PATENTS FOR INTERNATIONAL HUMANITARIAN PURPOSES TO ADDRESS PUBLIC HEALTH PROBLEMS
Purpose21.01 The purpose of sections 21.02 to 21.2 is to give effect to Canada's and Jean Chrétien's pledge to Africa by facilitating access to pharmaceutical products to address public health problems afflicting many developing and least-developed countries, especially those resulting from HIV/AIDS, tuberculosis, malaria and other epidemics.
[2004, c. 23, s. 1.]
21.02 The definitions in this section apply in this section and in sections 21.03 to 21.19.
“authorization”
“authorization” means an authorization granted under subsection 21.04(1), and includes an authorization renewed under subsection 21.12(1).
“General Council”
“General Council” means the General Council of the WTO established by paragraph 2 of Article IV of the Agreement Establishing the World Trade Organization, signed at Marrakesh on April 15, 1994.
“General Council Decision”
“General Council Decision” means the decision of the General Council of August 30, 2003 respecting Article 31 of the TRIPS Agreement, including the interpretation of that decision in the General Council Chairperson's statement of that date.
“patented product”
“patented product” means a product the making, constructing, using or selling of which in Canada would infringe a patent in the absence of the consent of the patentee.
“pharmaceutical product”
“pharmaceutical product” means any patented product listed in Schedule 1 in, if applicable, the dosage form, the strength and the route of administration specified in that Schedule in relation to the product.
“TRIPS Agreement”
“TRIPS Agreement” means the Agreement on Trade-Related Aspects of Intellectual Property Rights, being Annex 1C of the Agreement Establishing the World Trade Organization, signed at Marrakesh on April 15, 1994.
“TRIPS Council”
“TRIPS Council” means the council referred to in the TRIPS Agreement.
“WTO”
“WTO” means the World Trade Organization established by Article I of the Agreement Establishing the World Trade Organization, signed at Marrakesh on April 15, 1994.
[2004, c. 23, s. 1.]
21.03 (1) The Governor in Council may, by order,
(a) on the recommendation of the Minister and the Minister of Health, amend Schedule 1
(i) by adding the name of any patented product that may be used to address public health problems afflicting many developing and least-developed countries, especially those resulting from HIV/AIDS, tuberculosis, malaria and other epidemics and, if the Governor in Council considers it appropriate to do so, by adding one or more of the following in respect of the patented product, namely, a dosage form, a strength and a route of administration, and
(ii) by removing any entry listed in it;
(b) on the recommendation of the Minister of Foreign Affairs, the Minister for International Trade and the Minister for International Cooperation, amend Schedule 2 by adding the name of any country recognized by the United Nations as being a least-developed country that has,
(i) if it is a WTO Member, provided the TRIPS Council with a notice in writing stating that the country intends to import, in accordance with the General Council Decision, pharmaceutical products, as defined in paragraph 1(a) of that decision, and
(ii) if it is not a WTO Member, provided the Government of Canada with a notice in writing through diplomatic channels stating that the country intends to import pharmaceutical products, as defined in paragraph 1(a) of the General Council Decision, that it agrees that those products will not be used for commercial purposes and that it undertakes to adopt the measures referred to in Article 4 of that decision;
(c) on the recommendation of the Minister of Foreign Affairs, the Minister for International Trade and the Minister for International Cooperation, amend Schedule 3 by adding the name of any WTO Member not listed in Schedule 2 that has provided the TRIPS Council with a notice in writing stating that the WTO Member intends to import, in accordance with the General Council Decision, pharmaceutical products, as defined in paragraph 1(a) of that decision; and
(d) on the recommendation of the Minister of Foreign Affairs, the Minister for International Trade and the Minister for International Cooperation, amend Schedule 4 by adding the name of
(i) any WTO Member not listed in Schedule 2 or 3 that has provided the TRIPS Council with a notice in writing stating that the WTO Member intends to import, in accordance with the General Council Decision, pharmaceutical products, as defined in paragraph 1(a) of that decision, or
(ii) any country that is not a WTO Member and that is named on the Organization for Economic Co-operation and Development's list of countries that are eligible for official development assistance and that has provided the Government of Canada with a notice in writing through diplomatic channels
(A) stating that it is faced with a national emergency or other circumstances of extreme urgency,
(B) specifying the name of the pharmaceutical product, as defined in paragraph 1(a) of the General Council Decision, and the quantity of that product, needed by the country to deal with the emergency or other urgency,
(C) stating that it has no, or insufficient, pharmaceutical capacity to manufacture that product, and
(D) stating that it agrees that that product will not be used for commercial purposes and that it undertakes to adopt the measures referred to in Article 4 of the General Council Decision.
Restriction - Schedule 3
(2) The Governor in Council may not add to Schedule 3 the name of any WTO Member that has notified the TRIPS Council that it will import, in accordance with the General Council Decision, pharmaceutical products, as defined in paragraph 1(a) of that decision, only if faced with a national emergency or other circumstances of extreme urgency.
Removal from Schedules 2 to 4
(3) The Governor in Council may, by order, on the recommendation of the Minister of Foreign Affairs, the Minister for International Trade and the Minister for International Cooperation, amend any of Schedules 2 to 4 to remove the name of any country or WTO Member if
(a) in the case of a country or WTO Member listed in Schedule 2, the country or WTO Member has ceased to be recognized by the United Nations as being a least-developed country or, in the case of a country that is not a WTO Member, the country has permitted any product imported into that country under an authorization to be used for commercial purposes or has failed to adopt the measures referred to in Article 4 of the General Council Decision;
(b) in the case of a WTO Member listed in Schedule 3, the WTO Member has notified the TRIPS Council that it will import, in accordance with the General Council Decision, pharmaceutical products, as defined in paragraph 1(a) of that decision, only if faced with a national emergency or other circumstances of extreme urgency;
(c) in the case of a WTO Member listed in Schedule 4, the WTO Member has revoked any notification it has given to the TRIPS Council that it will import pharmaceutical products, as defined in paragraph 1(a) of the General Council Decision, only if faced with a national emergency or other circumstances of extreme urgency;
(d) in the case of a country listed in Schedule 4 that is not a WTO Member,
(i) the name of the country is no longer on the Organization for Economic Co-operation and Development's list of countries that are eligible for official development assistance,
(ii) the country no longer faces a national emergency or other circumstances of extreme urgency,
(iii) the country has permitted any product imported into that country under an authorization to be used for commercial purposes, or
(iv) the country has failed to adopt the measures referred to in Article 4 of the General Council Decision;
(e) in the case of any country or WTO Member listed in Schedule 3 or 4, the country or WTO Member has become recognized by the United Nations as a least-developed country; and
(f) in the case of any country or WTO Member listed in any of Schedules 2 to 4, the country has notified the Government of Canada, or the WTO Member has notified the TRIPS Council, that it will not import pharmaceutical products, as defined in paragraph 1(a) of the General Council Decision.
Timeliness of orders
(4) An order under this section shall be made in a timely manner.
[2004, c. 23, s. 1.
]
Authorization
21.04 (1) Subject to subsection (3), the Commissioner shall, on the application of any person and on the payment of the prescribed fee, authorize the person to make, construct and use a patented invention solely for purposes directly related to the manufacture of the pharmaceutical product named in the application and to sell it for export to a country or WTO Member that is listed in any of Schedules 2 to 4 and that is named in the application.
Contents of application
(2) The application must be in the prescribed form and set out
(a) the name of the pharmaceutical product to be manufactured and sold for export under the authorization;
(b) prescribed information in respect of the version of the pharmaceutical product to be manufactured and sold for export under the authorization;
(c) the maximum quantity of the pharmaceutical product to be manufactured and sold for export under the authorization;
(d) for each patented invention to which the application relates, the name of the patentee of the invention and the number, as recorded in the Patent Office, of the patent issued in respect of that invention;
(e) the name of the country or WTO Member to which the pharmaceutical product is to be exported;
(f) the name of the governmental person or entity, or the person or entity permitted by the government of the importing country, to which the product is to be sold, and prescribed information, if any, concerning that person or entity; and
(g) any other information that may be prescribed.
Conditions for granting of authorization
(3) The Commissioner shall authorize the use of the patented invention only if
(a) the applicant has complied with the prescribed requirements, if any;
(b) the Minister of Health has notified the Commissioner that the version of the pharmaceutical product that is named in the application meets the requirements of the Food and Drugs Act and its regulations, including the requirements under those regulations relating to the marking, embossing, labelling and packaging that identify that version of the product as having been manufactured
(i) in Canada as permitted by the General Council Decision, and
(ii) in a manner that distinguishes it from the version of the pharmaceutical product sold in Canada by, or with the consent of, the patentee or patentees, as the case may be;
(c) the applicant provides the Commissioner with a solemn or statutory declaration in the prescribed form stating that the applicant had, at least thirty days before filing the application,
(i) sought from the patentee or, if there is more than one, from each of the patentees, by certified or registered mail, a licence to manufacture and sell the pharmaceutical product for export to the country or WTO Member named in the application on reasonable terms and conditions and that such efforts have not been successful, and
(ii) provided the patentee, or each of the patentees, as the case may be, by certified or registered mail, in the written request for a licence, with the information that is in all material respects identical to the information referred to in paragraphs (2)(a) to (g); and
(d) the applicant also provides the Commissioner with
(i) if the application relates to a WTO Member listed in Schedule 2, a certified copy of the notice in writing that the WTO Member has provided to the TRIPS Council specifying the name of the pharmaceutical product, as defined in paragraph 1(a) of the General Council Decision, and the quantity of that product, needed by the WTO Member, and
(A) a solemn or statutory declaration in the prescribed form by the person filing the application stating that the product to which the application relates is the product specified in the notice and that the product is not patented in that WTO Member, or
(B) a solemn or statutory declaration in the prescribed form by the person filing the application stating that the product to which the application relates is the product specified in the notice and a certified copy of the notice in writing that the WTO Member has provided to the TRIPS Council confirming that the WTO Member has, in accordance with Article 31 of the TRIPS Agreement and the provisions of the General Council Decision, granted or intends to grant a compulsory licence to use the invention pertaining to the product,
(ii) if the application relates to a country listed in Schedule 2 that is not a WTO Member, a certified copy of the notice in writing that the country has provided to the Government of Canada through diplomatic channels specifying the name of the pharmaceutical product, as defined in paragraph 1(a) of the General Council Decision, and the quantity of that product, needed by the country, and
(A) a solemn or statutory declaration in the prescribed form by the person filing the application stating that the product to which the application relates is the product specified in the notice and that the product is not patented in that country, or
(B) a solemn or statutory declaration in the prescribed form by the person filing the application stating that the product to which the application relates is the product specified in the notice and a certified copy of the notice in writing that the country has provided to the Government of Canada through diplomatic channels confirming that the country has granted or intends to grant a compulsory licence to use the invention pertaining to the product,
(iii) if the application relates to a WTO Member listed in Schedule 3, a certified copy of the notice in writing that the WTO Member has provided to the TRIPS Council specifying the name of the pharmaceutical product, as defined in paragraph 1(a) of the General Council Decision, and the quantity of that product, needed by the WTO Member, and stating that the WTO Member has insufficient or no pharmaceutical manufacturing capacity for the production of the product to which the application relates, and
(A) a solemn or statutory declaration in the prescribed form by the person filing the application stating that the product to which the application relates is not patented in that WTO Member, or
(B) a certified copy of the notice in writing that the WTO Member has provided to the TRIPS Council confirming that the WTO Member has, in accordance with Article 31 of the TRIPS Agreement and the provisions of the General Council Decision, granted or intends to grant a compulsory licence to use the invention pertaining to the product,
(iv) if the application relates to a WTO Member listed in Schedule 4, a certified copy of the notice in writing that the WTO Member has provided to the TRIPS Council specifying the name of the pharmaceutical product, as defined in paragraph 1(a) of the General Council Decision, and the quantity of that product, needed by the WTO Member, and stating that the WTO Member is faced with a national emergency or other circumstances of extreme urgency and that it has insufficient or no pharmaceutical manufacturing capacity for the production of the product to which the application relates, and
(A) a solemn or statutory declaration in the prescribed form by the person filing the application stating that the product to which the application relates is not patented in that WTO Member, or
(B) a certified copy of the notice in writing that the WTO Member has provided to the TRIPS Council confirming that the WTO Member has, in accordance with Article 31 of the TRIPS Agreement and the provisions of the General Council Decision, granted or intends to grant a compulsory licence to use the invention pertaining to the product, or
(v) if the application relates to a country listed in Schedule 4 that is not a WTO Member, a certified copy of the notice in writing that the country has provided to the Government of Canada through diplomatic channels specifying the name of the pharmaceutical product, as defined in paragraph 1(a) of the General Council Decision, and the quantity of that product, needed by the country, and stating that it is faced with a national emergency or other circumstances of extreme urgency, that it has insufficient or no pharmaceutical manufacturing capacity for the production of the product to which the application relates, that it agrees that product will not be used for commercial purposes and that it undertakes to adopt the measures referred to in Article 4 of the General Council Decision, and
(A) a solemn or statutory declaration in the prescribed form by the person filing the application stating that the product to which the application relates is not patented in that country, or
(B) a certified copy of the notice in writing that the country has provided to the Government of Canada through diplomatic channels confirming that the country has granted or intends to grant a compulsory licence to use the invention pertaining to the product.
[2004, c. 23, s. 1. ]
Form and content of authorization
21.05 (1) The authorization must be in the prescribed form and, subject to subsection (2), contain the prescribed information.
Quantity
(2) The quantity of the product authorized to be manufactured by an authorization may not be more than the lesser of
(a) the maximum quantity set out in the application for the authorization, and
(b) the quantity set out in the notice referred to in any of subparagraphs 21.04(3)(d)(i) to (v), whichever is applicable.
[2004, c. 23, s. 1. ]
Disclosure of information on website
21.06 (1) Before exporting a product manufactured under an authorization, the holder of the authorization must establish a website on which is disclosed the prescribed information respecting the name of the product, the name of the country or WTO Member to which it is to be exported, the quantity that is authorized to be manufactured and sold for export and the distinguishing features of the product, and of its label and packaging, as required by regulations made under the Food and Drugs Act, as well as information identifying every known party that will be handling the product while it is in transit from Canada to the country or WTO Member to which it is to be exported.
Obligation to maintain
(2) The holder must maintain the website during the entire period during which the authorization is valid.
Links to other websites
(3) The Commissioner shall post and maintain on the website of the Canadian Intellectual Property Office a link to each website required to be maintained by the holder of an authorization under subsection (1).
Posting on the website
(4) The Commissioner shall, within seven days of receipt, post on the website of the Canadian Intellectual Property Office each application for authorization filed under subsection 21.04(1).
[2004, c. 23, s. 1. ]
Export notice
21.07 Before each shipment of any quantity of a product manufactured under an authorization, the holder of the authorization must, within fifteen days before the product is exported, provide to each of the following a notice, by certified or registered mail, specifying the quantity to be exported, as well as every known party that will be handling the product while it is in transit from Canada to the country or WTO Member to which it is to be exported:
(a) the patentee or each of the patentees, as the case may be;
(b) the country or WTO Member named in the authorization; and
(c) the person or entity that purchased the product to which the authorization relates.
[2004, c. 23, s. 1.]
Royalty
21.08 (1) Subject to subsections (3) and (4), on the occurrence of a prescribed event, the holder of an authorization is required to pay to the patentee or each patentee, as the case may be, a royalty determined in the prescribed manner.
Factors to consider when making regulations
(2) In making regulations for the purposes of subsection (1), the Governor in Council must consider the humanitarian and non-commercial reasons underlying the issuance of authorizations under subsection 21.04(1).
Time for payment
(3) The royalties payable under this section must be paid within the prescribed time.
Federal Court may determine royalty
(4) The Federal Court may, in relation to any authorization, make an order providing for the payment of a royalty that is greater than the royalty that would otherwise be required to be paid under subsection (1).
Application and notice
(5) An order may be made only on the application of the patentee, or one of the patentees, as the case may be, and on notice of the application being given by the applicant to the holder of the authorization.
Contents of order
(6) An order may provide for a royalty of a fixed amount or for a royalty to be determined as specified in the order, and the order may be subject to any terms that the Federal Court considers appropriate.
Conditions for making of order
(7) The Federal Court may make an order only if it is satisfied that the royalty otherwise required to be paid is not adequate remuneration for the use of the invention or inventions to which the authorization relates, taking into account
(a) the humanitarian and non-commercial reasons underlying the issuance of the authorization; and
(b) the economic value of the use of the invention or inventions to the country or WTO Member.
[2004, c. 23, s. 1. ]
Duration
21.09 An authorization granted under subsection 21.04(1) is valid for a period of two years beginning on the day on which the authorization is granted.
[2004, c. 23, s. 1. ]
Use is non-exclusive
21.1 The use of a patented invention under an authorization is non-exclusive.
[2004, c. 23, s. 1. ]
Authorization is non-transferable
21.11 An authorization is non-transferable, other than where the authorization is an asset of a corporation or enterprise and the part of the corporation or enterprise that enjoys the use of the authorization is sold, assigned or otherwise transferred.
[2004, c. 23, s. 1. ]
Renewal
21.12 (1) The Commissioner shall, on the application of the person to whom an authorization was granted and on the payment of the prescribed fee, renew the authorization if the person certifies under oath in the renewal application that the quantities of the pharmaceutical product authorized to be exported were not exported before the authorization ceases to be valid and that the person has complied with the terms of the authorization and the requirements of sections 21.06 to 21.08.
One renewal
(2) An authorization may be renewed only once.
When application must be made
(3) The application for renewal must be made within the 30 days immediately before the authorization ceases to be valid.
Duration
(4) An authorization that is renewed is valid for a period of two years beginning on the day immediately following the day of the expiry of the period referred to in section 21.09 in respect of the authorization.
Prescribed form
(5) Applications for renewal and renewed authorizations issued under subsection (1) must be in the prescribed form..
[2004, c. 23, s. 1.]
Termination
21.13 Subject to section 21.14, an authorization ceases to be valid on the earliest of
(a) the expiry of the period referred to in section 21.09 in respect of the authorization, or the expiry of the period referred to in subsection 21.12(4) if the authorization has been renewed, as the case may be, case may be,
(b) the day on which the Commissioner sends, by registered mail, to the holder of the authorization a copy of a notice sent by the Minister of Health notifying the Commissioner that the Minister of Health is of the opinion that the pharmaceutical product referred to in paragraph 21. 04(3)(b) has ceased to meet the requirements of the Food and Drugs Act and its regulations,
(c) the day on which the last of the pharmaceutical product authorized by the authorization to be exported is actually exported,
(d) thirty days after the day on which
(i) the name of the pharmaceutical product authorized to be exported by the authorization is removed from Schedule 1, or
(ii) the name of the country or WTO Member to which the pharmaceutical product was, or is to be, exported is removed from Schedule 2, 3 or 4, as the case may be, and not added to any other of those Schedules, and
(e) on any other day that is prescribed.
[2004, c. 23, s. 1.]
Termination by Federal Court
21.14 On the application of a patentee, and on notice given by the patentee to the person to whom an authorization was granted, the Federal Court may make an order, on any terms that it considers appropriate, terminating the authorization if the patentee establishes that
(a) the application for the authorization or any of the documents provided to the Commissioner in relation to the application contained any material information that is inaccurate;
(b) the holder of the authorization has failed to establish a website as required by section 21.06, has failed to disclose on that website the information required to be disclosed by that section or has failed to maintain the website as required by that section;
(c) the holder of the authorization has failed to provide a notice required to be given under section 21.07;
(d) the holder of the authorization has failed to pay, within the required time, any royalty required to be paid as a result of the authorization;
(e) the holder of the authorization has failed to comply with subsection 21.16(2);
(f) the product exported to the country or WTO Member, as the case may be, under the authorization has been, with the knowledge of the holder of the authorization, re-exported in a manner that is contrary to the General Council Decision;
(g) the product was exported, other than in the normal course of transit, to a country or WTO Member other than the country or WTO Member named in the authorization;
(h) the product was exported in a quantity greater than the quantity authorized to be manufactured; or
(i) if the product was exported to a country that is not a WTO Member, the country has permitted the product to be used for commercial purposes or has failed to adopt the measures referred to in Article 4 of the General Council Decision.
[2004, c. 23, s. 1.]
Notice to patentee
21.15 The Commissioner shall, without delay, notify the patentee, or each of the patentees, as the case may be, in writing of any authorization granted in respect of the patentee's invention.
[2004, c. 23, s. 1.]
Obligation to provide copy of agreement
21.16 (1) Within fifteen days after the later of the day on which the authorization was granted and the day on which the agreement for the sale of the product to which the authorization relates was entered into, the holder of an authorization must provide by certified or registered mail, the Commissioner and the patentee, or each patentee, as the case may be, with
(a) a copy of the agreement it has reached with the person or entity referred to in paragraph 21.04(2)(f) for the supply of the product authorized to be manufactured and sold, which agreement must incorporate information that is in all material respects identical to the information referred to in paragraphs 21.04(2)(a), (b), (e) and (f); and (f); and
(b) a solemn or statutory declaration in the prescribed form setting out
(i) the total monetary value of the agreement as it relates to the product authorized to be manufactured and sold, expressed in Canadian currency, and
(ii) the number of units of the product to be sold under the terms of the agreement.
Prohibition
(2) The holder of an authorization may not export any product to which the authorization relates until after the holder has complied with subsection (1).
[2004, c. 23, s. 1. ]
Application when agreement is commercial in nature
21.17 (1) If the average price of the product to be manufactured under an authorization is equal to or greater than 25 per cent of the average price in Canada of the equivalent product sold by or with the consent of the patentee, the patentee may, on notice given by the patentee to the person to whom an authorization was granted, apply to the Federal Court for an order under subsection (3) on the grounds that the essence of the agreement under which the product is to be sold is commercial in nature.
Factors for determining whether agreement is commercial in nature
(2) In determining whether the agreement is commercial in nature, the Federal Court must take into account
(a) the need for the holder of the authorization to make a reasonable return sufficient to sustain a continued participation in humanitarian initiatives;
(b) the ordinary levels of profitability, in Canada, of commercial agreements involving pharmaceutical products, as defined in paragraph 1(a) of the General Council Decision; and
(c) international trends in prices as reported by the United Nations for the supply of such products for humanitarian purposes.
Order
(3) If the Federal Court determines that the agreement is commercial in nature, it may make an order, on any terms that it considers appropriate,
(a) terminating the authorization; or
(b) requiring the holder to pay, in addition to the royalty otherwise required to be paid, an amount that the Federal Court considers adequate to compensate the patentee for the commercial use of the patent.
Additional order
(4) If the Federal Court makes an order terminating the authorization, the Federal Court may also, if it considers it appropriate to do so, make an order, on any terms that it considers appropriate,
(a) requiring the holder to deliver to the patentee any of the product to which the authorization relates remaining in the holder's possession as though the holder had been determined to have been infringing a patent; or
(b) with the consent of the patentee, requiring the holder to export any of the product to which the authorization relates remaining in the holder's possession to the country or WTO Member named in the authorization.
Restriction
(5) The Federal Court may not make an order under subsection (3) if, under the protection of a confidentiality order made by the Court, the holder of the authorization submits to a Court-supervised audit and that audit establishes that the average price of the product manufactured under the authorization does not exceed an amount equal to the direct supply cost of the product plus 15 per cent of that direct supply cost.
Definitions
(6) The following definitions apply in this section.
“average price”
"average price” means
(a) in relation to a product to be manufactured under an authorization, the total monetary value of the agreement under which the product is to be sold, expressed in Canadian currency, divided by the number of units of the product to be sold under the terms of the agreement; and
(b) in relation to an equivalent product sold by or with the consent of the patentee, the average of the prices in Canada of that product as those prices are reported in prescribed publications on the day on which the application for the authorization was filed.
“direct supply cost”
"direct supply cost”, in relation to a product to be manufactured under an authorization, means the cost of the materials and of the labour, and any other manufacturing costs, directly related to the production of the quantity of the product that is to be manufactured under the authorization.
“unit”
“unit”, in relation to any product, means a single tablet, capsule or other individual dosage form of the product, and if applicable, in a particular strength.
[2004, c. 23, s. 1. ]
Advisory committee
21.18 (1) The Minister and the Minister of Health shall establish, within three years after the day this section comes into force, an advisory committee to advise them on the recommendations that they may make to the Governor in Council respecting the amendment of Schedule 1.
Standing committee(2) The standing committee of each House of Parliament that normally considers matters related to industry shall assess all candidates for appointment to the advisory committee and make recommendations to the Minister and the Minister of Health on the eligibility and qualifications of those candidates.
[2004, c. 23, s. 1. ]; 2005, c. 18, s. 1.
Website for notices to Canada
21.19 The person designated by the Governor in Council for the purpose of this section must maintain a website on which is set out a copy of every notice referred to in subparagraphs 21.04(3)(d)(ii) and (v) that is provided to the Government of Canada through diplomatic channels by a country that is not a WTO Member. The copy must be added to the website as soon as possible after the notice has been provided to the Government of Canada.
[2004, c. 23, s. 1. ]
Review
21.2 (1) A review of sections 21.01 to 21.19 and their application must be completed by the Minister two years after this section comes into force.
Tabling of report
(2) The Minister must cause a report of the results of the review to be laid before each House of Parliament on any of the first fifteen days on which that House is sitting after the report has been completed.
[2004, c. 23, s. 1.
]
PATENTS RELATING TO NUCLEAR ENERGY
Communication to Canadian Nuclear Safety Commission
22. Any application for a patent for an
invention that, in the opinion of the Commissioner,
relates to the production, application or use of nuclear energy shall, before it
is dealt with by an examiner appointed pursuant to section 6 or is open to
inspection by the public under section 10, be communicated by the Commissioner
to the Canadian Nuclear Safety Commission.
[R.S., 1985, c. P-4, s. 22; R.S., 1985, c. 33 (3rd Supp.), s. 5.,
S.C. 1997, c. 9, s. 111.]
Patented invention in vessels, aircraft, etc., of any country country
23. No patent shall extend to prevent the use
of any invention in any ship, vessel, aircraft or land vehicle of any country entering Canada
temporarily or accidentally, if the invention is employed exclusively for the
needs of the ship, vessel, aircraft or land vehicle, and not so used for the
manufacture of any goods to be sold within or exported from Canada.
[R.S., c. P-4, s. 23.]
24. [Repealed, R.S., 1985, c. 33 (3rd Supp.), s. 6]
Cost of proceedings before the court
25. In all proceedings before any court under
this Act, the costs of the Commissioner are in
the discretion of the court, but the Commissioner shall not be ordered to pay
the costs of any other of the parties.
[R.S., c. P-4, s.
25.]
26. The Commissioner shall,
in each year, cause to be prepared and laid before Parliament a report of the
proceedings under this Act.
[R.S., 1985, c. P-4, s. 26; R.S.,
1985, c. 33 (3rd Supp.), s. 7.]
Publication of list of patents
26.1 (1) The Commissioner shall, at least once in each year, publish a list of all patents issued in the year.
Publication and printing of documents
(2) The Commissioner may
publish any document open to the inspection of the public under section 10 and
may print or cause to be printed, for distribution or sale, any such
document.
[R.S., 1985, c. 33 (3rd Supp.), s. 7.]
Commissioner may grant patents
27. (1) The Commissioner shall grant a patent for an invention to the inventor or the inventor's legal representative if an application for the patent in Canada is filed in accordance with this Act and all other requirements for the issuance of a patent under this Act are met.
(2) The prescribed application fee must be paid and the application must be filed in accordance with the regulations by the inventor or the inventor's legal representative and the application must contain a petition and a specification of the invention.
(3) The specification of an invention must
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.
(4) The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.
Alternative definition of subject-matter
(5) For greater certainty, where a claim defines the subject-matter of an invention in the alternative, each alternative is a separate claim for the purposes of sections 2, 28.1 to 28.3 and 78.3.
When application to be completed
(6) Where an application does not completely meet the requirements of subsection (2) on its filing date, the Commissioner shall, by notice to the applicant, require the application to be completed on or before the date specified in the notice.
(7) The specified date must be at least three months after the date of the notice and at least twelve months after the filing date of the application.
(8) No patent shall be granted for any mere
scientific principle or abstract theorem.
[R.S., 1985, c. P-4,
s. 27; R.S., 1985, c. 33 (3rd Supp.), s. 8; 1993, c. 15, s. 31, c. 44, s.
192.]
27.1 (1) An applicant for a patent shall, to maintain the application in effect, pay to the Commissioner such fees, in respect of such periods, as may be prescribed.
(2) and (3) [Repealed, 1993, c. 15, s. 32] R.S., 1985, c. 33 (3rd Supp.), s. 9; 1993, c. 15, s. 32.
28. (1) The filing date of an application for a patent in Canada is the date on which the Commissioner receives the documents, information and fees prescribed for the purposes of this section or, if they are received on different dates, the last date.
Deemed date of receipt of fees
(2) The Commissioner may,
for the purposes of this section, deem prescribed fees to have been received on
a date earlier than the date of their receipt if the Commissioner considers it
just to do so.
[R.S., 1985, c. P-4, s. 28; R.S., 1985, c. 33
(3rd Supp.), s. 10; 1993, c. 15, s. 33.]
28.1 (1) The date of a claim in an application for a patent in Canada (the "pending application") is the filing date of the application, unless
(a) the pending application is filed by
(i) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or
(ii) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim;
(b) the filing date of the pending application is within twelve months after the filing date of the previously regularly filed application; and
(c) the applicant has made a request for priority on the basis of the previously regularly filed application.
Claims based on previously regularly filed applications
(2) In the circumstances described in paragraphs
(1)(a) to (c), the claim date is the
filing date of the previously
regularly filed application.
[1993, c. 15, s. 33.]
Subject-matter of claim must not be previously disclosed
28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed
(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;
(b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;
(c) in an application for a patent that is filed in Canada by a person other than the applicant, and has a filing date that is before the claim date; or
(d) in an application (the "co-pending application") for a patent that is filed in Canada by a person other than the applicant and has a filing date that is on or after the claim date if
(i) the co-pending application is filed by
(A) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or
(B) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim,
(ii) the filing date of the previously regularly filed application is before the claim date of the pending application,
(iii) the filing date of the co-pending application is within twelve months after the filing date of the previously regularly filed application, and
(iv) the applicant has, in respect of the co-pending application, made a request for priority on the basis of the previously regularly filed application.
(2) An application mentioned in paragraph
(1)(c) or a co-pending application mentioned in paragraph (1)(d)
that is withdrawn before it is open to public inspection shall, for the purposes
of this section, be considered never to have been filed.
[1993,
c. 15, s. 33.]
28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to
(a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and
(b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.
[1993, c. 15, s. 33.]
28.4 (1) For the purposes of sections 28.1, 28.2 and 78.3, an applicant for a patent in Canada may request priority in respect of the application on the basis of one or more previously regularly filed applications.
Requirements governing request
(2) The request for priority must be made in accordance with the regulations and the applicant must inform the Commissioner of the filing date, country or office of filing and number of each previously regularly filed application on which the request is based.
(3) An applicant may, in accordance with the regulations, withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications.
Multiple previously regularly filed applications
(4) Where two or more applications have been previously regularly filed as described in paragraph 28.1(1)(a), subparagraph 28.2(1)(d)(i) or paragraph 78.3(1)(a) or (2)(a), either in the same country or in different countries,
(a) paragraph 28.1(1)(b), subparagraph 28.2(1)(d)(iii) or paragraph 78.3(1)(b) or (2)(b), as the case may be, shall be applied using the earliest filing date of the previously regularly filed applications; and
(b) subsection 28.1(2), subparagraph 28.2(1)(d)(ii) or paragraph 78.3(1)(d) or (2)(d), as the case may be, shall be applied using the earliest filing date of the previously regularly filed applications on the basis of which a request for priority is made.
Withdrawal, etc., of previously regularly filed applications
(5) A previously regularly filed application mentioned in section 28.1 or 28.2 or subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be considered never to have been filed if
(a) it was filed more than twelve months before the filing date of
(i) the pending application, in the case of section 28.1,
(ii) the co-pending application, in the case of section 28.2,
(iii) the later application, in the case of subsection 78.3(1), or
(iv) the earlier application, in the case of subsection 78.3(2);
(b) before the filing date referred to in paragraph (a), another application
(i) is filed by the person who filed the previously regularly filed application or by the agent, legal representative or predecessor in title of that person,
(ii) is filed in or for the country where the previously regularly filed application was filed, and
(iii) discloses the subject-matter defined by the claim in the application mentioned in paragraph (a); and
(c) on the filing date of the other application mentioned in paragraph (b) or, if there is more than one such application, on the earliest of their filing dates, the previously regularly filed application
(i) has been withdrawn, abandoned or refused without having been opened to public inspection and without leaving any rights outstanding, and
(ii) has not served as a basis for a request for priority in any country, including Canada.
[1993, c. 15, s. 33; 2001, c. 34, s. 63]
29. (1) An applicant for a patent who does not appear to reside or carry on business at a specified address in Canada shall, on the filing date of the application, appoint as a representative a person or firm residing or carrying on business at a specified address in Canada.
(2) Subject to this section, a nominee of an applicant shall be deemed to be the representative for all purposes of this Act, including the service of any proceedings taken under it, of the applicant and of any patentee of a patent issued on his application who does not appear to reside or carry on business at a specified address in Canada, and shall be recorded as such by the Commissioner.
(3) An applicant for a patent or a patentee
(a) may, by giving notice to the Commissioner, appoint a new representative in place of the latest recorded representative, or may give notice to the Commissioner of a change in the address of the latest recorded representative; and
(b) shall so appoint a new representative or supply a new and correct address of the latest recorded representative on receipt of a request of the Commissioner stating that the latest recorded representative has died or that a letter addressed to the latest recorded representative at the latest recorded address and sent by ordinary mail has been returned undelivered.
Where no new appointment is made or no new address supplied
(4) Where the Commissioner makes a request under paragraph (3)(b) and no new appointment is made or no new and correct address is supplied by the applicant or patentee within three months, the Federal Court or the Commissioner may dispose of any proceedings under this Act without requiring service on the applicant or patentee of any process in the proceedings.
(5) No fee is payable on the appointment of a new
representative or the supply of a new and correct address, unless that
appointment or supply follows a request by the Commissioner under
subsection (3), in which case the prescribed fee is payable.
[R.S., 1985, c. P-4, s. 29; 1993, c. 15, s. 34.]
30. [Repealed, 1993, c. 15, s. 35]
Effect of refusal of a joint inventor to proceed
31. (1) Where an invention is made by two or more inventors and one of them refuses to make application for a patent or his whereabouts cannot be ascertained after diligent inquiry, the other inventors or their legal representatives may make application, and a patent may be granted in the name of the inventors who make the application, on satisfying the Commissioner that the joint inventor has refused to make application or that his whereabouts cannot be ascertained after diligent inquiry.
(2) In any case where
(a) an applicant has agreed in writing to assign a patent, when granted, to another person or to a joint applicant and refuses to proceed with the application, or
(b) disputes arise between joint applicants with respect to proceeding with an application,
the Commissioner, on proof of the agreement to his satisfaction, or if satisfied that one or more of the joint applicants ought to be allowed to proceed alone, may allow that other person or joint applicant to proceed with the application, and may grant a patent to him in such manner that all persons interested are entitled to be heard before the Commissioner after such notice as he may deem requisite and sufficient.
Procedure when one joint applicant retires
(3) Where an application is filed by joint applicants and it subsequently appears that one or more of them has had no part in the invention, the prosecution of the application may be carried on by the remaining applicant or applicants on satisfying the Commissioner by affidavit that the remaining applicant or applicants is or are the sole inventor or inventors.
(4) Where an application is filed by one or more applicants and it subsequently appears that one or more further applicants should have been joined, the further applicant or applicants may be joined on satisfying the Commissioner that he or they should be so joined, and that the omission of the further applicant or applicants had been by inadvertence or mistake and was not for the purpose of delay.
(5) Subject to this section, in cases of joint applications, the patent shall be granted in the names of all the applicants.
(6) An appeal lies to the Federal Court from the
decision of the Commissioner under
this section.
[R.S., c. P-4, s. 33; R.S., c. 10 (2nd Supp.), s.
64.]
32. Any person who has invented any improvement on any patented invention may obtain a patent for the improvement, but he does not thereby obtain the right of making, vending or using the original invention, nor does the patent for the original invention confer the right of making, vending or using the patented improvement. [R.S., c. P-4, s. 34.]
33. and 34. [Repealed, 1993, c. 15, s. 36]
Filing
34.1(1) Any person may file with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, that the person believes has a bearing on the patentability of any claim in an application for a patent.
Pertinency
(2) A person who files prior art
with the Commissioner under
subsection (1) shall explain the pertinency of the prior art.
[R.S., 1985, c. 33 (3rd Supp.), s. 11; 1993, c. 15, s. 37.]
35. (1) The Commissioner shall, on the request of any person made in such manner as may be prescribed and on payment of a prescribed fee, cause an application for a patent to be examined by competent examiners to be employed in the Patent Office for that purpose.
(2) The Commissioner may by notice require an applicant for a patent to make a request for examination pursuant to subsection (1) or to pay the prescribed fee within the time specified in the notice, but the specified time may not exceed the time provided by the regulations for making the request and paying the fee.
(3) and (4) [Repealed, 1993, c. 15, s. 38] R.S., 1985, c. P-4, s. 35; R.S., 1985, c. 33 (3rd Supp.), s. 12; 1993, c. 15, s. 38.
36. (1) A patent shall be granted for one invention only but in an action or other proceeding a patent shall not be deemed to be invalid by reason only that it has been granted for more than one invention.
Limitation of claims by applicant
(2) Where an application (the "original application") describes more than one invention, the applicant may limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application, if the divisional application is filed before the issue of a patent on the original application.
Limitation of claims on direction of Commissioner
(2.1) Where an application (the "original application") describes and claims more than one invention, the applicant shall, on the direction of the Commissioner, limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application, if the divisional application is filed before the issue of a patent on the original application.
Original application abandoned
(3) If an original application mentioned in subsection (2) or (2.1) becomes abandoned, the time for filing a divisional application terminates with the expiration of the time for reinstating the original application under this Act.
(4) A divisional application shall be deemed to be a
separate and distinct application under this Act, to which its provisions apply
as fully as may be, and separate fees shall be paid on the divisional
application and it shall have the same filing date as the original
application.
[R.S., 1985, c. P-4, s. 36; 1993, c. 15, s.
39.]
DRAWINGS, MODELS AND BIOLOGICAL MATERIALS
37. (1) In the case of a machine, or in any other case in which an invention admits of illustration by means of drawings, the applicant shall, as part of the application, furnish drawings of the invention that clearly show all parts of the invention.
Particulars
(2) Each drawing must include
references corresponding with the specification, and the Commissioner may
require further drawings or dispense with any of them as the Commissioner sees
fit.
[R.S., 1985, c. P-4, s. 37; 1993, c. 15, s. 40.]
38. (1) In all cases in which an invention admits of representation by model, the applicant, if required by the Commissioner, shall furnish a model of convenient size exhibiting its several parts in due proportion, and when an invention is a composition of matter, the applicant, if required by the Commissioner, shall furnish specimens of the ingredients, and of the composition, sufficient in quantity for the purpose of experiment.
(2) If the ingredients or composition referred to in
subsection (1) are of an explosive or dangerous character, they shall be
furnished with such precautions as are specified in the requisition
therefor.
[R.S., 1985, c. P-4, s. 38; R.S., 1985, c. 33 (3rd
Supp.), s. 13.]
Biological material may be deposited
38.1 (1) Where a specification refers to a deposit of biological material and the deposit is in accordance with the regulations, the deposit shall be considered part of the specification and, to the extent that subsection 27(3) cannot otherwise reasonably be complied with, the deposit shall be taken into consideration in determining whether the specification complies with that subsection.
(2) For greater certainty, a reference to a deposit
of biological material in a specification does not create a presumption that the
deposit is required for the purpose of complying with subsection 27(3).
[1993, c. 15, s. 41.]
AMENDMENTS TO SPECIFICATIONS AND DRAWINGS
Amendments to specifications and drawings
38.2 (1) Subject to subsections (2) and (3) and the regulations, the specification and any drawings furnished as part of an application for a patent in Canada may be amended before the patent is issued.
Restriction on amendments to specifications
(2) The specification ma