Canadian Patent Practice Changes

  • August 2, 2019



Canada’s new Patent Act and Rules will come into force on October 30, 2019. These changes will bring Canada into compliance with the Patent Law Treaty and align Canadian patent practice with international practices.

Applicants will certainly benefit from the revisions to the patent system in Canada, however, there are some significant adjustments from current practice that require attention and careful planning. We have provided below a summary of how these changes will affect your Canadian patent matters.

Currently Pending Canadian Patent Applications
1. Reinstatement and Missed Requisition Deadlines Issued Prior to October 30, 2019
• Under these circumstances patents and patent applications will be able to be reinstated as a matter of right within 12 months of the missed deadline.

Canadian Patent Applications Filed or Entering National Phase On or After October 30, 2019
1. Canadian Applications Other than National Phase Entry Applications
• The requirements to obtain a filing date in Canada will be greatly simplified; the filing fee and a translation of an application into English/French will no longer be required on filing but both must be provided within a 2 or 3 month deadline set out in notice(s) issued by the Canadian Intellectual Property Office.
• Certified copies of priority application(s) will now be required within the later of 4 months from filing an application and 16 months from the priority date.

2. PCT National Phase Entry of Applications Having an International Filing Date On or After October 30, 2019
• It will still be possible to enter the National Phase up to 42 months from the earliest priority date but only upon showing that the failure to meet the 30 month deadline was “unintentional.”
• Certified copies of priority application(s) must be supplied concurrently with filing a request for entry into the National Phase in Canada, UNLESS a certified copy was already provided during the International Phase.
3. Restoration of Priority
• Restoration of priority will be available, upon showing that failure to file in Canada within 12 months of the priority date was “unintentional”, if:
i. priority was restored during the International Phase,
ii. a request for restoration of priority is submitted within one month from the date of national entry, or
iii. a Canadian application and a request for restoration of priority is filed within 2 months of the missed convention year.

4. Grace Period
• A grace period for inventor derived disclosures extends to the earlier of 12 months from the Canadian filing date or the priority date. Previously, an application had to be filed in Canada within 12 months of a disclosure.

5. Submission of Missing Information from Priority Application
• An application may be corrected by adding a missing part of the description or drawing from a priority application. An non-extendable deadline will be set of no later than 6 months from the filing date.

All Canadian Patent Applications
1. Maintenance Fees and Examination Fees Due On or After October 30, 2019
• Examination must be requested from filing dates (including International filings dates for national phase entry applications) as follows:
 5 years from filing dates prior to October 30, 2019; and
 4 year from filing dates on or after October 30, 2019.
• On or after October 30, 2019, anyone can pay a maintenance fee on a pending patent application. Currently, this is only possible in respect of granted patents.
• If a maintenance fee or examination fee deadline is missed, there will be a grace period for the payment that extends to the later of 6 months from the missed deadline and two months after a late notice is issued from the Office. Late fees must be paid.
• If the fees are not paid before expiry of the grace period, then the application will be abandoned. If the Applicant then wishes to reinstate the application, the request for reinstatement must be accompanied by a statement indicating the reasons for failure to take the action and that this failure “occurred in spite of due care.” Reinstatement will only be granted if the Office determines that the deadline was, in fact, missed in spite of the due care.

2. Deadlines Set On or After October 30, 2019
• Response and Final Fee deadlines will have a shorter term of 4 months for responding, which will be extendable, for a fee and with a reason, to a maximum of 6 months if the extension is requested prior to expiry of the deadline.
• Applications in which a sequence listing was submitted electronically will no longer be subject to excess page fees for the electronic sequence listing.
• If there is a desire to re-open prosecution after a Notice of Allowance has been issued there will be a new mechanism available to withdraw the allowance upon payment of a fee to return the application to the examiner.

3. Applicant/Inventor Updates and Corrections
• The Applicant or Patentee can request recordal of a transfer in ownership without submitting evidence of the transfer. A transfer can also be recorded by a Transferee, but only if the Transferee makes the request together with submission of evidence of the transfer.
• An error in the identity of an applicant may be corrected at any time on or before publication of a non-PCT application or within three months of National Phase entry of a PCT application.
• An error in the identity of an inventor may be corrected prior to allowance, and an error in the name (rather than the actual identity) of an inventor may be corrected on or before the time of paying the Final Fee.

4. Abandonment, Reinstatement and Third Party Rights
• Previously, when an application or patent is abandoned and then reinstated in Canada there was no loss of rights associated with the period during which the application is abandoned. However, after October 30, 2019, for any missed maintenance fee or examination fee payments, there will now be intervening third party rights that will accrue from 6 months after the missed deadline.

The procedures and mechanisms by which the Patent Act and Patent Rules will be implemented by the Canadian Intellectual Property Office, and interpreted by the Canadian Courts, remain to be seen: for example, how will “due care” and “unintentional” be interpreted?

The comments provided herein are intended to highlight those changes that are most relevant to ongoing patent prosecution in Canada and are not a complete and comprehensive review of the upcoming amendments. If you have any questions regarding patent protection in Canada or the impending changes, we would be pleased to discuss individual needs with you directly.

KIRBY IP – New Canada Act and Rules Newsletter

Kirby Eades Gale Baker

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Ottawa, ON K1N 0A1

Tel.: (1) 613 237 6900
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