Canada's patent term adjustment (PTA) regime came into force on January 1, 2025. Under the new regime, patentees may be entitled to a longer patent term if they experienced unreasonable process delays by the Canadian Intellectual Property Office (CIPO) during prosecution.
What you need to know
- The new PTA regime includes the final amendments to the Patent Rules, as well as corresponding changes to Canada's Patent Act (see our previous bulletin on the changes to the Patent Act).
- The final rules substantially align with the draft version published for public consultation on May 18, 2024 (see our previous bulletin on the proposed amendments).
- The effect of the final rules appears to be that it is unlikely a PTA term will be granted in most cases, given the breadth of categories that will be excluded from the calculation of a PTA term.
CIPO considerations
One key change reflected in the final rules is that interested third parties will no longer be able to challenge CIPO's preliminary determination of the PTA duration for a patent. The draft version of the rules allowed the patentee and "any other person" to make observations within two months of CIPO's preliminary determination on PTA duration. However, in response to the public consultation for the draft rules, several stakeholders warned that allowing third parties to make observations would make an administrative process unnecessarily adversarial.
In the final version of the rules, only the patentee can make observations after the CIPO's preliminary determination of PTA duration. Interested third parties may still challenge CIPO's final determination on PTA duration by submitting an application for reconsideration; however, in the final version of the rules, only the submitting party and the patentee will be able to make observations on CIPO's preliminary reconsideration decision.
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.
