September 15, 2020
By Carmela De Luca and Alissa Hyppolite
On October 30, 2019, a number of significant amendments to the Canadian Patent Act and Patent Rules came into force, which include amendments affecting the procedures for registering assignments and changes of name. Under the new regime, the term “transfer” replaces “assignment” and the term “record” replaces “register”.
Recording a change of name or a transfer with the Canadian Intellectual Property Office (CIPO) for a patent or application is not mandatory, but there are still good reasons to do so. It is also important to ensure that patents issue to the correct entity and CIPO’s records provide accurate ownership information to the public.
Recording transfers with CIPO is especially important because section 49(4) of the Patent Act provides that a patent transfer not recorded with CIPO is void if a subsequent transferee records a transfer with CIPO. The previous version of this section specifically included applications, whereas the current version explicitly includes patents but does not reference applications. This wording change would seem to suggest that this rule no longer applies to patent applications.
Under the previous version of the Patent Act, to register an assignment the applicant or patentee was required to request registration of an assignment, provide a copy of the assignment document, and provide an affidavit or other proof that the assignment was signed and executed.
Under section 49 of the new Patent Act and section 126 of the new Patent Rules an applicant or patentee no longer has to provide evidence of a transfer or a copy of an assignment to record a transfer. However, where the transferee alone requests the recording of a transfer, evidence of the transfer is still required. A copy of the document effecting the transfer along with one of the following documents is considered satisfactory evidence of the transfer:
Additionally, section 49(5) of the amended Patent Act allows the Commissioner of Patents to remove a recorded transfer where it receives satisfactory evidence the transfer should not have been recorded. The Patent Act does not specify what is considered satisfactory evidence; however, section 49(6) of the Patent Act specifies that the Commissioner may not remove the recording of a transfer only because the transferor previously transferred the patent to another person. The use of the term “patent” with no reference to applications in this section again seems to indicate that this limitation does not apply to patent applications.
Recording Changes of Name
Under the previous version of the Patent Rules, to register a change of name on a patent or application, an applicant or patentee had to request the registration of a change of name and submit evidence showing the change of name occurred, specifically a statutory declaration, affidavit, or copy of the change of name document. Under section 125 of the amended Patent Rules an applicant or patentee can now request a change of name without submitting evidence of the name change.
Amendments to the Patent Act and Patent Rules have made the procedure for recording a transfer or change of name less onerous for applicants and patentees.
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