Changes In RequirementsTo Establish Applicant EntitlementTo File Canadian Patent Applications

Since June 2007, Canadian Patent Applicants have been required to submit a "Declaration of Entitlement" (the "DOE") according to a prescribed set of conditions therefor, in Schedule 3 of the Patent Rules. Under Schedule 3, the Applicant has been required to identify the basis for their entitlement according to a prescribed list. The DOE has been relevant only to events that occurred before the relevant date as defined above. The “relevant date” has thus been the actual Canadian filing date for regularly filed Canadian applications, or the international PCT filing date, for PCT applications.

Intended as a procedure to reduce the administrative burden, the DOE has added considerably to it, since it was necessary to establish a basis for entitlement before filing a Canadian Patent application. It has been particularly burdensome for Applicants who have relied on confirmatory assignments executed after the actual Canadian filing date, or the PCT filing date for later National Stage entries in Canada. Such a post filing date assignment has usually not provided sufficient basis to support a Declaration of Entitlement.

As of October 1, 2010, changes in the Patent Rules in Canada simplify the filing of Canadian Patent Applications. The DOE is no longer required. Instead, the Canadian Patent Rules require a much simpler "Declaration of Legal Representative" (DLR) that the Applicant is the legal representative of the inventor (Our emphasis). (PCT Applicants entering the National Stage in Canada on or after October 1, 2010 have the choice between the DLR and a Declaration of Entitlement under PCT Rules. We will focus on the DLR for the purposes of this report.)

According to the Canadian Patent Act, “applicant” includes an inventor and the legal representatives of an applicant or inventor, while “legal representatives” includes heirs, executors, administrators, guardians, curators, tutors, assigns and all other persons claiming through or under applicants for patents and patentees of inventions.

These statutory definitions would appear to include a wide catchment of people and entities that could conceivably be named as Applicant. Moreover, the new DLR appears to offer a considerably simpler entitlement regime since the sole condition for entitlement is that the Applicant is the legal representative of the inventor.

Further, the present tense of the statement seems to suggest that the "relevant date" of the DLR may arguably be the date of signing of the DLR.

The new Patent Rules now provide for three options according to the filing date of Canadian Patent Applications:

  1. For Applications filed on or after October 1, 2010: In respect of applications other than PCT national phase applications, the DLR will be required. Applicants entering the national phase in Canada may, however, submit either a DOE (under the PCT Rules) or a DLR.
  2. Applications filed on or after June 2, 2007, but before October 1, 2010: Either a DOE or a DLR may be submitted.
  3. Applications filed before June 2, 2007: An assignment from the inventor(s) to the Applicant may be registered, or a DOE or DLR may be submitted.

If an application does not contain the DLR, the Commissioner shall, by notice to the Applicant, requisition the Applicant to comply with those requirements before the later of the expiry of the 3-month period after the date of the notice and the expiry of the 12-month period after the filing date of the application.

For most cases, we currently anticipate that the DLR will be straightforward. For those exceptions that we encounter, we will be pleased to advise you on a case by case basis. In any event, we will continue to monitor the implementation of the DLR.

Of course, if you have any specific questions, we'd be pleased to address them.