For many years, section 29 of the Canadian Patent Act required that a foreign (non-Canadian) patent applicant appoint a legal representative in Canada. Although this was not of concern to our foreign clients, because we act as their Canadian legal representative, it often was a problem for self-filed (pro-se) foreign inventors
who did not have a Canadian address or a Canadian patent agent.
Section 29(1) of the Patent Act used to read as follows:
29 (1) An applicant for a patent who does not appear to reside or carry on business at a specified address in Canada shall, on the filing date of the application, appoint as a representative a person or firm residing or carrying on business at a specified address in Canada.
As of September 21, 2017, when Bill C-30: “An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures” took effect, the entire section 29 has been repealed (deleted). The Patent Office’s manual (MOPOP) has also been updated to remove references to section 29 and the need for a Canadian representative.
Therefore, self-filed (pro-se) foreign inventors will no longer need to appoint a Canadian resident as their representative.
Note that the Patent Office still strongly recommends that inventors retain a patent agent: “…it could be a good idea to hire an agent so that you get the best protection possible for your invention”.
Moreover, where the applicant is an assignee, a patent agent or associate patent agent is required to prosecute and maintain the application (Patent Rules: s. 2 – “authorized correspondent”; s. 6(1)).
If you need assistance with applying for a Canadian patent, please contact us we are happy represent you at the Canadian Intellectual Property Office.