On October 30, 2019 the new Patent Rules will come into force in Canada, drastically changing Canadian patent practice. Some of the most significant changes are discussed below.
Shorter Deadlines are now Imposed
The new Patent Rules shorten deadlines in the following cases:
- The deadline for filing a request for examination is now 4 years instead of 5 years.
- The deadline for responding to an examiner's requisition is now 4 months instead of 6 months (extendable to 6 months upon request prior to expiry of the 4 month deadline.)
- The deadline for paying a final issue fee is now 4 months instead of 6.
The Canadian Intellectual Property Office is now less Forgiving!
A number of quirks of the Canadian system were previously used, for example to delay entry into the national phase of a PCT application or to reinstate an application once a maintenance fee had not been paid. These quirks are now being tightened up to bring the Canadian patent practice more in line with other jurisdictions:
- "Third party rights" are a new right in the new rules. Those rights are afforded to third parties who, while the patent rights are uncertain, take actions in good faith which would otherwise constitute an infringement:
- In the case of patent applications, third party rights begin to accrue 6 months after a missed due date to file a request for examination or to pay a maintenance fee.
- In the case of granted patents, third party rights begin 6 months after a missed due date for a maintenance fee.
- "Due care" is a new requirement that applies to patent applications and granted patents that have been abandoned due to non-payment of maintenance fees or failure to request examination:
- "Due care" requires the applicant and the patent agent to demonstrate that they have taken all measures that a reasonably prudent applicant and agent would have taken. Only exceptional circumstances would qualify, including natural disasters or war. The "due care" requirement therefore presents a very high bar to reach!
- If a maintenance fee deadline is missed for a patent application or a granted patent, a "due care" requirement comes into effect as of the later of 2 months after expiration of the deadline of the late fee notice or 6 months from the missed anniversary due date.
- If examination is not requested within the 4th year anniversary date of a patent application, a "due care" requirement comes into effect as of the later of 2 months after expiration of the deadline of the late fee notice or 6 months from the anniversary due date.
- Under the current system, late entry of a Canadian national phase of a PCT application can be made up to 12 months past the 30 month deadline with payment of a late fee. Late entry of the national phase of a PCT application will no longer be as of right for patent applications filed after October 30, 2019. If late national phase entry is requested in the 12 months following the 30 month PCT deadline, there is now a requirement for a statement that failure to enter national phase in Canada by the 30 month deadline was unintentional.
The Canadian Intellectual Property Office will now send more notices for missed deadlines. It is important to note that in general third party rights accrue from the original missed due date and are not affected by notice dates. Below are some of the notices:
- In the case of a missed deadline for filing a request for examination, a notice will be sent with a 2 month due date and a late fee request. If a compliant reply is made in time, the filing of the request for examination will be deemed to have been made prior to abandonment. If the deadline for providing a compliant reply is missed, the patent application will become abandoned.
- In the case of a missed maintenance fee payment, a notice will be sent and a reply must be made by the later of 2 months from notice date or 6 months from the original maintenance fee due date plus the late fee.
Easier Filing Requirements in Certain Areas
It is now easier to get a filing date at the Canadian Intellectual Property Office for direct filing.
- In fact, it is now possible to file a patent application in a language different than the two official languages of Canada (English/French), provided a translation of the patent application is filed within two months of the date of a notice issued by the Canadian Intellectual Property Office requiring translation of the patent application. Note that this new rule only applies to direct filing applications and not to a national phase of a PCT application. The filing fee is also not required at filing. The Canadian Intellectual Property Office will issue a notice requiring payment of the filing fee and a late fee, to be paid within 3 months of the notice. Again, it is important to note that this is only for direct filings and not for the national phase of a PCT application.
- It will be possible to obtain a filing date on weekends and holidays with an electronic filing.
PCT national phase entry requirements have not changed, still requiring an English/French description and the appropriate filing fee.
Previously, the only person authorized to pay patent application maintenance fees was the appointed agent. As of October 30, 2019, any party authorized by the applicant will be able to pay a patent application maintenance fee, including patent annuity service providers.
However, it is important to note that the Canadian Intellectual Property Office will only send a late fee notice to the agent. We therefore advise against alternative fee payment arrangements given the coming into force of "third party rights" and the "due care" requirement, both of which may result in expiry of a patent, patent application abandonment or a loss of rights.
Restoration of Priority
It is now possible to restore the priority of a patent application both in direct filing and for PCT applications so long as the filing date is on or after October 30, 2019. The requirements in the case of a direct filing are as follows:
- The patent application is filed after 12 months of the filing of the priority patent application but within 14 months of the priority date.
- The Applicant files a statement that failure to file within 12 months of the priority date was unintentional.
- The Applicant requests priority in the petition for grant of a patent or in a document other than the specification.
Previously, it was not possible to restore priority in Canada after 12 months from the earliest priority date. Under the new rules, priority restoration of a national phase entry of a PCT application will be available if:
- Request for restoration of priority is made within 1 month from national phase entry date; and
- The Applicant files a statement that the failure to claim priority was unintentional.
Alternatively, priority can be restored in the international phase of the PCT application.
The above changes apply to any patent applications filed on or after October 30, 2019. Any patent application filed prior to this date will still benefit from the Patent Rules as they stood before the date.