Anticipated amendments to the Canadian Patent Rules are expected to come into effect on October 1, 2010. Those amendments include changes to the existing requirement to file a Declaration of the basis for the applicant’s entitlement to file the application. The prescribed requirements for a Declaration of Entitlement have proved problematic for many clients and the new amendments should simplify matters in many cases.

When the new amendments come into effect the current prescribed requirements for filing a “Declaration of Entitlement” will be removed. If the applicant is the inventor, then a statement to that effect will be required. If the applicant is not the same as the inventor, then the application will need to include a declaration that the applicant is the “legal representative” of the inventor. For national entries of PCT applications, the application could alternatively contain a declaration that satisfies the Regulations under the PCT. A “legal representative” of the inventor may be an assignee but can also encompass other persons claiming through or under the inventors. Because the declaration that the applicant is a legal representative of the inventor will not be a completion requirement, the Rules will not prescribe a deadline to supply it to CIPO. Instead, applicants who do not fulfill the requirements when they file the application will be requisitioned to fulfill them before the later of three months from the requisition or twelve months from the filing date of the application.

There are transition provisions which may allow some applicants to avoid or simplify the requirement to file a Declaration of Entitlement in some pending cases. Briefly, if the time period set by CIPO to submit a Declaration of Entitlement has not expired before the new amendments come into effect, then in some cases the applicant may be entitled to comply with the amended Rules rather than the current Rules. Please contact us if you would like further information in this regard or regarding any other aspect of Canadian practice.