On October 30, 2019, amendments to the Canadian Patent Act and Patent Rules will come into force. The amendments, as reviewed in detail in our previous article, are largely geared to implementing the Patent Law Treaty.

An updated Manual of Patent Office Practice (MOPOP) has now been published, explaining Canadian Patent Office administrative and examination practice effective October 30.

The updated MOPOP provides important information as to how the Patent Office will handle certain aspects of patent practice under the new Rules. Most significantly, the updated MOPOP provides details concerning: (1) the new requirement for submission of certified copies of priority documents; (2) the basis on which extensions of time will be granted; and (3) the determination as to whether certain deadlines were missed in spite of the due care required by the circumstances having been taken.

Certified copies of priority documents If the filing date of a Canadian patent application that is not a Patent Cooperation Treaty (PCT) national phase application is on or after October 30, 2019, the applicant must submit a certified copy of each priority application to the Patent Office, or make it available from a digital library that is specified by the Commissioner of Patents as being accepted for that purpose.

The same requirements apply in the Canadian national phase of a PCT application having an international filing date on or after October 30, 2019, in the rare case that a certified copy of the priority document was not filed in the international phase.

The updated MOPOP now confirms that the specified digital library will be the World Intellectual Property Office Digital Access Service (DAS). The DAS is a secure electronic digital library service, administered by the World Intellectual Property Office (WIPO) to facilitate the secure exchange of patent, trademark and design priority documents between Intellectual Property Offices.

Extensions of time Various prosecution deadlines may be extended under the new Rules. Most significantly, all Examiner’s Reports issued on or after October 30, 2019, will have a four-month term for response, potentially extendable by a maximum of two months. Previously, most Examiner’s Reports had an unextendable six-month term for response.

An extension of time may be obtained only if: (1) the extension request is made and a CAD $200 government fee is paid before the original deadline expires; and (2) the Commissioner of Patents considers that the circumstances justify the extension.

The updated MOPOP sets out Patent Office practice with respect to the granting of such extensions, explaining that, in order for the Commissioner to be satisfied that the circumstances justify the extension, the applicant must provide “a simple justification that explains why an extension of time is being requested.” No evidence or affidavit is required when requesting an extension of time.

Subsequent requests for an extension of time for the same action on the same file will only be considered under “exceptional circumstances.” The updated MOPOP explains that examples of what might constitute exceptional circumstances justifying a further extension of time include:

  1. A very recent change in the appointment of a patent agent.
  2. Circumstances beyond the control of the person concerned, such as severe illness, accident, death, bankruptcy or other serious and unforeseen circumstances.

The Commissioner’s decision concerning the extension will be communicated to the applicant in writing. Importantly, the Patent Office’s current published service standard is to process requests for extensions of time within eight calendar weeks. Therefore, an applicant seeking an extension of time to respond to an Examiner’s Report would be well-served to request the extension within two months of issuance of the Report, in order to have a decision on the extension request in hand before the original four-month deadline expires.

Particularly for responding to Examiner’s Reports, depending how quickly the Patent Office actually processes extension requests, it may be simpler to use the reinstatement procedure than to obtain an extension of time—the costs and consequences are similar.

If a response to the Examiner’s Report is not submitted by the original or any extended deadline, the application will be abandoned. An application abandoned in these circumstances may be reinstated within 12 months of the date of abandonment upon submission of a request for reinstatement, a CAD $200 reinstatement fee, and a response to the Examiner’s Report.

There are procedures for expediting prosecution of a Canadian patent application. These generally will not be available in any application that has been abandoned or in which an extension of time has been granted.

“Due care” Pursuant to the amended Patent Act and Patent Rules, an application may only be abandoned for failure to pay a maintenance fee, or to request examination and pay the examination fee, after the Patent Office has provided notice of the missed deadline. A similar notice requirement is established with respect to failure to pay a maintenance fee on a granted patent. However, if the applicant or patentee fails to respond in due time to the notice, a showing of “due care” may be required in order to remedy the missed maintenance fee or examination fee deadline.

In greater detail, if the original deadline for paying a maintenance fee due on a pending application on or after October 30, 2019 is missed, the Patent Office will send a late notice to the patent agent of record. The application will be abandoned if the missed maintenance fee and a late fee of CAD $150 are not paid within the later of two months from the late notice and six months from the original deadline.

The application may be reinstated within 12 months of the date of abandonment, but only if the Commissioner of Patents determines that the failure to pay the maintenance fee occurred in spite of the due care required by the circumstances having been taken.

Similarly, if a maintenance fee payment due on or after October 30, 2019, on a granted patent is missed, the Patent Office will send a late notice to the patent agent of record.

The patent will be deemed to have expired on the original maintenance fee deadline if the missed maintenance and a late fee of CAD $150 are not paid within the later of two months from the late notice and six months from the original deadline.

Deemed expiry can be reversed within 18 months of original maintenance fee deadline, but only if the Commissioner of Patents determines that the failure to pay the maintenance fee or occurred in spite of the due care required by the circumstances having been taken.

There is a parallel procedure for failure to request examination. If the deadline for requesting examination is on or after October 30, 2019, in the event the examination request and fee are not submitted by the original deadline, the Patent Office will issue a late notice. If the examination request, examination fee, and a late fee are not submitted within two months from the date of the notice, the application will be abandoned.

The application may be reinstated within 12 months of the date of abandonment. But if more than six months from original examination fee deadline have passed, the application may only be reinstated if the Commissioner of Patents determines that the failure to request examination and pay the examination fee occurred in spite of the due care required by the circumstances having been taken.

The updated MOPOP elaborates procedures for establishing that due care was exercised.

The Commissioner of Patents will assess “whether the applicant [or patentee] took all measures that a reasonably prudent applicant [or patentee] would have taken - given the particular set of circumstances related to the failure - to avoid the failure, and despite taking those measures, the failure occurred.” Measures taken after the failure occurred will not be given consideration.

This approach is similar that taken by the Canadian Patent Office when acting as a Receiving Office in the context of a request for restoration of priority under the Patent Cooperation Treaty when a request for restoration of the right of priority is made on the basis that due care required by the circumstances was taken.

The Patent Office recommends that the applicant or patentee provide information concerning the following:

  • the circumstances that led to the failure
  • the measures the applicant patentee took to avoid the failure (including any remedial or alternative steps that were taken to avoid the failure)
  • any other justifications

Evidence of the circumstances and reasons for failure to meet the deadline (e.g. a medical note or an affidavit) may be submitted. Such information will be available to the public in the Patent Office’s records, so care should be exercised to avoid unnecessarily submitting sensitive information.

In determining whether the failure occurred in spite of the due care required under the circumstances having been taken, the Commissioner of Patents will consider “whether anything else could have been reasonably expected to have been done to avoid the failure while taking into consideration the particular set of circumstances surrounding the failure to take the required action.” As noted above, the Commissioner will not have regard to measures taken by the applicant or patentee after the failure occurred. The Commissioner of Patents will consider “the customary diligence that a prudent party would have exercised in the circumstances.”

While acknowledging that no two cases have identical sets of facts or circumstances, the Patent Office indicates that it will have regard to the considerations that are taken into account by the International Bureau and Receiving Offices of WIPO as described in paragraph 166M of the Receiving Office Guidelines.

The updated MOPOP explains that, in general, the following circumstances may justify a finding that the failure occurred in spite of the due care required by the circumstances having been taken:

  • Force Majeure: Where an external, unforeseeable and/or unavoidable circumstance beyond the control of the applicant, patentee, patent agent, or other authorized person (such as, a hurricane, volcanic eruption, earthquake, or war) made it impossible for an applicant, patentee, patent agent, or other authorized person to take the necessary action to avoid abandonment of an application or expiration of a patent.
  • Unexpected illness: Where an applicant, patentee, patent agent, or other authorized person falls unexpectedly ill or needs urgent treatment that prohibited all communication with other persons.
  • Facsimile or software submission failure: Where an error using facsimile or software occurred due to an external technical problem that was beyond their control, and where the applicant, patentee, patent agent, or other authorized person exhausted all alternative means to take the required actions.
  • Docketing system error: Where an unexpected and unforeseeable technical error in a docketing system caused an applicant, patentee, patent agent, or other authorized person to miss the deadline to take the actions that should have been taken to avoid abandonment of an application or expiration of a patent.
  • Isolated human error by assistant: Where an assistant makes an isolated error in the docketing, monitoring, preparation or filing of the application or patent.

In contrast, the updated MOPOP provides that, in general, the following circumstances may favour a determination that due care required by the circumstances was not taken:

  • Lack of financing by the applicant or patentee: Where an applicant or patentee claims that they did not have the requisite funds to take the actions that should have been taken to avoid abandonment of an application or expiration of the patent.
  • Human error by applicant, patentee, patent agent or other authorized person: Where a human error results from an increase in workload, a lost file, or other lack or organization or diligence when dealing with files.
  • Lack of knowledge by the applicant or patentee: Where an applicant or patentee who fails to take the actions necessary to avoid abandonment of an application or expiration of a patent due to lack of knowledge of the Canadian Patent Act and the Patent Rules.
  • Absence from the office: Where an applicant, patentee, patent agent, or other authorized person fails to meet the deadline to take the action to avoid abandonment of an application or expiration of a patent due to the fact that the deadline fell on a date of a planned a vacation or medical appointment.

In the event the Commissioner of Patents intends to make a determination that due care was not taken, the applicant or patentee will be notified and given one month to submit observations before a final determination is made.

Other than in circumstances where the applicant or patentee has been informed that the Commissioner of Patents intends to reach a finding of lack of due care, the Patent Office will aim to notify the applicant or patentee of the Commissioner’s decision within two months of receipt of the request or the last correspondence relating to the request.

Importantly, the remedial effect of a finding of due care by the Commissioner of Patents may later be reversed by the Federal Court of Canada, if the Court determines that either

  1. the statement of the reasons for missing the deadline provided by the applicant or patentee contains a material allegation that is untrue; or
  2. the failure to take action did not occur in spite of the due care required by the circumstances having been taken.