News, Patents

Bill C-43 Changes

Canada to amend its Patent Act – summary of key points and timelines

The Canadian Patent Act is to be amended in an effort to harmonize our laws with other countries as required by the Patent Law Treaty.  These amendments represent the most significant changes to our laws since the Patent Act was amended in 1996.  The objective is to simplify Canadian patent law to avoid unintentional loss of patent rights resulting from failure to comply with formalities and certain time limits.  Thus, these changes potentially represent a positive development in Canadian patent law for our clients.  However, as with any change to patent laws, this remains to be seen until after the changes are applied in a real world context.

Please note that, as of yet, the changes to the Patent Act have not come into effect.  Latest indications suggest that the new Act and Rules will be implemented in late 2017 or even 2018.  We will keep you posted on developments.  In the meantime, provided below is a brief overview of some of the more noteworthy changes.

Filing date requirements

  • A filing fee will no longer be required upon filing.  Instead, it can be paid later without impacting the establishment of a filing date.
  • A patent applicant will be able to add material to the specification and drawings after the filing date.  The added material can be supplied up to six months from the filing date.  Note however that the new matter must be supported by a priority document – otherwise a new filing date will result.
  • Currently, a patent application in Canada has to be filed in one of Canada’s two official languages, English or French.  The changes will allow a patent applicant to file a patent application in another language and supply the translation later.

Reinstatement of abandoned applications

  • Currently, a patent or patent application becomes abandoned if certain deadlines are not met, but can be reinstated within one year of abandonment date, regardless of the deadline missed and without any explanation required for the deemed abandoned.
  • However, under the changes, the reinstatement requirements will be more complex.  There will be an additional requirement that a statement be supplied providing reasons the actions were not taken that caused the abandonment and that “due care” had been taken.

Notification of missed fee payments/deadlines

  • Notices will be sent if certain fees are not paid on time, setting specific deadlines for compliance depending on the nature of the missed payment.  This replaces the current, more straight-forward reinstatement procedure outlined above in which an application can be reinstated within one year of abandonment regardless of the reason for abandonment.

Restoration of priority

  • Currently, an application can only claim priority to a previous patent application if the patent application is filed within 12 months from the previous application.  The deadline can be extended to 14 months if failure to meet the 12 month deadline was unintentional.

Infringement when patent deemed abandoned

  • Under the changes, a patent will not be enforceable during periods in which it was abandoned, provided that the infringing activity during that period was carried out in good faith.

The above discussion is only a brief overview of some of the changes.  Many of the changes are more complicated than initially meets the eye.  However, our experienced team of professionals would be happy to help you navigate through some of the complexities of these changes after they are implemented, with every effort to maximize your IP rights in Canada.


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