It will no longer be necessary for an Applicant in a Canadian patent application to provide a Declaration of Entitlement of Applicant.
The Declaration of Entitlement necessitated determining the chain of title by which the Applicant was entitled to apply for a patent on behalf of the inventors before the date of filing of the Canadian application. In the case of PCT national phase applications filed in Canada, the date of filing of the Canadian application is lathe PCT filing date and title documents signed after filing of the PCT application could not be used as ground for entitlement of the Applicant in Canada. This has now been addressed in the Rules amending the Patent Rules which take effect on October 1, 2010.
Starting on October 1, 2010, a simple statement that the Applicant is the legal representative of the inventors will be required. A proof of legal representation will not be requested. The definition of "legal representative" specified in the Patent Act is most likely broad enough for most Applicants to claim a "legal representative" status.
"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;
The new rules apply to the following types of patent applications:
- Patent applications (including PCT national phase applications) filed on or after October 1 2010.
- Patent applications (including PCT national phase applications) filed before October 1 2010 for which a notice concerning submission of a Declaration of entitlement was received, if the time for reply to the notice has not expired on October 1, 2010.
If your patent application falls into one of the above categories and the Applicant is not the inventor, we will file, unless advised to the contrary, the following statement on behalf of the Applicant:
The inventor(s) is/are , whose complete address is/are and the applicant is the legal representative of the inventor(s).
In cases where the Applicant is the inventor, we will file a simple statement to that effect.
If a declaration of entitlement was filed in respect of a PCT application, as of the date of filing of the PCT application, this declaration will be deemed to have been received by the Canadian Patent Office and will suffice for Canadian entry. A separate declaration of legal representative will not be required.
Although this procedure really simplifies matters with respect to the chain of title, we still highly recommend registering assignment documents since section 51 of the Patent Act requires that every assignment affecting a patent for invention is void against any subsequent assignee unless the assignment is registered before the registration of the instrument under which the subsequent assignee claims.