With statutory amendments passed into law recently, and regulatory amendments being drafted, Canada prepares to implement the Patent Law Treaty.
The Treaty aims to harmonize formal procedures in respect of patent applications. Currently, there are 36 contracting parties. The Treaty is in force in the UK, Switzerland, and France. The EPO and Germany have not ratified the Treaty 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. While Japan is not a party to the Treaty, revisions coming into force in April will bring Japan into closer alignment as well. The latest country in which the Treaty has come into force is the United States in December 2013.
The Government of Canada tabled the Treaty before Parliament two months later, in January 2014, explaining in a memorandum that harmonization would, in addition to reducing regulatory and procedural burdens, improve alignment with Canada’s major trading partners. The Government then introduced a bill containing implementing amendments to the Patent Act which, a mere 54 days later, passed into law in December 2014. Some of the amendments notably relate to filing date, missing parts, priority restoration, grace period, abandonment, reinstatement, administrative defect, and third parties. An overview of these amendments is provided below.
Filing date. Under the amendments, a filing fee is no longer required to obtain a filing date. If the filing fee is not paid at filing, the Commissioner of Patents must send a notice informing an applicant of non-payment and requiring payment, with a late fee by a prescribed date. See amended section 27(7).
Missing parts. An applicant can submit a part of the specification or drawing that was missing at filing, while maintaining the filing date accorded. The addition must be “completely contained” in a priority application, and must be added within a prescribed period that is not to exceed six months after the filing date. The addition effectively allows the applicant to complete the application without losing the priority date for matter supported only by the missing part. See new section 28.01.
Priority restoration. The amendments provide relief against the unintentional loss of priority rights. Where an applicant fails to file an application within 12 months of its priority date, the applicant will have an additional 2 months if the failure was unintentional. See new section 28.4(6).
Grace period. The grace period will be allowed to run to one year before the priority date. The change brings Canada’s grace period into harmony with a number of other countries including notably the U.S. (for post-AIA applications). The grace period is most useful for research institutions, SMEs, and individual inventors, according to a number of countries surveyed in a 2013 report by the AIPPI. See amended sections 28.2(1)(a), 28.3(a).
Abandonment. The amendments provide relief against abandonment in respect of certain fee payments, by introducing notices before abandonment and extending time limits. An application will not become abandoned for failure to pay a maintenance fee by a prescribed date without an applicant first being notified by the Commissioner and being provided with additional time to pay, with a late fee, namely before the later of six months after the prescribed date and two months after the notice. Where the applicant fails to request examination with the requisite fee, the Commissioner will similarly be required to provide notice 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. See amended sections 73(1)(c), (d), (a).
Reinstatement. 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. In order to reinstate an application, an applicant will be required to state the reasons for failing to take the action that should have been taken to avoid abandonment, and the Commissioner will have to determine that the failure occurred in spite of due care. The Governor in Council will be provided the power to regulate in respect of the circumstances in which reasons and due care will not be required. It remains to be seen how this will affect the current ability to abandon an application after allowance to reopen prosecution, for example to add claims on reinstatement. However, the CIPO has indicated, in an example of how the regulations might be implemented, that applicants requesting reinstatement past a period defined in the Patent Rules would need to meet the requirements of reasons and due care. Accordingly, perhaps it will be possible to reopen prosecution while avoiding the requirements of reasons and due care, by abandoning the application as described above but then reinstating the application before the prescribed period ends. See new sections 73(3)(a)(ii), 73(3)(b)), 12(j.76).
Administrative defect. The amendments provide relief against revocation of a patent due to administrative defect during the application stage. 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. See new section 73.1.
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. No action for infringement will lie against the act of a third party which would otherwise have constituted infringement, where the act was made in good faith during a prescribed period. See new section 55.11.
The amendments to the Patent Act come into force on a day fixed by order of the Governor in Council. According to the CIPO, that date is expected to be in winter or early 2016, and will be established after the relevant amendment to the Patent Rules have been prepared.
Canada is midway to implementing the PLT. The amendments to abandonment and reinstatement practice, which introduce a patchwork of extension periods and create more onerous requirements, underline the need to exercise caution and limit their use. The amendments do, however, provide welcome relief in terms of missing parts and priority restoration.