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.