New Patent Rules and associated amendments to the Patent Act will come into force on October 30, ‎‎2019. These new rules are intended to modernize and standardize the patent prosecution process in ‎Canada, including by implementing the Patent Law Treaty. In some cases, the new regime will ‎effectively shorten the application process. This is good news for applicants but applicants and patent ‎agents will need to be aware of the new timelines and rules.‎

We present some highlights that may affect pending or planned Canadian patent applications:‎

New shortened timelines

Some deadlines have been shortened and may catch people unfamiliar with the changes by surprise:  ‎

  • The deadline for new PCT applications to enter national phase Canada will be 30 months from ‎the priority date for applications having an international filing date of October 30, 2019 or later.  ‎The past deadline for entering Canadian national phase from PCT applications as late as 42 ‎months from the priority date will no longer be available. However, as a transitional provision, ‎PCT applications filed before October 30, 2019 may take advantage of the previous 42 month ‎deadline. The amended Rules also include a provision to allow for entry after 30 months from ‎priority where missing the deadline can be shown to be “unintentional”.‎
  • The default deadline to respond to an Examiner’s report will decrease to four months from the ‎current six months; however, it will be possible to request an extension of up to two additional ‎months.‎
  • The ability to defer examination of an application will decrease to a maximum of four years ‎‎(from five years) from the filing date (or three months from the presentation date of a ‎divisional application, whichever is later). Existing options for expediting examination will ‎remain available, including for free under the Patent Prosecution Highway (PPH) and for ‎‎“green tech” inventions, and by paying a fee for other cases. ‎

Notice/late fee/reinstatement regime (request for examination and maintenance fees)‎

Under the new regime, if the deadline to request examination of an application or to pay a ‎maintenance fee payment passes, the Patent Office (“CIPO”) must send a late fee notice, effectively ‎extending the time to pay the fee (which will include an additional payment for being late).  If the late ‎fee is not paid before the deadline in the notice, the application will only then become abandoned. ‎This will provide better notice provisions for applicants and their agents.‎

In the case of the new four year deadline to request examination, a late fee notice will be sent once ‎the deadline has passed and will set a deadline of two months from the date of the notice to request ‎examination and pay the late fee.  If this does not occur, the application will become abandoned. ‎Although reinstatement may still be possible, even after such an abandonment, it will no longer be as ‎of right.‎

For maintenance fee, a late fee notice will be sent once the deadline has passed and the ‎notice will set a deadline of the later of two months from the date of the notice OR six months from ‎the original deadline to pay the maintenance fee along with the late fee.  ‎

These procedures replace the current rules that allow an applicant to reinstate an application as of ‎right within one year of a missed fee payment but which do not require any notice of non-compliance ‎to be sent to the applicant or agent by the Patent Office.‎

Due care

A due care standard will be introduced for reinstatement of abandoned applications for some missed ‎deadlines.  In particular, missing the late fee period for paying a maintenance fee and the late fee ‎period for requesting examination of an application will result in abandonment and may only be ‎reinstated if the Commissioner determines the failure to meet the deadline occurred in spite of the ‎applicant/agent having exercised “due care”.‎

It is expected that CIPO will simply take statements from applicants and agents that the abandonment ‎occurred in spite of due care at face value but may require additional documentation. However, this is ‎a new standard in the patent application regime in Canada and will likely be subject to consideration by ‎the Courts in the near future. It is advisable that all attempts be made to meet the new deadlines to ‎avoid having to try to establish that the failure to meet the deadline was in spite of ‘due care’.‎

Title documents

Under the new Patent Act, change of ownership is now referred to as a “transfer” instead of an ‎‎“assignment”.  A key change is that transfers will now be recorded without evidence, ie applicants do ‎not need to file a copy of the assignment or change of name document, if the transfer request is made ‎to the Patent Office by the applicant or patentee of record.  However, if the request to record a ‎transfer is received from a transferee, evidence of the transfer, such as an assignment document, will ‎still be required.‎

In either case, we always advise executing assignments and keeping them in a safe place in case ‎ownership of the patent ever needs to be determined. 

Priority documents

A certified copy of any priority document must be filed by the date of national phase entry for PCT ‎applications unless it is made available in a digital library.  Presently, the only digital library that CIPO ‎has access to is WIPO’s Digital Access Service.  However, this change is not expected to be a major ‎issue for most PCT national phase entries as certified copies of priority documents are generally  filed ‎during the international phase and will therefore be readily available at the national phase entry. Also, ‎if the priority document is not provided, a notice will be issued by CIPO giving the applicant two ‎months to provide a copy.‎

The final version of the rules was published by the government of Canada on July 10, 2019 and can be ‎found in the Canada Gazette.‎

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.