A new system of Patent Term Adjustment (PTA) is now available to offset significant Patent Office delays in the prosecution of eligible patents that issue after December 1, 2025.

Threshold eligibility for a Patent Term Adjustment

Only for a patent filed on or after December 1, 2020, and issued after December 1, 2025.

The granted patent must issue the later of: five (5) years from the date of PCT national phase entry, the presentation date for a divisional application, or the filing date for a non-PCT application; and three (3) years from the examination request date.

Within three (3) months of the date of grant of the patent, the patentee must submit a request for PTA and pay the fee of C$2,500 (C$1,000 for small entities)[1].

Assessment of the PTA Term

The Term of any PTA is calculated by determining the days for the patent to issue from the later of the start dates listed above, minus days to be subtracted for periods considered attributable to the Applicant, as set out in the Rules[2].  The subtracted days include, for example:

The period commencing on the mailing date of an Examiner’s Report or a notice issued by Patent Office, and ending on the date of Applicant’s response and/or fee payment;

The period required to complete examination up to allowance following a request for continued examination (RCE), or following a third Examiner’s Report if examination was requested prior to October 3, 2022;

The period for which the application is deemed abandoned, or for extensions of time requested by the Applicant and granted by the Commissioner.

Maintenance of PTA Term

Following the issuance of a certificate of PTA, the PTA begins on the expiry of the normal 20-year term of the patent, provided the patent remains in force at that time.  The PTA, however, will not add any term to a patent granted an extended term under a Certificate of Supplementary Protection (CSP) for delays in obtaining marketing authorization for pharmaceutical products.  Annual maintenance fees of $1,000 ($400 for a small entity)[3] are required during the PTA.

Some practical considerations

For the first time in Canada, Patentees can obtain recourse for Patent Office delays in the patent prosecution ‎process. ‎

As noted above, since the Patent Office will effectively have a minimum total of 36 months to issue a patent without it qualifying for any PTA, and based on current published Patent Office performance targets for 2025-2026[4] to send a first Office Action within 17 months of request for examination, it is estimated that only a small minority of patents will meet the threshold eligibility.  As well, given a relatively large number of applicable periods having days to be subtracted, and the relatively large fees to request and maintain a PTA Term, this may also mean that few Patentees may take advantage of the new system.

Maintaining existing strategic considerations for optimizing patent scope in Canada, including deferring examination in Canada, and avoidance of potential pitfalls, should be weighed against any potentially available PTA Term.

Please contact one of our team members if you wish to discuss further.

[1] 2025 fee

[2] subsection 117.03 (1) of the Patent Rules

[3] 2025 fee

[4] https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/corporate-information/performance-targets#pa