Over the past year, Canada has implemented amendments to its IP
laws to comply with a number of international treaties. On December
16, 2014, amendments to the Canadian Patent Act received Royal
Assent. The amendments aim to fulfill Canada's obligations
under the Patent Law Treaty, and to align aspects of the Canadian
system with other countries. Some of the changes will, no doubt,
seem familiar to non-Canadian practitioners, but nonetheless
represent a significant watershed for Canadian practice. The date
on which these amendments and related regulations will be in effect
is not currently known, and much uncertainty remains until draft
regulations are published.
The amendments do not include those to address Canada's
obligations under the Canada Europe Trade Agreement (CETA), in
respect of which further amendments are likely to be introduced
later in 2015.
Simplified Administrative Procedures
One object of the amendment is to simplify filing procedures. It
will be possible, for instance, to obtain a filing date in Canada
without a fee and without a translation into English or French. If
part of a description or drawing is omitted at filing, an applicant
will be able to subsequently include it even if it adds new matter
(a later filing date may then apply). Incorporation-by-reference of
a previously-filed application will be permitted, and restoration
of priority will be available in Canada up to 14 months from the
priority date, provided that the failure to file within the initial
12-month period was "unintentional" and provided that any
yet-to-be determined "prescribed conditions" are met. The
one-year grace period for inventor-derived disclosures will be
extended to cover applications with restored priority.
In the spirit of simplified administrative procedures, the
amendments also specify that a patent will not be declared invalid
by reason only that the application on the basis of which the
patent was granted was not maintained in effect. This amendment is
likely in response to recent Court decisions on this issue.
The regulations will have particular impact in one area, namely
reinstatement, which will only be possible if an applicant can show
that the failure to take action that led to the abandonment
occurred despite "due care" being taken. Under the
revised Act, the Commissioner of Patents may create rules to
determine the standard and when it applies. To date, reinstatement
has been available as of right in Canada within one year of a
missed deadline, and applicants often use the abandonment period to
obtain additional time to take action. Reinstatement is also
currently the only way for applicants to add claims and restart
prosecution after allowance: an important mechanism in view of
peculiar local laws for double patenting. The coming regulations
will determine whether the amendments to the Patent Act will spell
the end of flexible abandonment and reinstatement practice, and
could have significant ramifications for how potential double
patenting situations are addressed.
Infringement and Intervening Rights
The amendments also provide clarification on the issues of
infringement and third party intervening rights. For example, there
will be no pre-grant infringement until the specification is
published in English or French. Furthermore, during an abandonment
period when the "due care" standard for reinstatement
applies, third parties will be protected from "good
faith" acts that would otherwise have constituted
Timing and Details of Coming into Force
The Commissioner of Patents is granted broad new rule-making
authority under the amendments, and, at the time of writing, draft
regulations have not yet been published. Accordingly, it is not yet
known precisely how and when these amendments will be implemented.
The Patent Office has indicated that draft regulations should be
published for consultation by late 2016, and it seems likely that
both the amendments and the regulations will come into force by
Further amendments to the Patent Act are currently pending
before Parliament. These amendments include long-sought provisions
providing privilege for communications between registered patent
agents and their clients for matters relating to the protection of
an invention. This agent privilege will bring Canada into line with
privilege existing in other countries.
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A recent decision of the Federal Court of Canada has highlighted the difficulties in asserting trademark and copyright rights related to the appearance of functional products with unique design elements.
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