With statutory amendments passed into law recently, and regulatory amendments being drafted, Canada is preparing to implement the Patent Law Treaty.
The Treaty aims to harmonise formal procedures in respect of patent applications. The Treaty is in force in the UK, Switzerland, and France, as well as in 33 other jurisdictions. The EPO and Germany have not ratified to date, but the revision to the European Patent Convention (EPC 2000) that came into force in 2007 brought the EPO into closer alignment with the Treaty. Most recently, the Treaty came into force in the USA in December 2013.
The Government of Canada tabled the Treaty before Parliament two months later, in January 2014, explaining that harmonisation would, in addition to reducing regulatory and procedural burdens, improve alignment with Canada’s major trading partners. Relevant amendments to the Patent Act passed into law in December 2014. An overview of these amendments is provided below.
- Filing date – A filing fee is no longer required to obtain a filing date. If the filing fee is not paid at filing, notice is sent informing the applicant of non-payment and requiring payment, with a late fee by a prescribed date.
- Missing parts – Applicants can submit a part of the specification or drawing that was missing at filing, while maintaining the filing date. The addition must be “completely contained” in a priority application, and must be added no more than six months after the filing date. This effectively allows applicants to complete applications without losing the priority date for matter supported only by the missing part.
- Priority restoration – Where applicants fail to file an application within 12 months of a priority date, they will have an additional 2 months if the failure was unintentional.
- Grace period – The grace period will be allowed to run to one year before the priority date, similar to other countries such as the USA (for post-AIA applications). The grace period is most useful for research institutions, SMEs, and individual inventors, according to a 2013 report by the AIPPI.
- Abandonment – Applications will not become abandoned for failure to pay a maintenance fee by a prescribed date without applicants first being notified and being provided with additional time to pay with a late fee (six months after the prescribed date and two months after the notice). Where applicants fail to request examination with the requisite fee, notice will be provided before abandonment, but the extension provided is two months after the notice. Failure to respond to an Office Action, however, continues to result in abandonment without notice. To curb attempts to unduly prolong uncertainty associated with abandonment, according to the Canadian Intellectual Property Office (CIPO), additional requirements will apply to reinstatement in certain circumstances.
- Administrative defect – A patent cannot be declared invalid by reason only that the application was abandoned and not reinstated. The exception is where an untrue material allegation was made in the statement of reasons or where due care was not exercised.
- Third parties – To mitigate the impact of potentially longer periods of market uncertainty and discourage uncompetitive behaviour, according to the CIPO, a good faith defence to infringement is provided.
According to the CIPO, the amendments will come into force after the relevant amendments to the Patent Rules have been prepared. Proposed amendments to the Patent Rules are expected to be released for public consultation late 2016.
Other than the amendments relating to reinstatement practice and the good faith defence, the amendments particularly benefit applicants by allowing them to correct missing parts and restore priority. Also, helpfully, in case of public disclosure, they enable applicants to file in Canada within the same grace period as in the USA.