Canada: A Practical Guide To The Transition To Canada's New Patent Act And Rules Part IV

Last Updated: October 4 2019
Article by Stephen Beney and Denver Bandstra

In 2014, Canada's patent law was amended to comply with Canada's obligation under the Patent Law Treaty (PLT), but implementation required amending the Patent Rules. The Patent Rules have now been finalized, and amendments to both the Patent Act and Rules will come into force on October 30, 2019 (CIF).

As mentioned in the previous articles1, this series will cover the most significant amendments that affect users of the system, and in the transition to the new regime, will discuss options available to applicants.

Filing Requirements of PCT Applications and Requests for Examination

With regards to filing and prosecuting PCT national phase applications, the new Rules not only introduce the "unintentional" concept, see Part II of this series, but also include new filing requirements and will accelerate certain deadlines.

When the new Rules come into force, applicants of PCT applications filed on or after October 30, 2019 who enter the national phase in Canada will have to file a certified copy of any priority application if not already accepted at the international stage. This can be done in one of two ways: (1) by providing the Canadian Intellectual Property Office (CIPO) with certified copies of the priority applications; or (2) notifying CIPO that the documents are available in an accepted digital library, such as the WIPO Digital Access Service. The deadline for 'filing' certified copies of any priority application is the later of:

  1. 16 months from the earliest priority date of the priority applications;
  2. 4 months from the filing date of the pending application; or
  3. the national phase entry date (for PCT national phase applications).

For most national phase entries, this new requirement of providing the certified copy of the priority document should not cause many headaches as priority documents would most likely have been filed during the international phase. Moreover, no submission is required for priority documents where the priority application was filed in Canada. That being said, for PCT applications filed on or after October 30, 2019, to avoid the possibility of having to decipher the "unintentional" concept of a 'late' filing, applicants should verify when entering the national phase in Canada that all certified copies of any priority applications were filed at the international phase, and if not, then have these on hand to file.

Another change involving priority for PCT applications filed on or after October 30, 2019, is the ability to restore priority. Priority can be restored for Canada, either during the international (PCT) phase using the existing processes available in that system, or under the new Rules in the Canadian national phase.

For restoration of priority in the Canadian national phase, a request must be made within 1 month from national entry in Canada, but again only for international applications filed on or after October 30, 2019. To restore priority under this process, the applicant must state that the failure to file the pending application within 12 months after the priority date of the previously regularly filed application was unintentional. Importantly, the actual priority claim still needs to be made before the earlier of (a) the end of the one month period from national entry in Canada; and (b) the later of 16 months from the earliest priority date and 4 months from the 'filing date', which is the PCT filing date for national phase entry applications; practically, this will mean that a timely priority claim will need to have been included in the PCT application, even if priority restoration is not requested in the international phase.

Another important change under the new Canadian Patent Rules involves the request for examination. For all applications filed in Canada, including PCT applications, filed on or after October 30, 2019, the new deadline to request examination will be 4 years from the filing date in Canada (or the international filing date for national phase entries of PCT applications). Under the current Rules, this is 5 years. The accelerated deadline for requesting examination only applies to PCT applications filed on or after the coming into force date. Therefore, to take advantage of an extended prosecution period, applicants should have their PCT applications filed prior to October 30, 2019.

The deadline to request examination for Canadian divisional patent applications gets a bit interesting, especially for the transition cases. First, for divisional patent applications filed on or after October 30, 2019, where the original parent application is filed on or after October 30, 2019, the deadline to request examination is the later of 4 years from the filing date (that is the earliest parent Canadian filing date) or 3 months from when the divisional application was actually filed in Canada (known as the presentation date).

For transition cases, however, different timelines apply. In particular, if the divisional application is filed on or after October 30, 2019, from an original parent application that was filed before October 30, 2019, then the deadline to request examination is the later of 5 years from the filing date (that is the earliest parent Canadian filing date) or 3 months from the presentation date of the divisional application.

This can be contrasted with the current regime where for divisional applications filed before October 30, 2019, from an original parent application that was filed before October 30, 2019, then the deadline to request examination is the later of 5 years from the filing date (that is the earliest parent Canadian filing date) or 6 months from the presentation date of the divisional application.

Again, to take advantage of the longer period to request examination for divisional applications in Canada, applicants should ensure that their divisional applications are filed prior to October 30, 2019. However, as noted in other articles2, we generally only recommend filing divisional applications in Canada where directed by an Examiner to avoid possible double patenting issues.

Footnotes

1  A Practical Guide to the transition to Canada's new Patent Act and Rules Part I

A Practical Guide to the transition to Canada's new Patent Act and Rules Part II

A Practical Guide to the transition to Canada's new Patent Act and Rules Part III

2  Obviousness-type Double Patenting in Canada

Double Trouble: Avoiding Pitfalls in Canadian Pharmaceutical Patent Practice

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.

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