The Change to the Patent Rules
As of June 2, 2007, section 94 of the Patent Rules was amended to provide that Canadian patent applications must include a declaration of the applicant's entitlement, as of the filing date, to apply for and be granted a patent. The declaration may be filed as a separate document. For PCT cases it may be included in the international application as part of the request, and for non-PCT cases it may be included as part of the petition.
Section 37 of the Patent Rules was revoked as of the same date. This section previously required an applicant other than an inventor to record copies of assignments and other documents relevant to the applicant's entitlement to file the patent application. Under transitional provisions, applications having a filing date before June 2, 2007 that meet the requirements of revoked section 37, do not require a Declaration of Entitlement. (For national phase entries of PCT applications, the "filing date" is the international filing date.)
Declaration of Entitlement under the Current Patent Rules
The Declaration of Entitlement is not necessary at the time of filing a Canadian patent application. For PCT cases, it is due within three months of the national phase entry. For non-PCT cases, it is due within fifteen months of the filing date, or where Convention priority has been claimed, within fifteen months of the earliest priority date. If the declaration is not filed when due, the Patent Office will issue a requisition that it be filed within a specified period (usually three months) along with payment of a completion fee, failing which the application will be considered abandoned.
The declaration relates only to the entitlement of the applicant as of the filing date of the application (for PCT cases, the international filing date). Transfers that occur after the filing date are not recited in the declaration, but should be registered with the Patent Office, such as by registering an assignment, to maintain a current record of the chain of title.
The form of the declaration is based on standard language adopted under 4.17 (ii) of the PCT Rules and sets out a number of possible grounds on which the applicant may establish the applicant’s right to file a patent application and be granted a patent. Unfortunately, some of these grounds may not reflect Canadian law. One significant issue pertains to applications filed by an inventor’s employer. The form of the declaration includes the option of reciting that the applicant is "entitled as the employer of the inventor". In Canada, apart from circumstances governed by special provisions such as those of the Public Servants Inventions Act, the presumption is that the rights to an invention created by an employee generally vest initially with the employee. It is only where there is an express, legally enforceable term of employment in favour of the employer, or where the individual was employed for the specific purpose of inventing, that beneficial ownership belongs to the employer. Moreover, even when an employer can claim beneficial ownership of the rights in an employee’s invention, it is unclear under section 49 of the Patent Act whether the employer can file a patent application in its own name without first obtaining a written assignment of the legal rights from the employee-inventor.
Possible Conflict with the Patent Act
While the Patent Rules were amended, the Patent Act itself has not been changed to refer to the filing of Declarations of Entitlement. While the declaration form in the Patent Rules provides that reciting that the applicant is the inventor’s employer is sufficient to establish entitlement, this provision does not appear to be consistent with the Patent Act or the common law. In particular, the Patent Act provides that a patent may be granted to a person to whom the inventor has assigned in writing or bequeathed by his last will his right to obtain it. As a result, it is strongly recommended that where a Canadian patent application is filed by the employer of the inventor(s), a written assignment should be obtained from the employee(s) to transfer the legal rights to the invention as of the application filing date or earlier, and unless the declaration can be omitted under the transitional provisions, a Declaration of Entitlement should be filed referring to such an assignment.
Similar considerations may apply to patent applications for inventions made by non-employees of the applicant in the course of work conducted pursuant to a contract. Notwithstanding any agreement that such inventions are to be owned by the applicant as the party for whom the work is conducted, the applicant should obtain a written assignment from the inventors (and in some cases, their employers) to transfer the legal rights in the invention as of the application filing date or earlier.
Regardless of whether the transitional provisions apply, it is recommend that all assignments, including those effected before the application filing date, be registered in the Patent Office, although merely filing a Declaration of Entitlement referring to the assignment may be sufficient to comply with the Rules. This is because under section 51 of the Patent Act, an assignment is deemed to be void against any subsequent assignee unless it has been registered.
In cases where the applicant does not already have an assignment from the inventor(s) suitable for registration in the Patent Office, we can provide an appropriate document.
Patent law is territorial and it should therefore be expected that Canadian courts would apply Canadian law to general ownership and entitlement issues involving a Canadian patent or application. Accordingly, we advise that foreign applicants should also follow the above recommendations, in particular a non-inventor applicant such as an employer should obtain a written assignment of Canadian rights from the inventors, even if an assignment is not required to apply for and be granted a patent in the jurisdiction where the applicant and/or the inventors reside.