Canada: One More Step Towards Implementation Of The Patent Law Treaty

Last Updated: December 6 2018
Article by Roch Ripley

On Dec. 1, 2018, the Canadian government published for public consultation an updated version of its proposed amendments to the Canadian Patent Rules. The consultation period runs from Dec. 1, 2018, to Dec. 31, 2018, and follows a consultation process performed in respect of an earlier draft of the Rules published in August 2017. The updated version of the Rules is based on those published in 2017, and together with complementary amendments to the Canadian Patent Act, represent a dramatic change to Canadian patent practice.

Tightening of Timelines, including Elimination of Entitlement to 42 Month National Phase Entry

Under current practice, a response to an Office Action is generally due six months from the mailing date of the Office Action, examination must be requested on an application within five years of its filing date, and the Final Fee must be paid for an application within six months of the mailing date of the Notice of Allowance.

Under the new Act and Rules, a response to an Office Action is generally due four months from the mailing date of the Office Action, examination must be requested on an application within four years of its filing date, and the Final Fee must be paid within four months of the Notice of Allowance. While the four month deadline for responding to an Office Action may be extended by paying a fee at the discretion of the Patent Office, the Final Fee deadline is non-extendible.

Additionally, under current practice a patent applicant may enter the Canadian national phase between 30 and 42 months of an international application's earliest priority date as of right by paying a late fee of $200. The new Act and Rules eliminate this right. While entry between 30 and 42 months remains possible, an applicant must satisfy the Patent Office that the failure to enter by the 30 month deadline was unintentional, in addition to paying a reinstatement fee of $200.

Abandonment and Reinstatement

Under current practice, a patent application that goes abandoned for failure to perform an action by a deadline goes abandoned immediately following that deadline, and may be reinstated as of right within one year from that deadline by performing the action that was due at the deadline and by paying a reinstatement fee.

Under the new Act and Rules, abandonment does not necessarily occur immediately following a missed deadline, nor is reinstatement as of right necessarily available. Instead, the timing and nature of the abandonment and reinstatement depends on the nature of the missed deadline.

For example, failure to respond to an Office Action and failure to pay a Final Fee by a deadline still result in immediate abandonment following that deadline, and reinstatement remains available as of right within 12 months of that deadline.

In contrast, failure to pay a maintenance fee for a pending application results in abandonment the later of six months from the missed deadline and two months from the date of a notice from the Patent Office requiring payment. Once abandoned, the application may be reinstated as late as 18 months from the date the maintenance fee was due only by establishing that abandonment occurred despite the applicant having taken due care. The new Act and Rules do not provide any guidance as to what would qualify as due care, although informally the Office has stated that the threshold will be high. The new Act and Rules establish an analogous regime for reinstating a patent that has lapsed for failure to pay a maintenance fee.

Similarly, failure to request examination will result in abandonment two months after the date of a notice from the Patent Office following the missed examination request deadline. Notwithstanding this, an applicant may reinstate the application and request examination as of right within six months of the examination request deadline. If the fee and request are not filed within six months of the deadline, then the applicant will only be able to reinstate by establishing that the abandonment occurred despite due care, and no later than one year from abandonment.

Third Party Rights

Tied to the new due care requirement for reinstating an application abandoned (or a patent lapsed) for not having paid a maintenance fee or not having timely requested examination, the new Act and Rules introduce the concept of third party rights. These rights limit liability faced by third parties if they undertake actions that would otherwise lead to infringement during a period when an application or patent is abandoned or lapsed and the applicant or patentee needs to satisfy the due care threshold for reinstatement. The period starts six months from the deadline for paying the maintenance fee or requesting examination, which is when the due care requirement begins. A third party will not be liable for what would otherwise be infringing acts committed in good faith during this period or resulting from "serious and effective preparations" the third party makes during this period. Generally speaking, this period ends upon the earlier of the patent or application being reinstated, or when a patent grants from the abandoned application.

Reduced Requirements to Obtain a Filing Date

Under current practice, in order to obtain a filing date for an application other than a PCT national phase application, an applicant needs to pay the filing fee and provide a document in English or French that on its face appears to describe an invention.

Under the new Act and Rules, it will be possible to submit a translation of a specification into English or French after filing. Further, by paying a $150 late fee, it will be possible to defer paying the filing fee. If the filing fee is not paid at filing, the Patent Office will issue a notice requesting payment and the applicant will have up to three months from the date of that notice to pay the filing fee and late fee without loss of filing date.

It will not be possible, however, to defer paying the filing fee when requesting national entry into Canada. The basic national fee, which is identical to the filing fee for a non-PCT national phase application, will need to be paid in order to secure national entry into Canada subject to an exception where an applicant makes an unsuccessful attempt to pay the fee an entry.

Adding Matter to an Application

An applicant cannot under current practice add new matter to a patent application, regardless of whether that matter is contained in an application's priority document.

In contrast, the new Act and Rules permit new matter to be added to a non-PCT national phase application in certain circumstances. Where an application is missing part of the specification or drawing referred to in the specification, the applicant may add that missing part to the specification. An applicant may do this voluntarily, in which case the deadline to do so is two months from the earliest date on which the Patent Office receives any document or information required for establishing a filing date. Alternatively, the Patent Office may issue a notice requisitioning the missing part from the applicant, in which case the deadline will be two months from the date of that notice. The filing date of the application will be no earlier than the date the applicant submits the missing part, unless the missing part was contained entirely within the priority document in which case the missing part will not prejudice the filing date.

Electronic Filing

It is not currently possible to obtain a filing date in Canada on a day the Patent Office is not open for business, such as the weekend.

Under the proposed new practice, using electronic filing an applicant may file a patent application or any other document with the Patent Office and secure a filing date that same day, regardless of whether the Office is open for business. This may be useful to secure a filing date before a public disclosure of an invention is made, or to secure a filing date within one year of an applicant's own public disclosure so as to be able to rely on the Canadian grace period.

A Broadened Grace Period

Canada currently has a one year grace period that prevents a disclosure directly or indirectly from the applicant from being citable for novelty or obviousness against an application that is filed in Canada within one year of that disclosure. The relevant date for the grace period is the Canadian filing date, which is deemed to be the international filing date for a PCT national phase application.

Amendments to the Act are changing the grace period so that applicant derived disclosures will not be citable if made public within the earlier of an applicant's earliest priority date (so long as the claims in question are supported by the priority claim) and one year before the Canadian filing date. This change complements the new ability for an applicant to restore the right of priority, and thereby obtain a priority date greater than one year before the filing date.

Priority Rights

Under current practice, an applicant is not required to provide a certified copy of a priority document to the Patent Office unless requisitioned to do so by the Office, which the Office rarely does. Additionally, Canada does not permit restoration of the right of priority, regardless of whether the Canadian application is a national phase application and priority was restored for the corresponding PCT application during the international phase.

Under the new regime, applicants will be required to either submit a certified copy of a priority document to the Patent Office or to make a certified copy available through a recognized digital library for priority claims made to a non-Canadian priority document. This requirement will be waived if the application is a national phase application and the applicant submitted a copy of the priority document during the international phase. Furthermore, restoring the right of priority will be possible in Canada without a government fee so long as the applicant can establish that priority requires restoring because of an unintentional error. An applicant will have two months after filing to request restoration of priority for a non-PCT national phase application, and one month after national entry for a PCT national phase application.

Amendments after Allowance

Under current practice, an applicant who wishes to amend an application in a manner that would necessitate a new search after it has been allowed and before the Final Fee has been paid must allow the application to go abandoned by not paying the Final Fee and, concurrent with reinstatement, make the amendment. Reinstating has the side effect of re-opening prosecution, thereby allowing the applicant to substantively amend the application.

Under the new regime, an applicant may re-open prosecution as of right by paying $400 to the Patent Office and requesting that the Notice of Allowance be deemed never to have been sent. This allows an applicant to re-open prosecution at any time after the Notice of Allowance is mailed, as opposed to having to wait four months when the Final Fee is due to allow the application to go abandoned. An applicant who wants to amend the application in any manner aside from  correcting an obvious error will need to use this process.

Assignment Practice

Under current practice, in order to record a change of name or a change of ownership in the Patent Office, an applicant needs to submit for recordation the document evidencing or effecting that change and pay a $100 fee. Any documents that are recorded must comply with Canadian practice. For example, notwithstanding that an assignment need not be witnessed under Canadian law to be effective, an unwitnessed assignment cannot be recorded in the Patent Office without other evidence to establish it is suitable for recordation, such as an affidavit or Notice of Recordation from the United States Patent and Trademark Office.

While recording documents will still be an option under the new Act and Rules, the Patent Office is eliminating in many instances the requirement to submit those documents in order to reflect a change at the Office. An applicant/patentee that is also a transferee may record a transfer by filing a request and providing the name and postal address of the transferee. A transferee other than the applicant/patentee will be able to record a transfer without submitting the actual transfer document but will need to provide evidence satisfactory to the Patent Office, such as an affidavit. An applicant/patentee that wishes to record a name change may similarly do so on request and by paying a fee. The $100 fee remains payable for recording transfers under the new regime, regardless of whether a document effecting the transfer is recorded.

Transitional Provisions

Unlike the Rules published in August 2017, the current Rules provide a detailed set of transitional provisions. An Office Action or Notice of Allowance mailed before the coming-into-force (CIF) of the Rules will benefit from the longer prosecution timelines (six months for filing an Office Action response and for paying the Final Fee) as opposed to the shorter four month deadline under the new Rules. An application that is abandoned before CIF, or that is abandoned after CIF on the basis of a failure to comply with a requisition or notice dated before CIF, will benefit from the ability to be reinstated as of right under current practice without having to establish that abandonment occurred despite due care. Analogously, third party rights will not apply to any period of abandonment that begins before CIF or that occurs after CIF as a result of a failure to comply with a requisition or notice dated before CIF.

Importantly, the transition provisions clarify that an international application having an international filing date before CIF will benefit from the current practice of being able to enter the Canadian national phase within 42 months of its earliest priority date as of right. Similarly, an application that is filed in Canada before CIF will be entitled to file a request for examination as late as five years from filing as permitted under current practice, as opposed to the shorter four years from filing under the new practice.


The amended Act and Rules introduce significant changes to Canadian patent practice. These changes are expected to take effect in late 2019. While this article highlights certain salient changes that are coming to Canadian practice, in aggregate the changes are of sufficient scope that we recommend you contact a member of the Gowling WLG patent prosecution team to discuss how they may affect your Canadian patent filing and prosecution strategy in more detail.

Read the original article on

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
7 May 2019, Webinar, Birmingham, UK

Join us for our next TUPE Club webinar, where we will be covering how TUPE applies when there is an Insolvency situation. We will look at the consequences of TUPE applying in various types of insolvency scenario and how can you manage the risks that creates.

7 May 2019, Seminar, Hamilton, Canada

Gowling WLG's popular Employment & Labour Law Seminar returns to Hamilton on Tuesday, May 7, giving you the opportunity to learn about the latest legal developments affecting your workplace.

Our leading professionals will guide you through these changes and offer practical insight and advice on what they mean for your organization.

14 May 2019, Seminar, Birmingham, UK

ThinkHouse Foundations supports the development of paralegals, trainees and lawyers of up to five years' PQE by providing insight into the latest legal developments and hot topics, training resources, and a chance to meet your peers and exchange ideas.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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