Canada: Proposed Amendments to the Canadian Patent Rules Published for Public Consultation

Last Updated: August 2 2017
Article by David Schwartz

The Government of Canada has opened a public consultation on proposed amendments to the Canadian Patent Rules, running from August 1 to September 8, 2017.  The changes relate principally to pending amendments to the Patent Act intended to bring it into compliance with the Patent Law Treaty (PLT).  This article provides an overview of significant changes to Canadian patent practice that would result if the proposed Rules come into force in their present form. 


The federal government indicates that, after the present public consultation period, the proposed Rules will be pre-published in the Canada Gazette, Part I.  This will provide another opportunity for interested stakeholders to provide comments, although the Rules should be in close to final form at that time.  Subsequently, the final amendments will be published in the Canada Gazette, Part II.  The government currently estimates that these two further steps will occur in spring 2018 and late 2018, respectively.  This schedule, if it holds, would suggest that the amended Rules could be in force early in 2019. 

A complex legislative background

There are three outstanding legislative instruments effecting amendments to the Patent Act, none of which is yet fully in force.  The Patent Act is not routinely amended, so it is unusual to have multiple outstanding amendments in separate pieces of implementing legislation that must be coordinated. 

First, the Economic Action Plan 2014 Act, No. 2, Statutes of Canada 2014, Chapter 39 [Bill C-43, 41st Parliament, 2nd Session] is omnibus legislation, implementing aspects of the 2014 federal budget.  It contains not yet in force provisions amending the Patent Act, largely for compliance with the PLT.  The present proposed amendments to the Patent Rules are associated with these pending amendments to the Act.

Second, the Economic Action Plan 2015 Act, No. 1, Statutes of Canada 2015, Chapter 36 [Bill C-59, 41st Parliament, 2nd Session] is again omnibus legislation, this time implementing aspects of the 2015 federal budget.  It also contains provisions amending the Patent Act.  Some, such as those providing statutory privilege for communications between patent agents and their clients, are already in force.  Other provisions, permitting the Commissioner of Patents to extend deadlines in cases of force majeure events, such as floods or extensive power outages, are not yet in force.

Finally, before either of the above statutes could fully come into force, the Canada-European Union Comprehensive Economic and Trade Agreement Implementation Act, Statutes of Canada 2017, Chapter  6 [Bill C-30, 42nd Parliament, 2nd Session] received royal assent on May 16, 2017.  As its name indicates, this legislation gives effect to Canada's obligations under the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union.  It is again omnibus legislation, amending numerous statutes.  Among other things, this legislation will amend the Patent Act to introduce a system of certificates of supplementary protection (CSPs), effectively extending the term of patent protection to account for delay in the drug approval process.  

As we recently reported, proposed Certificate of Supplementary Protection Regulations and Regulations Amending the Patented Medicines (Notice of Compliance) Regulations, 2017 were published for public comment in Canada Gazette Part I, Vol. 151, No. 28 on July 15, 2017.  In the same volume of the Gazette, proposed Rules Amending the Patent Rules were also published for public comment, making minor consequential amendments to the Patent Rules, relating to the requirement for the appointment of a representative.  It appears that these more modest changes to the Patent Rules could come into force with the CETA legislation, before the other amendments discussed herein.  The Canadian government and the European Commission recently issued a joint statement, announcing September 21, 2017 as the intended date for provisional implementation of CETA.

As a consequence, the transitional and coordinating provisions of the legislation are complex.

The complicated interplay between the Patent Act and Patent Rules

Subsection 12(2) of the Patent Act states that "Any rule or regulation made by the Governor in Council has the same force and effect as if it had been enacted herein."  This is a possibly unique provision, not found in other Acts of Parliament.

Perhaps on the strength of this provision, the proposed Rules include many exceptions to provisions of the Act, stating that they do not apply in certain circumstances.  This makes for difficult reading, because the Rules do not merely fill in the details of procedure within the broad but fixed contours of the Act.  Rather, it is necessary to read the Act and Rules very much in concert to understand even basic requirements. 

Possibly this approach was necessitated by inclusion of the amendments to the Act in omnibus rather than stand-alone legislation.  Bills to implement initiatives set out in annual federal budgets and to give effect to international trade agreements have many parts and must move quickly through the legislative process.  There is little time or opportunity for revision, as this would hold up the entire bill.  Omnibus bills are often criticized for this reason.  Leaving substantial essential detail to the Rules provides additional time and flexibility.

So even after all the amendments come into force, the Patent Act and Patent Rules will be painfully complex documents.  While these are early days, it seems that understanding the new regime will be challenging for even the most diligent and informed reader.

Significant elements of the amended legislative scheme

Assuming the pieces of the puzzle fall neatly into place, significant elements of the amended legislative scheme reflected in the proposed Rules include the following:

Reduced requirements to obtain a filing date – Currently, the filing fee must be paid and a translation of the application into the English or French language submitted at the time of filing of a Canadian patent application.  Under the amended Act and Rules, it will be possible to defer payment of the filing fee and the translation.  It will also be possible to defer filing a specification at all by instead making reference to a previously regularly filed application.

24/7/365 electronic filing – It is currently not possible to obtain a filing date on a Saturday, Sunday, holiday or other day when the Patent Office is closed for business.  This could have negative consequences if the Canadian application is the first-filed application or the filing date is needed to benefit from the grace period.  Under the amended regime, it will be possible to secure a filing date on a day when the Patent Office is closed for business if the application is filed by electronic means.  For example, if a response to an Examiner's Report falls due on July 1 (Canada Day), the response may be timely filed on July 2, the next day the Office is open for business (dies non practice).  But if the applicant needs a July 1 filing date (e.g. the invention was disclosed to the public by the applicant the previous July 1), it will be possible to secure a July 1 filing date by submitting the application by electronic means.

Addition to specification or addition of drawing – A procedure is introduced whereby the applicant may add to the specification or add a drawing, without loss of the original filing date, if the addition is wholly contained in a priority document, and the addition is made within two months from filing, or within two months from notice by the Commissioner of Patents that part of the application appears to be missing.

Restoration of priority – Under the current law, it is not possible to claim priority to an application filed more than 12 months prior to the filing date of a Canadian patent application.  Restoration of priority is introduced, such that it will be possible to claim priority to a previously regularly filed application filed up to 14 months before the Canadian (or PCT) filing date, if the request is made within the same time period, and the applicant states that the failure to timely file the application was unintentional.  Restoration of priority is subject to subsequent challenge in a court proceeding on the basis that failure to timely file the application was not in fact unintentional.

Shortened term for national phase entry – A PCT application must enter the Canadian national phase within 42 months from the priority date, although an additional "late" fee is payable if   the applicant enters the national phase more than 30 months from the priority date.  Under the proposed Rules, the late entry option is removed.  If the applicant fails to enter the national phase by the 30 month deadline, it is still possible to do this within 42 months of the priority date, but only upon submitting a declaration the failure to timely enter the national phase was unintentional and a statement of the reasons for the failure, and if the Commissioner of Patents determines that the failure was unintentional.

Shortened prosecution deadlines – There is a focus on reducing pendency.  The term for requesting examination will be reduced from five years to three years from the filing date.  Examiner's Reports will have a standard term for response of four months rather than six months.  The final fee will be due four months rather than six months from the notice of allowance.  Some deadlines may be extended on payment of a $200 fee if the Commissioner of Patents is satisfied that the circumstances justify the extension.

Extension of time limits in unforeseen circumstances – Presently, the Patent Office may be declared "closed for business" by order of the Minister of Innovation, Science and Economic Development.  The amended patent regime will provide greater flexibility to deal with floods, power failures, and the like by permitting the Commissioner of Patents to extend time periods on account of unforeseen circumstances, if the Commissioner is satisfied that it is in the public interest to do so.  As noted above, it will still be possible to obtain a filing date, if needed, when the Patent Office is closed for business.

Notice of certain deadlines prior to abandonment or expiry – The Patent Office will be obliged to provide notice that certain deadlines have been missed before an application is deemed to be abandoned.  This will include e.g. failure to pay request examination, or to pay a maintenance fee on a pending application.  Notice will similarly be required before a patent is deemed to have expired for non-payment of a maintenance fee.  These are instances in which the Patent Office has not previously communicated with the applicant about the deadline.  No such notice will be required with respect to e.g. a missed deadline for responding to an Examiner's Report, the Report itself having provided notice of the deadline.

"Due care" standard for reinstatement in some instances – Canadian patent applications become abandoned if action is not taken by the prescribed deadline.  At present, the application may be reinstated by requesting reinstatement, paying a fee, and taking the omitted action within 12 months of the date of abandonment.  That is, reinstatement is as of right.  Under the amended Act and Rules, the requirements for reinstatement will be more stringent in certain cases where abandonment only occurs after notice of the missed deadline—namely missed payment of the examination fee or a maintenance fee.  In such instances, the due care standard will apply if reinstatement is effected more than six months from the original deadline.  The applicant must state the reasons for the failure to take the action that led to abandonment, and the Commissioner must determine that "the failure occurred in spite of the due care required by the circumstances having been taken."  What constitutes "due care" is currently unknown.  Reinstatement under the due care standard may be subsequently challenged in Federal Court.

Amendments after allowance – Only very limited amendments are permitted after an application is allowed under the current system.  In order to re-open prosecution, it is necessary to allow the issue fee deadline to pass such that the application becomes abandoned, and then reinstate the application.  An application reinstated in these circumstances is subject to amendment and further examination.  This is unnecessarily complex and time-consuming.  This procedure will be streamlined such that the notice of allowance can be withdrawn and prosecution re-opened simply upon payment of a fee within four months of the date of allowance. 

Issue fee calculation – Currently, the issue fee is $300 plus $6 for each page of specification and drawings in excess of 100.  The fee schedule in the Rules is to be amended to clarify that the excess page fee does not apply to pages of a sequence listing submitted in electronic form.  This will come as welcome news to biotechnology patentees who have in some instances been stuck with exorbitant issue fees.

Correction of errors – The current Act provides for the correction of "clerical" errors, ultimately in the discretion of the Commissioner of Patents.  This has led to a complicated body of law concerning whether an error truly is "clerical" and, if it is, what if anything the Commissioner ought to do about it.  The amended Act and Rules will instead provide for correction of "obvious" errors, where it is obvious that something else was intended than what appears in the patent and that nothing else could have been intended than the correction.   Errors by the Commissioner must be corrected within six months of grant and errors by the patentee corrected within four months of grant.  Mechanisms are also introduced for correcting errors in identifying or naming applicants and inventors.

Payment of maintenance fees – Currently, only the Canadian patent agent may pay a maintenance fee on a pending application.  This will change such that anyone, such as an annuity service, can pay maintenance fees on pending applications, as is presently the case for issued patents.

Transfers – It will be possible to record a transfer of ownership of an application or patent merely on the request of the applicant or patentee, respectively, without submission of evidence, such as an assignment document.  Where the request is by the transferee, it will still be necessary to submit an assignment, or other evidence of the change in ownership.

Third party rights – An exception from infringement of a patent is introduced for otherwise infringing acts that a third party, in good faith, first committed or made "serious and effective preparations" to commit during a prescribed period after an applicant or patentee failed to request examination or pay a maintenance fee by the original deadline.  It will be for the courts to clarify what constitutes "serious and effective preparations" to commit an infringing act.  The application of third party rights may be avoided by taking action within six months of the original deadline.


Many of the proposed amendments to the Rules are directed to simplifying formal requirements, and minimizing the risk of loss of rights, matters addressed by the PLT.  Applicants will likely notice few substantive changes to routine prosecution, other than that the pace will pick up somewhat with the proposed shortened time limits.  Perhaps the greatest trap for the unwary is the change to the PCT national phase entry deadline.  With removal of 42-month late entry as a matter of right, applicants will need to plan ahead for Canadian national phase entry no later than 30 months from the priority date.  It is at present difficult to anticipate the practical impact of the new third party rights regime, or what might constitute the "serious and effective preparations" to commit an infringing act that is exempted under these provisions.  This presumably will not be known until the defense is raised in future litigation.  In the interim, cautious applicants and patentees will wish to avoid missing deadlines that potentially trigger the prospect of third party rights.

For further information, please contact a member of our firm's Patent group.      

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.  

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.

David Schwartz
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
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 you may opt out by clicking here

    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.

    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.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    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.

    By clicking Register you state you have read and agree to our Terms and Conditions