Canadian Patent Branch Begins Second Patent Rules Consultation

by Mike Godfrey, for LawAndTax-News.com, Washington

29 January 2009

Between November 27, 2008 and January 5, 2009, the Canadian Intellectual Property Office held a public consultation on 'Proposed Amendments to the Patent Rules – Package 1'.

In response to comments received, CIPO has revised its proposal regarding inventorship and ownership and is providing stakeholders with a further opportunity to submit their comments on this specific issue.

Comments will be accepted from January 27, 2009 to February 26, 2009.

According to this new proposal, the Patent Rules would be amended so that neither a Declaration of Entitlement (DoE) nor the registration of any assignments would be required to complete an application.

An applicant who is not the inventor would need only to submit a statement to the effect that he is, in accordance with the Act and Rules, the legal representative of the inventor.

Any assignment that occurred before the filing date could subsequently be registered on a voluntary basis.

This would be implemented using amended provisions along the lines of the following after section 36:

• If the applicant is the inventor, the application must contain a statement to that effect.
• If the applicant is not the inventor, the application must contain a statement indicating the name and address of the inventor and,
  • in respect of an application other than a PCT national phase application, a declaration that the applicant is the legal representative of the inventor, and
  • in respect of a PCT national phase application, either
    • a declaration that the applicant is the legal representative of the inventor, or
    • a declaration as to the applicant’s entitlement, as at the filing date, to apply for and be granted a patent, in accordance with Rule 4.17 of the Regulations under the PCT
• A statement or declaration required by subsection (1) or (2) shall be included in the petition or be submitted in a separate document.
• If an application does not comply with the requirements of subsections (1) to (3), the Commissioner shall, by notice to the applicant, requisition the applicant to comply with those requirements before the expiry of the later of the 3-month period after the date of the notice and the 12-month period after the filing date of the application.

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