October 17, 2019
By Patricia Folkins
In 2014, Canada’s patent law was amended to comply with Canada’s obligation under the Patent Law Treaty (PLT), but implementation required amending the Patent Rules. The Patent Rules have now been finalized, and amendments to both the Patent Act and Rules will come into force on October 30, 2019 (CIF).
As mentioned in the previous articles1, this series will cover the most significant amendments that affect users of the system, and in the transition to the new regime will discuss options available to Applicants.
Entitlement, transfers and changes of name under the new Rules
Under the new Rules, the requirement to establish entitlement to file a patent application has not changed. However, the means to establish entitlement have changed. Current practice requires the filing of a Declaration of Entitlement, which states that the Applicant is the legal representative of the inventors. Under the new Rules the Declaration of Entitlement is replaced with a Statement of Entitlement that simply states that the Applicant is entitled to apply for a patent application. While there is no need to provide evidence of that Entitlement, Applicants are recommended to have properly executed Assignments or other agreements in place that confirm the transfer of rights from the inventors to the Applicant named on file. If there is a succession of transfers from the inventors to the Applicant, then each step along that chain of transfers should have legal confirmation of that transfer, preferably in the form of a properly executed assignment.
In addition, under the new Rules, on or after October 30, 2019 an Applicant will be able to record the fact of a transfer instead of an recording an assignment to confirm a change of Applicant due to an assignment of rights. If the request to record a transfer is made by the transferor then all that is required is the name and address of the transferee and the recordation fee, which is currently Cdn$100. If the request to record a transfer is made by the transferee then evidence of the transfer, such as a properly executed assignment, is required.
Further, if the Applicant has changed their name, on or after October 30, 2019, an Applicant may simply submit a request to record the name change along with the recordation fee. Evidence of the change of name change will no longer be required.
In contrast to the simplified process for recording a name change, caution must be taken when there is a need to correct the identity of an Applicant in either a direct convention filing or in a PCT national phase application in Canada. There are now short timelines to make those corrections and those timelines may be even shorter if a request to record a transfer has been made in an application. For example, to correct the Applicant’s identity in a direct Canadian filing with a filing date on or after October 30, 2019, that request must be made on or before the publication date and before a transfer request is received by the Patent Office. To correct the Applicant’s identity in a PCT national phase application for any application on or after October 30, 2019, regardless of the international filing date, that request must be made within the later of (i) three months after national phase entry and (ii) 3 months after a notice sent by Patent Office if they believe the person who filed the application is not the Applicant or legal representative; and before a transfer request is received by Patent Office. While we are not sure whether or not a request to record a previous transfer (for example a “confirmatory” transfer from the inventors to the Applicant) at the time of filing will trigger the bar to requesting correction of an Applicant’s identity, it is recommended not to record such transfers to ensure the ability to make corrections to the Applicant’s identity for at least a brief time after filing.
Of relevance to the question of recording confirmatory assignments at the time of filing is that Section 51 of the current Patent Act, which specifies that “[e]very assignment affecting a patent for invention […] is void against any subsequent assignee, unless the assignment is registered […], before the registration of the instrument under which the subsequent assignee claims” will be repealed when the new Rules come into force, and its replacement section, Section 49(4), only refers to transfers of patents. Therefore it seems that the concern about an assignment being void against a subsequent assignment unless it is registered will no longer be relevant to applications, negating the need to register or record at least confirmatory assignments at the time of filing an application.
In view of these shortened deadlines, it is important to make sure that the bibliographic information presented in any application is checked carefully for accuracy. Our next article (Part VIII) will provide further information about correcting other errors made in a patent application or a patent under the new Rules.
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