Complex legislative background
Complicated interplay between Patent Act and Patent Rules
Significant elements of amended legislative scheme

On August 1 2017 the government opened a public consultation on proposed amendments to the Patent Rules, which will run until September 8 2017. The changes relate principally to pending amendments to the Patent Act that are intended to bring it into compliance with the Patent Law Treaty (PLT). This update provides an overview of significant changes to Canadian patent practice that will result if the proposed rules come into force in their present form.


The federal government has indicated that, after the present public consultation period, the proposed rules will be pre-published in the Canada Gazette, Part I. This will provide another opportunity for interested stakeholders to provide comments, although the rules should be in close-to-final form at that time. Subsequently, the final amendments will be published in the Canada Gazette, Part II. The government estimates that these two further steps will occur in Spring and late 2018, respectively. This schedule, if it holds, would suggest that the amended rules could be in force in early 2019.

Complex legislative background

There are three outstanding legislative instruments effecting amendments to the Patent Act, none of which is fully in force at present. The Patent Act is not routinely amended, so it is unusual to have multiple outstanding amendments in separate pieces of implementing legislation that must be coordinated.

The Economic Action Plan 2014 Act, No 2(1) is an omnibus law implementing aspects of the 2014 federal budget. It contains provisions that will amend the Patent Act, largely for compliance with the PLT. The present proposed amendments to the Patent Rules are associated with these pending amendments to the act.

The Economic Action Plan 2015 Act, No 1(2) is another omnibus law, this time implementing aspects of the 2015 federal budget. It also contains provisions amending the Patent Act, some of which – such as those providing statutory privilege for communications between patent agents and their clients – are already in force. Other provisions permitting the commissioner of patents to extend deadlines in cases of force majeure events, such as floods or extensive power outages, are not yet in force.

Before either of the above statutes could fully come into force, the Canada-European Union Comprehensive Economic and Trade Agreement Implementation Act(3) received royal assent on May 16 2017. As its name indicates, this law gives effect to Canada's obligations under the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union. It is another omnibus law amending numerous statutes. Among other things, this law will amend the Patent Act to introduce a system of certificates of supplementary protection, effectively extending the term of patent protection to account for delays in the drug approval process.

The Proposed Certificate of Supplementary Protection Regulations and the Regulations Amending the Patented Medicines (Notice of Compliance) Regulations 2017 were published for public comment in the Canada Gazette (Part I, Vol 151, No 28) on July 15 2017 (for further details please see "CETA draft regulations on patent linkage and term restoration published for public comment"). In the same volume of the Canada Gazette, the proposed Rules Amending the Patent Rules were also published for public comment, making minor consequential amendments to the Patent Rules with regard to the requirement for the appointment of a representative. It appears that these more modest changes to the Patent Rules could come into force with the CETA legislation, before the other amendments discussed herein. The Canadian government and the European Commission recently issued a joint statement announcing September 21 2017 as the intended date for provisional implementation of the CETA.

As a consequence, the transitional and coordinating provisions of the legislation are complex.

Complicated interplay between Patent Act and Patent Rules

Sub-section 12(2) of the Patent Act states that "any rule or regulation made by the Governor in Council has the same force and effect as if it had been enacted herein". This is a possibly unique provision not found in other acts.

Perhaps on the strength of this provision, the proposed rules include many exceptions to the act that apply in certain circumstances. This makes for difficult reading, because the rules do not merely fill in the details of procedure within the broad but fixed contours of the act. Rather, it is necessary to read the act and the rules in concert to understand even the basic requirements.

This approach was possibly necessitated by inclusion of the amendments to the act in omnibus rather than standalone legislation. Bills intended to implement initiatives set out in annual federal budgets or give effect to international trade agreements have many parts and must move quickly through the legislative process. There is little time or opportunity for revision, as this would hold up the entire bill. Omnibus bills are often criticised for this reason. Leaving substantial essential detail to the rules provides additional time and flexibility.

Even after all of the amendments come into force, the Patent Act and the Patent Rules will be complex documents. While these are early days, it seems that understanding the new regime will be challenging for even the most diligent and informed reader.

Significant elements of amended legislative scheme

Assuming that the puzzle pieces fall neatly into place, significant elements of the amended legislative scheme reflected in the proposed rules include the following.

Reduced requirements to obtain filing date
At present, the filing fee must be paid and a translation of the application into English or French must be submitted at the time of filing a Canadian patent application. Under the amended act and rules, it will be possible to defer payment of the filing fee and the translation. It will also be possible to defer filing a specification at all by instead making reference to a previously regularly filed application.

24/7/365 electronic filing
At present, it is impossible to obtain a filing date on a Saturday, Sunday, holiday or other day when the Patent Office is closed. This could have negative consequences if the Canadian application is the first-filed application or the filing date is needed to benefit from the grace period. Under the amended regime, it will be possible to secure a filing date on a day when the Patent Office is closed if the application is filed by electronic means. For example, if a response to an examiner's report falls due on July 1 (Canada Day), the response may be filed on July 2, the next day on which the office is open (dies non practice). However, if the applicant needs a July 1 filing date (eg, if the invention was disclosed to the public by the applicant on the previous July 1), it will be possible to secure a July 1 filing date by submitting the application by electronic means.

Addition to specification or addition of drawing
A procedure is introduced whereby the applicant may add to the specification or add a drawing, without loss of the original filing date, if the addition is wholly contained in a priority document and made within two months from:

  • filing; or
  • notice by the commissioner of patents that part of the application is missing.

Restoration of priority
Under the existing law, it is impossible to claim priority for an application filed more than 12 months before the filing date of a Canadian patent application. Restoration of priority is introduced, such that it will be possible to claim priority for a previously regularly filed application filed up to 14 months before the Canadian (or Patent Cooperation Treaty (PCT)) filing date if:

  • the request is made within the same time period; and
  • the applicant states that the failure to file the application in a timely manner was unintentional.

Restoration of priority is subject to subsequent challenge in a court proceeding on the basis that the failure to file the application in a timely manner was not unintentional.

Shortened term for national phase entry
A PCT application must enter the Canadian national phase within 42 months from the priority date, although an additional late fee is payable if the applicant enters the national phase more than 30 months from the priority date. Under the proposed rules, the late entry option is removed. If the applicant fails to enter the national phase by the 30-month deadline, it is still possible to do this within 42 months of the priority date, but only if:

  • a declaration that the failure to enter the national phase in a timely manner was unintentional and a statement of the reasons for the failure are submitted; and
  • the commissioner of patents determines that the failure was unintentional.

Shortened prosecution deadlines
There is a focus on reducing pendency. The term for requesting examination will be reduced from five years from the filing date to three. Examiners' reports will have a standard term for response of four months rather than six. The final fee will be due four months from the notice of allowance rather than six. Some deadlines may be extended on payment of a C$200 fee if the commissioner of patents is satisfied that the circumstances justify the extension.

Extension of time limits in unforeseen circumstances
At present, the Patent Office may be declared closed for business by order of the minister of innovation, science and economic development. The amended patent regime will provide greater flexibility to deal with events such as floods and power failures by permitting the commissioner of patents to extend time periods on account of unforeseen circumstances if the commissioner is satisfied that it is in the public interest to do so. As noted above, it will still be possible to obtain a filing date, if needed, when the Patent Office is closed.

Notice of certain deadlines before abandonment or expiry
The Patent Office will be obliged to provide notice that certain deadlines have been missed before an application is deemed to be abandoned. This will include failure to pay a request examination or maintenance fee on a pending application. Notice will similarly be required before a patent is deemed to have expired for non-payment of a maintenance fee. These are instances in which the Patent Office has not previously communicated with the applicant about the deadline. No such notice will be required with respect to, for example, a missed deadline for responding to an examiner's report, as the report itself will have provided notice of the deadline.

Due care standard for reinstatement in some instances
Canadian patent applications become abandoned if action is not taken by the prescribed deadline. At present, the application may be reinstated by:

  • requesting reinstatement;
  • paying a fee; and
  • taking the omitted action within 12 months from the date of abandonment.

That is, reinstatement is as of right. Under the amended act and rules, the requirements for reinstatement will be more stringent in certain cases where abandonment occurs only after notice of the missed deadline – namely, missed payment of the examination or a maintenance fee. In such instances, the due care standard will apply if reinstatement is effected more than six months from the original deadline. The applicant must state the reasons for the failure to take the action that led to abandonment and the commissioner must determine that "the failure occurred in spite of the due care required by the circumstances having been taken". At present, what constitutes 'due care' is unknown. Reinstatement under the due care standard may be subsequently challenged in the federal courts.

Amendments after allowance
Only limited amendments are permitted after an application is allowed under the existing system. In order to reopen prosecution, it is necessary to allow the issue fee deadline to pass such that the application becomes abandoned and then reinstate the application. An application reinstated in these circumstances is subject to amendment and further examination. This is unnecessarily complex and time consuming. This procedure will be streamlined such that the notice of allowance can be withdrawn and prosecution reopened simply upon payment of a fee within four months from the date of allowance.

Issue fee calculation
At present, the issue fee is C$300 plus C$6 for each page of specification and drawings in excess of 100. The fee schedule in the rules is to be amended to clarify that the excess page fee does not apply to pages of a sequence listing submitted in electronic form. This will come as welcome news to biotechnology patentees that have in some instances been stuck with exorbitant issue fees.

Correction of errors
The existing act provides for the correction of clerical errors, ultimately at the discretion of the commissioner of patents. This has led to a complicated body of law concerning whether an error truly is clerical and what, if anything, the commissioner should do about such an error. The amended act and rules will instead provide for the correction of obvious errors, where it is obvious that something was intended other than what appears in the patent and that nothing else could have been intended other than the correction. Errors by the commissioner must be corrected within six months of grant and errors by the patentee must be corrected within four months of grant. Mechanisms are also introduced for correcting errors in identifying or naming applicants and inventors.

Payment of maintenance fees
At present, only the Canadian patent agent may pay a maintenance fee on a pending application. This will change so that any party, such as an annuity service, can pay maintenance fees on pending applications, as is presently the case for issued patents.

It will be possible to record a transfer of ownership of an application or patent merely on the request of the applicant or patentee, respectively, without submission of evidence, such as an assignment document. Where the request is by the transferee, it will still be necessary to submit an assignment document or other evidence of the change in ownership.

Third-party rights
An exception from patent infringement is introduced for otherwise infringing acts that a third party, in good faith, first committed or made serious and effective preparations to commit during a prescribed period after an applicant or patentee failed to request examination or pay a maintenance fee by the original deadline. It will be for the courts to clarify what constitutes 'serious and effective preparations' to commit an infringing act. The application of third-party rights may be avoided by taking action within six months from the original deadline.


Many of the proposed amendments to the rules are directed at simplifying formal requirements and minimising the risk of loss of rights – matters which are addressed by the PLT. Applicants will likely notice few substantive changes to routine prosecution, other than that the pace will pick up somewhat with the proposed shortened time limits. Perhaps the greatest trap for the unwary is the change to the PCT national phase entry deadline. With the removal of 42-month late entry as a matter of right, applicants will need to plan ahead for Canadian national phase entry no later than 30 months from the priority date. At present, it is difficult to anticipate the practical impact of the new third-party rights regime or what might constitute the serious and effective preparations to commit an infringing act that is exempted under these provisions. This presumably will not be known until the defence is raised in future litigation. In the interim, cautious applicants and patentees will wish to avoid missing deadlines that potentially trigger the prospect of third-party rights.

For further information on this topic please contact David Schwartz at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email ([email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.


(1) Statutes of Canada 2014, Chapter 39 (Bill C-43, 41st Parliament, 2nd Session).

(2) Statutes of Canada 2015, Chapter 36 (Bill C-59, 41st Parliament, 2nd Session).

(3) Statutes of Canada 2017, Chapter 6 (Bill C-30, 42nd Parliament, 2nd Session).