The Canadian government recently introduced a package of regulatory amendments that will change a number of procedural aspects of applications for patents and trademarks (with minor changes also to copyright, design and integrated circuit applications). The amendments will come into force on June 2, 2007. Some of the more salient changes are:
PATENTS
Assignments:
It is no longer necessary to file an assignment in the case of a patent application which is in the name of an assignee. Instead, the applicant must file a declaration (which may be signed by the patent agent) which states the basis for the applicant’s entitlement to the invention, such as an employment relationship with the inventor. It is still possible to optionally file a separate assignment and in at least some cases it may be desirable to do so.
“Small entity” definition and procedures:
The definition of a small entity has changed and now includes an entity that is controlled directly or indirectly by an entity other than a university having more than 50 employees. As well, the rules clarify the date when small entity status is determined, a new procedure for claiming the status, and new procedures for paying top-up fees if the status was incorrectly claimed, including provisions for requesting an extension of time for paying top-up fees. The new rules are intended to clarify the entitlement to small entity status and reduce the risk of incorrectly claiming small entity status. At current fee levels, a small entity saves about $3,000 over the life of a patent.
Sequence Listings:
The Patent Office will now accept DNA or amino acid sequence listings that are presented in the format set out in the PCT administrative instructions (generally referred to as the “WIPO format”). Previously, a unique format was required.
Miscellaneous:
The amendments introduce new procedures for obtaining refunds of fees, filing of missing information or documents on national phase entry of a PCT application including correction of a translation of the specification, new procedures (and clarification of existing procedures) relating to abandonment and reinstatement of applications, and several other minor procedural matters.
TRADEMARKS
Opposition Proceedings:
There will be a number of changes to time frames in opposition proceedings. These changes will not come into force until October 1, 2007. As further amendments regarding opposition proceedings are expected to be tabled to coincide with these amendments, a full report will follow shortly.
Service in Opposition:
One amendment that will come into force on June 2, 2007 regarding opposition proceedings is that service of opposition documents by courier or service in any other manner with consent of the parties (such as service by facsimile) will now be permitted.
Repeal of Fee for Change of Name:
The government fee of $50 per change of name has now been repealed. The government fee for recording a transfer (assignment) will remain unchanged.
Repeal of Fee for Requesting Certified Copy of the File for Federal Court Action or Appeal:
The government fee of $175 has now been repealed.
For more information on this topic, please contact Adrian Zahl [azahl@ridoutmaybee.com] or Wendy Riel [wriel@ridoutmaybee.com] at Ridout & Maybee LLP [www.ridoutmaybee.com] in Ottawa, Canada.
The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
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