On December 16, 2014, Bill C-43 received Royal Assent. The
legislation includes amendments to the Canadian Patent Act
that will eventually usher in significant changes to Canadian
practice. The amendments mainly address Canada's obligations
under the Patent Law Treaty and bring the Canadian system
into alliance with other countries. We expect further amendments to
be introduced later in 2015 to address Canada's recent
obligations under the Comprehensive Economic Trade Agreement
(CETA). These Bill C-43 amendments are not yet in effect and we
await publication of corresponding regulations. The date when these
amendments and related regulations will be in effect is not yet
known but is expected later in 2015.
Without the corresponding regulations, the precise details of
the changes are not yet known. However, the amendments will spell
the end of one of the better- known aspects of the Canadian patent
system: our flexible abandonment and reinstatement practice.
The full text of the amendments to the Patent Act is
available to view by clicking here. Select highlights of impacted
Abandonment and Reinstatement
Reinstatement will no longer be
available as of right in Canada. Instead, an Applicant will have to
provide a reason for the failure to take action, and the
Commissioner of Patents will have discretion to determine if the
failure occurred despite "due care".
Pending applications will be
grandfathered under current provisions if the date of the
requisition that led to the abandonment falls before the date that
the new amendments come into force.
Infringement and Pre-grant Infringement
Where a patent or application is
deemed abandoned, an act committed in good faith that would
otherwise constitute infringement will not be considered
infringement during the period of abandonment.
There will be no liability for
'reasonable compensation' in the post-publication to
pre-grant period before the specification is published in English
No fee will be required to obtain a
Canadian filing date; Applicants will be able to pay a late
An extra two months will be provided
after the 12-month convention period to file and make valid
priority claim, if it can be shown that the failure to file within
12 months was "unintentional".
Incorporation by Reference
Incorporation by reference will be
The timing, scope, and full impact of these and other amendments
will become clear when the revised Patent Rules are
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
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