On December 16, 2014, Bill C-43 received Royal Assent. The legislation includes amendments to the Canadian Patent Act that will eventually usher in significant changes to Canadian practice. The amendments mainly address Canada’s obligations under the Patent Law Treaty and bring the Canadian system into alliance with other countries. We expect further amendments to be introduced later in 2015 to address Canada’s recent obligations under the Comprehensive Economic Trade Agreement (CETA). These Bill C-43 amendments are not yet in effect and we await publication of corresponding regulations. The date when these amendments and related regulations will be in effect is not yet known but is expected later in 2015.
Without the corresponding regulations, the precise details of the changes are not yet known. However, the amendments will spell the end of one of the better- known aspects of the Canadian patent system: our flexible abandonment and reinstatement practice.
The full text of the amendments to the Patent Act is available to view by clicking here. Select highlights of impacted areas include:
Abandonment and Reinstatement
- Reinstatement will no longer be available as of right in Canada. Instead, an Applicant will have to provide a reason for the failure to take action, and the Commissioner of Patents will have discretion to determine if the failure occurred despite “due care”.
- Pending applications will be grandfathered under current provisions if the date of the requisition that led to the abandonment falls before the date that the new amendments come into force.
Infringement and Pre-grant Infringement
- Where a patent or application is deemed abandoned, an act committed in good faith that would otherwise constitute infringement will not be considered infringement during the period of abandonment.
- There will be no liability for ‘reasonable compensation’ in the post-publication to pre-grant period before the specification is published in English or French.
- No fee will be required to obtain a Canadian filing date; Applicants will be able to pay a late fee.
- An extra two months will be provided after the 12-month convention period to file and make valid priority claim, if it can be shown that the failure to file within 12 months was “unintentional”.
Incorporation by Reference
- Incorporation by reference will be permitted.
The timing, scope, and full impact of these and other amendments will become clear when the revised Patent Rules are released.