October 24, 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.
Correction of errors
As mentioned in our most recent article in this series, the new Rules bring in an entire new regime for correcting errors made in an application and in a patent. The mechanism for correcting “clerical errors” under the current Patent Act is defined under Section 8. So-called Section 8 requests are not well-defined in the Act and Rules and therefore the new provisions are intended to provide more clarity about what can be corrected and when.
Some of the most common errors made in patent applications are in the naming of the Applicants and the inventors. These errors fall into two categories under the new Rules: those that result from incorrectly identifying who the inventor or Applicant is, and those that do not. An error that results in the mis-identification of an inventor or an Applicant is, for example, naming the wrong person or entity as the Applicant, such as Bob Smith instead of John Smith, or Company X instead of Company Y. An error that does not result in the mis-identification of an inventor or an Applicant is, for example, misspelling the name of the inventor or Applicant, such as Bob Smith instead of Robert Smith, or Tesle instead of Tesla.
It is important to note that the time limits for filing a request to correct an inventor or Applicant name are now set, and in some circumstances are rather limited. For example, to correct the identity of an Applicant in a regular or convention filing, the request must be filed on or before the publication date and before a transfer request is received by the Patent Office. The provision does not apply to applications with a filing date before October 30, 2019, in which an assignment is registered. To correct the identity of an Applicant in a PCT national phase application, the request must be filed: within the later of (i) three months after national phase entry, and (ii) 3 months after notice sent by the 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. Requests to correct the identity of an Applicant require a statement that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention.
Correcting the identity of an inventor may be done any time before the day a notice of allowance is sent and, for an that error does not change the identity of the Applicant or inventor, correction may be requested anytime on or before payment of the final fee.
There appears to be no change to the mechanism to add or remove an inventor or Applicant from an application, as the provisions set out in Section 31(3) (removing Applicants) and Section 31(4) (adding Applicants) of the Patent Act remain unchanged after the CIF date.
Under the new Rules, requests to correct errors in a priority claim filing date must be submitted usually before the EARLIER of 16 months from the corrected priority date and 16 months from the uncorrected priority date. Errors in name of a country, office of filing or number of a priority application in a priority request may be submitted on or before payment of the final fee.
The timing for making requests for correcting obvious errors in an issued patent have also been defined in the new Rules. For obvious errors in the patent, specification and/or drawings that were made by the Patent Office, the request for correction must be made no later than 12 months after the day on which the patent is issued. If errors in a patent were made by the Patentee, including errors in the name of the Patentee or inventor (if the correction does not change identity) and obvious errors in the specification or drawings, the request for correction must also be made not later than 12 months after the day on which the patent is issued but requires payment of a fee.
Note that obvious errors are defined as errors where what is written in the document is obviously not what was intended and that the requested correction is what was obviously intended.
In view of these shortened deadlines for correcting Applicant, inventor and priority information, it is important to make sure that the bibliographic information presented in any application or patent is checked carefully for accuracy. Further, issued patents should be checked promptly after issuance for any obvious errors as requests for correction can only be made within the first year.
Information on this website is for information only. It is not, and should not be taken as, legal advice. You should not rely on, or take or not take any action, based upon this information. Professional legal advice should be promptly obtained. Bereskin & Parr LLP professionals will be pleased to advise you.