INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - CANADA
Patent for one invention only
36. (1) A patent shall be granted for one invention only but in an
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
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)
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
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
37. (1) In the case of a machine, or in any other case in which an
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
(2) Each drawing must include references corresponding with the
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.
Models and specimens
38. (1) In all cases in which an invention admits of representation by
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
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
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
Deposit not required
(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.
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 may not be amended to describe matter not
reasonably to be
inferred from the specification or drawings as originally filed, except in so
far as it is admitted in the specification that the matter is prior art with
respect to the application.
Restriction on amendments to drawings
(3) Drawings may not be amended to add matter not reasonably to be
the specification or drawings as originally filed, except in so far as it is
admitted in the specification that the matter is prior art with respect to the
1993, c. 15, s. 41.
39. to 39.26 [Repealed, 1993, c. 2, s. 3]
REFUSAL OF PATENTS
Refusal by Commissioner
40. Whenever the Commissioner is satisfied that an applicant is not by
entitled to be granted a patent, he shall refuse the application and, by
registered letter addressed to the applicant or his registered agent, notify the
applicant of the refusal and of the ground or reason therefor.
R.S., c. P-4, s. 42.
Appeal to Federal Court
41. Every person who has failed to obtain a patent by reason of a
refusal of the
Commissioner to grant it may, at any time within six months after notice as
provided for in section 40 has been mailed, appeal from the decision of the
Commissioner to the Federal Court and that Court has exclusive jurisdiction to
hear and determine the appeal.
R.S., 1985, c. P-4, s. 41; R.S., 1985, c. 33 (3rd Supp.), s. 16.
GRANT OF PATENTS
Contents of patent
42. Every patent granted under this Act shall contain the title or name
invention, with a reference to the specification, and shall, subject to this
Act, grant to the patentee and the patentee's legal representatives for the term
of the patent, from the granting of the patent, the exclusive right, privilege
and liberty of making, constructing and using the invention and selling it to
others to be used, subject to adjudication in respect thereof before any court
of competent jurisdiction.
R.S., 1985, c. P-4, s. 42; R.S., 1985, c. 33 (3rd Supp.), s. 16.
FORM AND TERM OF PATENTS
Form and duration of patents
43. (1) Subject to section 46, every patent granted under this Act shall
issued under the seal of the Patent Office, and shall bear on its face the
filing date of the application for the patent, the date on which the application
became open to public inspection under section 10, the date on which the patent
is granted and issued and any prescribed information.
Validity of patent
(2) After the patent is issued, it shall, in the absence of any evidence
contrary, be valid and avail the patentee and the legal representatives of the
patentee for the term mentioned in section 44 or 45, whichever is applicable.
R.S., 1985, c. P-4, s. 43; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993,
c. 15, s.
Term of patents based on applications filed on or after October 1, 1989
44. Subject to section 46, where an application for a patent is filed
Act on or after October 1, 1989, the term limited for the duration of the patent
is twenty years from the filing date.
R.S., 1985, c. P-4, s. 44; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993,
c. 15, s.
Term of patents based on applications filed before October 1, 1989
45. Subject to section 46, the term limited for the duration of every
issued under this Act on the basis of an application filed before October 1,
1989 is seventeen years from the date on which the patent is issued.
R.S., 1985, c. P-4, s. 45; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993,
c. 15, s.
46. (1) A patentee of a patent issued by the Patent Office under this
the coming into force of this section shall, to maintain the rights accorded by
the patent, pay to the Commissioner such fees, in respect of such periods, as
may be prescribed.
Lapse of term if maintenance fees not paid
(2) Where the fees payable under subsection (1) are not paid within the
provided by the regulations, the term limited for the duration of the patent
shall be deemed to have expired at the end of that time.
R.S., 1985, c. P-4, s. 46; R.S., 1985, c. 33 (3rd Supp.), s. 16; 1993,
c. 15, s.
REISSUE OF PATENTS
Issue of new or amended patents
47. (1) Whenever any patent is deemed defective or inoperative by reason
insufficient description and specification, or by reason of the patentee's
claiming more or less than he had a right to claim as new, but at the same time
it appears that the error arose from inadvertence, accident or mistake, without
any fraudulent or deceptive intention, the Commissioner may, on the surrender of
the patent within four years from its date and the payment of a further
prescribed fee, cause a new patent, in accordance with an amended description
and specification made by the patentee, to be issued to him for the same
invention for the then unexpired term for which the original patent was granted.
Effect of new patent
(2) The surrender referred to in subsection (1) takes effect only on the
of the new patent, and the new patent and the amended description and
specification have the same effect in law, on the trial of any action thereafter
commenced for any cause subsequently accruing, as if the amended description and
specification had been originally filed in their corrected form before the issue
of the original patent, but, in so far as the claims of the original and
reissued patents are identical, the surrender does not affect any action pending
at the time of reissue or abate any cause of action then existing, and the
reissued patent to the extent that its claims are identical with the original
patent constitutes a continuation thereof and has effect continuously from the
date of the original patent.
Separate patents for separate parts
(3) The Commissioner may entertain separate applications and cause
patents to be
issued for distinct and separate parts of the invention patented, on payment of
the fee for a reissue for each of the reissued patents.
R.S., c. P-4, s. 50.
Patentee may disclaim anything included in patent by mistake
48. (1) Whenever, by any mistake, accident or inadvertence, and without
wilful intent to defraud or mislead the public, a patentee has
(a) made a specification too broad, claiming more than that of which the
patentee or the person through whom the patentee claims was the inventor, or
(b) in the specification, claimed that the patentee or the person
the patentee claims was the inventor of any material or substantial part of the
invention patented of which the patentee was not the inventor, and to which the
patentee had no lawful right,
the patentee may, on payment of a prescribed fee, make a disclaimer of
parts as the patentee does not claim to hold by virtue of the patent or the
Form and attestation of disclaimer
(2) A disclaimer shall be filed in the prescribed form and manner.
(3) [Repealed, 1993, c. 15, s. 44]
Pending suits not affected
(4) No disclaimer affects any action pending at the time when it is
there is unreasonable neglect or delay in making it.
Death of patentee
(5) In case of the death of an original patentee or of his having
patent, a like right to disclaim vests in his legal representatives, any of whom
may exercise it.
Effect of disclaimer
(6) A patent shall, after disclaimer as provided in this section, be
be valid for such material and substantial part of the invention, definitely
distinguished from other parts thereof claimed without right, as is not
disclaimed and is truly the invention of the disclaimant, and the disclaimant is
entitled to maintain an action or suit in respect of that part accordingly.
R.S., 1985, c. P-4, s. 48; R.S., 1985, c. 33 (3rd Supp.), s. 17; 1993,
c. 15, s.
Request for re-examination
48.1 (1) Any person may request a re-examination of any claim of a
filing with the Commissioner prior art, consisting of patents, applications for
patents open to public inspection and printed publications, and by paying a
Pertinency of request
(2) A request for re-examination under subsection (1) shall set forth
pertinency of the prior art and the manner of applying the prior art to the
claim for which re-examination is requested.
Notice to patentee
(3) Forthwith after receipt of a request for re-examination under
(1), the Commissioner shall send a copy of the request to the patentee of the
patent in respect of which the request is made, unless the patentee is the
person who made the request.
R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 45.
Establishment of re-examination board
48.2 (1) Forthwith after receipt of a request for re-examination under
subsection 48.1(1), the Commissioner shall establish a re-examination board
consisting of not fewer than three persons, at least two of whom shall be
employees of the Patent Office, to which the request shall be referred for
Determination to be made by board
(2) A re-examination board shall, within three months following its
establishment, determine whether a substantial new question of patentability
affecting any claim of the patent concerned is raised by the request for
(3) Where a re-examination board has determined that a request for
re-examination does not raise a substantial new question affecting the
patentability of a claim of the patent concerned, the board shall so notify the
person who filed the request and the decision of the board is final for all
purposes and is not subject to appeal or to review by any court.
(4) Where a re-examination board has determined that a request for
re-examination raises a substantial new question affecting the patentability of
a claim of the patent concerned, the board shall notify the patentee of the
determination and the reasons therefor.
Filing of reply
(5) A patentee who receives notice under subsection (4) may, within
of the date of the notice, submit to the re-examination board a reply to the
notice setting out submissions on the question of the patentability of the claim
of the patent in respect of which the notice was given.
R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 46(F).
48.3 (1) On receipt of a reply under subsection 48.2(5) or in the
absence of any
reply within three months after notice is given under subsection 48.2(4), a
re-examination board shall forthwith cause a re-examination to be made of the
claim of the patent in respect of which the request for re-examination was
Patentee may submit amendments
(2) In any re-examination proceeding under subsection (1), the patentee
propose any amendment to the patent or any new claims in relation thereto but no
proposed amendment or new claim enlarging the scope of a claim of the patent
shall be permitted.
(3) A re-examination proceeding in respect of a claim of a patent shall
completed within twelve months of the commencement of the proceedings under
R.S., 1985, c. 33 (3rd Supp.), s. 18.
Certificate of board
48.4 (1) On conclusion of a re-examination proceeding in respect of a
claim of a
patent, the re-examination board shall issue a certificate
(a) cancelling any claim of the patent determined to be unpatentable;
(b) confirming any claim of the patent determined to be patentable; or
(c) incorporating in the patent any proposed amended or new claim
Certificate attached to patent
(2) A certificate issued in respect of a patent under subsection (1)
attached to the patent and made part thereof by reference, and a copy of the
certificate shall be sent by registered mail to the patentee.
Effect of certificate
(3) For the purposes of this Act, where a certificate issued in respect
patent under subsection (1)
(a) cancels any claim but not all claims of the patent, the patent shall
deemed to have been issued, from the date of grant, in the corrected form;
(b) cancels all claims of the patent, the patent shall be deemed never
been issued; or
(c) amends any claim of the patent or incorporates a new claim in the
the amended claim or new claim shall be effective, from the date of the
certificate, for the unexpired term of the patent.
(4) Subsection (3) does not apply until the time for taking an appeal
expired under subsection 48.5(2) and, if an appeal is taken, subsection (3)
applies only to the extent provided in the final judgment on the appeal.
R.S., 1985, c. 33 (3rd Supp.), s. 18; 1993, c. 15, s. 47.
48.5 (1) Any decision of a re-examination board set out in a certificate
under subsection 48.4(1) is subject to appeal by the patentee to the Federal
(2) No appeal may be taken under subsection (1) after three months from
a copy of the certificate is sent by registered mail to the patentee.
R.S., 1985, c. 33 (3rd Supp.), s. 18.
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