Canada: Canada Prepares For Patent Law Treaty

The Canadian Patent Act (the "Patent Act") is undergoing amendment courtesy of Bill C-43, known as the Economic Action Plan 2014 Act, No. 2 tabled in the House of Commons on Oct. 23, 2014. Canada is fulfilling its undertakings to adhere to the Patent Law Treaty ("PLT") adopted in Geneva on June 1, 2000, which provides for worldwide harmonization of national patent formalities, simplification of national patent office procedures and standardization of mechanisms to help avoid unintentional loss of patent rights resulting from failure to comply with formalities and specified time limits. However, the amendments introduce additional changes beyond Canada's treaty obligations.   

The changes to the Patent Act provided by the amendments focus on a number of different areas, including: time limits for payment of fees; reinstatement periods; priority requests; application content; application/patent transfers and noted other changes. The amendments also provide the authority of the Governor in Council to make regulations under the Patent Act in order to implement the amendments to the Patent Act.

Fee Payments

Fee payments under the Patent Act include: an application fee for filing the application; annual maintenance fees required to maintain the application (or a patent) in force; and an examination fee required to initiate formal examination of the application. 

Under the current Patent Act, the application fee must be paid in order to obtain a filing date. Under the amendments, if the application fee is not paid on the date on which all of the other filing date requirements are met, the Commissioner of Patents will send a notice informing the applicant of non-payment and requiring payment with a late fee by a prescribed date.

Under the current Patent Act, each maintenance fee to keep an application alive or a patent in force must be paid either by its prescribed date or within a reinstatement period of 12 months of that prescribed date with an additional late fee.  Failure to provide payment within the reinstatement period will result in a "dead" application or lapsed issued patent. Under the amendments, similar to the application fee, if the maintenance fee is not paid within the prescribed date, the Commissioner of Patents will send a notice informing the applicant of non-payment. Payment must be made within the later of six months from the prescribed date or two months from the date of the notice.

These amendments replace the straightforward reinstatement period (see Reinstatement Periods below) of the current Patent Act by inserting an extension period of at least six months following the original deadline before a new more onerous reinstatement process is triggered. 

A similar process is instituted by the amendments in relation to requests for examination. However, the extension period is a maximum of two months from the date of a notice from the Commissioner of Patents when the original payment deadline is not met.

Reinstatement Periods

Abandonment of an application or patent under the current Patent Act will occur if certain deadlines such as making fee payments, filing good faith responses to examination requisitions, etc. are not met. Currently, reinstatement rules are simple and the same for all types of abandonment: within 12 months of the abandonment the applicant must complete the action that was required to be taken to avoid the abandonment and submit a simple reinstatement request with a reinstatement fee. 

However, under the amendments, new and more onerous reinstatement requirements are provided for abandoned applications and patents. The reinstatement process will be more complicated, as an additional requirement is that the applicant or patentee must additionally state "reasons for the failure to take action that should have been taken to avoid the abandonment". Further, the Commissioner of Patents must determine that the failure occurred in spite of the due care required and inform the applicant or patentee of this determination.  Another provision in the amendments is that the required "reasons for the failure" can be challenged in the Federal Court if the stated reasons contain a material allegation that is untrue. 

As a result of these amendments it appears that applicants will no longer be permitted to electively abandon an application after allowance to reopen prosecution.

Prudent applicants and patentees may wish to make greater efforts to comply with prescribed dates to avoid abandonment and reliance upon the reinstatement process.

Priority Requests

Under the current Patent Act, a request for priority to a previously filed patent application (the "priority application") can only be made if the application is filed within 12 months of the filing date of the priority application. Under the amendments, advantageously this 12 month period is extended to 14 months, as long as any delay in filing after the 12 months by the application was unintentional. However, the amendments also provide for the Federal Court to revoke the priority claim if it is determined that the delay was intentional.

Application Content

Under the current Patent Act, no "new" descriptive or illustrative material can be added to a filed application. In other words, any changes to the description or drawings of an application must be "inferable" from the description or drawings as originally filed. Under the amendments, a stated "reference" to the priority application can be provided at the time of filing the application rather than explicitly providing all or part of the description or drawings contained in the priority application. The stated reference can also be provided up to six months after filing the application. Use of the stated reference will advantageously allow added description or drawings to the filed application that would have otherwise been considered "new" under the current Patent Act, so long as the added description or drawings can be deemed as completely contained within the priority application.   

Application/Patent Transfers

The Amendments introduce new title transfer provisions directly into the Patent Act. These provisions include 1) voiding the submission of a patent transfer, in the event of recordation against title of the patent has already occurred, even if the patent transfer is dated earlier than the recordation and 2) the Commissioner of Patents can remove the recording of a transfer of an application or patent upon receipt of evidence satisfactory that the transfer should not have been recorded. These new title transfer provisions will influence timeliness of submitting patent transfers as well as the ability to void the recordation of patent/application transfers.   

Noted Other Changes

Among the many other amendments contained in B C-43, the following are noteworthy:

Under the amendments, third party rights may be affected in relation to applications that were abandoned or where certain fees were paid short of abandonment during extension periods. No action for infringement of a patent lies against a person in respect of an act that would otherwise constitute an infringement of the patent if that act is committed in good faith by the person during a period that is established by regulations to be made under the new amendments. Similar rights may be extended to acts or preparations undertaken by a person during a period that is established by regulations to be made under the new amendments where the business of the third party is transferred to another.

The amendments provide powers to the Governor in Council to make rules or regulations "respecting the circumstances in which an applicant, patentee or other person may or must be represented by a patent agent or other person in business before the Patent Office". Also noted is that the amendments repeal section 29 concerning non-resident applicants (those applicants not residing in or carrying on business at a specified address in Canada) and representative nominees for non-resident applicants. The Canadian patent profession will, no doubt, be interested in how these amendments will be interpreted and implemented. 

Also changed by the amendments is section 12(1)(j.8) of the current Patent Act, whereby the Commissioner of Patents is authorized to extend the time period for doing anything under the Patent Act "during or after the end of the time period", if the Commissioner of Patents "considers that circumstances justify the extension". This is an interesting change and its scope of effect remains unknown. Under the current Patent Act the Commissioner of Patents does not have a carte blanche authority to extend time periods, once ended, "for doing anything under the Act". 

The changes to the Patent Act will come into force on a date to be fixed by the Governor in Council. It will take some time to prepare the new regulations and ready the Patent Office for the changes. If recent changes to the Trademarks Act are any guide, the changes are not likely to be in force until after 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
8 Nov 2016, Seminar, Ottawa, Canada

The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.

22 Nov 2016, Seminar, Ottawa, Canada

From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.

7 Dec 2016, Seminar, Ottawa, Canada

Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.