Canada: Canada's Proposed New Patent Rules - Part 2


Proposed changes to Canada's Patent Rules are expected to come into force in the fall of 2019. The changes will be enacted by replacing the existing Patent Rules with a new set of rules (the "New Rules"). The provisions and precise wording of the proposed New Rules remain subject to change for the next several months.

The New Rules are intended to: (1) accord with amendments made to the Patent Act to allow Canada's ratification of the Patent Law Treaty (PLT), and (2) modernize and codify aspects of Canada's patent regime. Many of the New Rules have already been incorporated in practice notes issued by the Canadian Intellectual Property Office (CIPO). For an outline of the more significant proposed changes found in the New Rules, see our December 10, 2018 Update, Significant Changes to the Patent Rules Coming to Canada in 2019.

The first of two articles focused on the filing of patent applications, including regular applications, Patent Cooperation Treaty (PCT) applications, claims to priority, and divisional applications.

In this second article, we elaborate on the proposed changes related to examination and amendments to applications, abandonment and reinstatement, and payment of fees.

Examination and Amendments

The New Rules will streamline patent prosecution and reduce pendency to bring greater certainty to applicants and also to the public. Certain time limits within the examination process will be shortened with a view to speeding up prosecution of applications. Among the proposed changes are: (1) reducing the time limit to request examination from five years to four years; (2) reducing the time limit for responding to an examiner's report from six months to four months for all applications; and (3) reducing the time limits for an applicant to respond to a rejection notice or a notice of allowance from six months to four months.

As we reported in our first article, an application may now be filed in a language other than English or French. If this occurs, the application cannot be amended by the applicant before translation of the application into English or French is provided. Any amendment made to the specification or drawings of an application must continue to be made by submitting new pages, replacing the pages being amended. The New Rules specifically require that the applicant explain the purpose of the amendment and identify the differences between the new pages and the replaced pages.

Additionally, the New Rules will streamline the process for filing an amendment after allowance. The current process is cumbersome, requiring the applicant to let the application go abandoned by failing to pay the final fee within six months, and then reinstating the application and filing an amendment at the same time. The New Rules will allow applicants to request that a notice of allowance be withdrawn, after which the application will return to examination and further amendments can be made. Such a streamlined process will provide greater flexibility for applicants to make a broader range of amendments in a timely fashion and preserve any rights that could potentially be lost through abandonment.

Abandonment and Reinstatement

A significant issue with the current Patent Rules is that an application can inadvertently be deemed abandoned without the applicant realizing that has occurred. In several instances, applicants lost all rights because they only realized their applications were abandoned after the one-year reinstatement period expired (by this time, it was too late to reinstate the application). Changes will be introduced in the New Rules to provide safeguards for applicants so the inadvertent loss of rights does not occur. These safeguards are required by the PLT. For example, one such safeguard is that CIPO must notify applicants that a deadline (e.g., to pay a maintenance fee or to request examination) has been missed and that the application will become abandoned. The notice provides applicants with a two-month grace period within which they may comply with deficiencies before the application becomes abandoned.

There are several other instances where an application may become abandoned. They include: (1) failing to file a translation of the application into English or French after receiving a notice to do so; (2) failing to appoint an agent when requisitioned to do so; (3) failing to respond to an examiner's requisition within four months (although this deadline is extendible by an additional two months); and (4) failing to pay a final fee within four months. Under the New Rules, notice and/or additional time to comply must be provided before an application is deemed abandoned.

If an application is deemed abandoned, it can be reinstated within 12 months of the abandonment date by filing a request for reinstatement, paying the reinstatement fee and taking the action that should have been taken originally. However, in the case of the failure to pay a maintenance fee, the New Rules introduce a notice-and-late-fee regime that makes tracking deadlines more complex. In this new regime, CIPO must issue a notice requiring the applicant to pay any missed maintenance fee within the later of two months from the date of the notice or six months from the original deadline. If this deadline for late payment is also missed, the application is considered abandoned, in which case the applicant will have 12 months to reinstate the application by demonstrating "due care". "Due care" means that the applicant must provide reasons why it failed to pay the maintenance fee, but it is unclear at this point what circumstances CIPO will consider acceptable to meet the "due care" threshold.

Where an application is abandoned for failure to request examination by the four-year anniversary, the application can be reinstated as of right within six months from the deadline. After this initial six-month period and before 12 months, the applicant must also demonstrate it exercised "due care" before the application can be reinstated.

Moreover, it is important to bear in mind that third party rights may accrue during the time an application is considered abandoned before it is ultimately reinstated.

Payment of Fees

Under the New Rules, the current regime allowing applicants who qualify as a "small entity" to be allowed to pay many fees at a lower rate will remain in place. The New Rules will, however, introduce certain changes to how and when fees are to be paid for certain steps in the application process, and for maintaining an issued patent. As discussed above, one such change is the introduction of the notice-and-late-fee regime in respect of the late payment of maintenance fees for applications and for requesting examination.

Once a patent is granted, annual maintenance fees will continue to be payable to maintain the patent in force. However, the New Rules will change as to when the patent is deemed to have expired following the failure to pay a maintenance fee. The new notice-and-late-fee regime discussed above will also apply to granted patents. The patentee will be notified by CIPO of any missed deadline to pay a maintenance fee on a granted patent, and will be given an additional grace period to pay the maintenance fee. If the maintenance fee and late fee are not paid within this grace period, the patent will be retroactively deemed to have expired as of the missed original deadline. However, all is still not lost because the New Rules will allow the patentee to revive the expired patent within 12 months of the end of the grace period upon a showing of "due care".

Although the notice-and-late-fee regime introduced by the New Rules will provide some comfort to applicants and patentees since their applications and patents will no longer become abandoned or expired unintentionally, the regime will create some uncertainty for the public. The new regime will provide at least 18-months (minimum six months' grace period and 12 months "due care" reinstatement period) within which to potentially revive the application or patent.

Another change introduced in the New Rules is that the grant of a patent will no longer be delayed solely because of an unpaid maintenance fee before the patent is granted. Rather, the patent will issue in due course after a final fee is paid, and any unpaid maintenance fees that were due in the interim will be collected after the patent is granted. These changes are intended to help streamline the patent granting process.


Although, on the whole, the New Rules will not fundamentally change the patent application regime in Canada, they introduce certain changes intended to modernize and align Canada's regime with the PLT. It will be interesting to follow how the notice-and-late-fee regime plays out, in particular, what CIPO will consider "due care", and how the third party rights are construed.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific 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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
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