- Patent Applicant Entitlement Requirements: What Changes as of October 1st
- September 14, 2010
- Law Firm: Norton Rose OR LLP - Montreal Office
As of October 1, 2010, amendments to the Canadian Patent Rules should simplify the procedure for entitling applicants, such as corporations, to act in the name of inventors for patents and patent applications.
Patent practitioners in Canada, and many of their foreign associates, are by now well aware of the somewhat burdensome requirements brought about by the previous Patent Rules amendments. These requirements involved filing a Declaration of Entitlement that obliged applicants to select an entitlement basis from a list of eight qualifications. Moreover, the date for this basis was required to be no later than the Canadian filing date. In practice, this has not always been a straightforward task, especially for national phase entry of an application filed under the Patent Cooperation Treaty (PCT), where the Canadian filing date could be many months or even years in the past. Further, the Declaration of Entitlement has been essential for a patent application to be considered complete. If not filed by a specified time, the Canadian Intellectual Property Office (CIPO) has requisitioned this document along with the payment of a fee.
These entitlement requirements are greatly simplified as of October 1, 2010.
Instead of a Declaration of Entitlement, an applicant is required to provide a declaration that it is "the legal representative of the inventor."
An applicant under the Patent Act is defined to include "an inventor and the legal representatives of an applicant or inventor." While somewhat circular, this definition appears to leave a non-inventor applicant no alternative other than being a legal representative. Further, the definition of legal representative is broad enough to encompass "all other persons claiming through or under applicants for patents and patentees of invention":
"'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."
In virtually all cases, it is much more straightforward for an applicant to declare itself a legal representative than it has been to select a specific qualification acceptable for a Declaration of Entitlement.
Furthermore, the issue of an applicant's entitlement basis as of the filing date is removed, thus further simplifying the exercise of establishing an applicant as a legal representative.
While CIPO can still requisition the filing of the Declaration of Legal Representative and set an official deadline, the new Rules no longer require an accompanying fee payment.
The new Declaration of Legal Representative requirement applies to all patent applications, including national phase entries of PCT applications, filed on or after October 1, 2010. The new Rules also apply to some applications filed before October 1, 2010. In particular, for patent applications for which CIPO has requisitioned a Declaration of Entitlement accompanied by a fee and for which the deadline for reply has not expired as of October 1, 2010, the new Rules cancel the requisition and the applicant can expect to receive a new requisition for the simpler Declaration of Legal Representative.
Although the registration of an assignment is not requisitioned under the Patent Rules, the Patent Act, which takes legal precedence, provides that an assignment of a patent is void against any subsequent assignee unless it is registered before the registration of an instrument under which the subsequent assignee claims. For this reason, and because registration is a good way to ensure that chain-of-title documents are not lost, it remains advisable to prepare and register assignments relating to patents and patent applications in Canada.
Overall, given the expected benefits to Canadian and foreign applicants for patents in Canada, the Rules Amending the Patent Rules have received a warm welcome by the Canadian patent community.
 The Rules Amending the Patent Rules received royal assent on November 26, 2009 (SOR/2009-319).
 Rule 37 of the Patent Rules as of October 1, 2010.
 Transitional provision 29 of the Rules Amending the Patent Rules.
 Section 51 of the Patent Act, R.S.C. 1985, c. P-4.