Late last year, Canada adopted amendments designed to simplify
and clarify its Patent Rules (Rules).1 Although
these amendments do not come into force until October 2010, patent
applicants and patent lawyers, alike, are eagerly awaiting them
because they significantly simplify the procedure for patent
applicants to establish their entitlement to a
The current Rules require that an applicant in Canada establish
its entitlement by filing a declaration that is structured to make
the applicant select from a list of prescribed statements (e.g.,
the applicant is entitled to the grant of a patent by way of an
assignment). The rigidity of the prescribed statements has caused
confusion and uncertainty. This is especially true for applicants
seeking a Canadian patent on the basis of an application filed
under the Patent Cooperation Treaty (PCT), in part because the
statements refer to the applicant's entitlement as at the
filing date of the PCT application, rather than the national entry
date for the Canadian application. Furthermore, according to the
current Rules, the filing of a declaration is a "completion
requirement" (i.e., the requirement must be fulfilled in order
to obtain a Canadian filing date), which means that there is a
limited time to comply with the requirement before an additional
fee is incurred.
When the amended Rules come into force, the declaration of
entitlement will cease to be a completion requirement; thus, there
will be no prescribed time limit for an applicant to file this
document. Additionally, although the amended Rules will still
prescribe the statements for establishing entitlement, the wording
will be more flexible in only requiring that the applicant declare
that it is the legal representative of the inventor, without any
reference to the international filing date. The term "legal
representative" refers to assignees and other persons claiming
through or under inventors for patents and patentees of
Applicants filing in Canada under a PCT application can also
establish their entitlement in Canada by way of a declaration filed
under the PCT rules.
The amendments to the Rules are a welcome development that
should save applicants time and expense when seeking Canadian
1. The amendments also make a number of minor changes to
clarify the language of the Rules and render the terminology
2. "Entitlement" refers to an applicant's
right to apply for a patent in Canada; an applicant typically
establishes entitlement by declaring that it is the assignee of the
3. This term was used to establish an applicant's
entitlement for many years prior to adoption of the current
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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