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.
Reinstatement
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 infringement.
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 early 2017.
Privilege
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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