Canada has announced that anticipated changes to the Canadian Patent Act and Rules will be coming into force as of October 30, 2019. The amended Patent Act and new Rules will introduce a number of significant changes to longstanding patent practice in Canada, including changes to late national phase entry, examination request, and the abandonment and reinstatement of applications. The following is a brief, non-exhaustive overview of some of the changes.
The requirements for direct filing in Canada are simplified under the new Rules. A patent application must be filed by the inventor or their legal representative, and contain a petition, specification, and an application fee, but the application fee will not be required to obtain a filing date. If the specification is not in English or French, a translation must be provided within two months of a notice issued by the Canadian Intellectual Property Office (“CIPO”).
Under the new Rules, an applicant may add a missing part of the specification or add a missing drawing from a priority application. Specific deadlines apply depending on whether the addition is voluntary or in response to a notice. However, missing parts cannot be added to a divisional application.
Starting October 30, 2019, amendments to the Act and the new Rules will allow an applicant to obtain a filing date on a weekend, holiday, or other day when CIPO is closed to the public, if the application is filed electronically. This is particularly beneficial where a filing date needs to be obtained prior to an imminent public disclosure or the end of the disclosure grace period.
National Phase Entry
For PCT national phase applications having an international filing date on or after October 30, 2019, there is no longer late national phase entry as of right in Canada, and a 30-month deadline from the earliest priority date will apply. This deadline cannot be extended. Late national entry, up to 42 months from the earliest priority date, will only be available if the failure to enter national phase by the 30-month deadline was unintentional.
For applications having an (international) filing date on or after October 30, 2019, restoration of priority will be available if the (international) filing date is within 14 months from the priority date.
In the case of PCT national phase applications, if priority was restored during international phase on or after October 30, 2019, and before national phase entry, then priority will be deemed to be restored in Canada. Alternatively, it may be restored on an unintentionality basis if a request for restoration is submitted within one month from national phase entry. In the case of Canadian (non-PCT) patent applications, the request for restoration will need to be submitted within two months from the filing date. An extension of time is not available.
Copies of Priority Applications
The new Rules specify that a certified copy of the priority application must be submitted or a copy made available in an acceptable digital library (which is expected to be the WIPO Digital Access Service), for applications that make a priority claim on or after October 30, 2019. This is not a requirement under the current Rules. Under the new Rules, this requirement must be met within the later of 16 months from the priority date or 4 months from the filing date for Canadian patent applications (and as early as the national phase entry date for PCT national phase entry applications in the rare event where a certified copy was not previously submitted during international phase). If this requirement is not met, a notice will issue requiring compliance within 2 months from the notice.
The new Rules require that, in the case of joint applicants, one applicant be appointed by the other applicants as their common representative. For applications with joint applicants, we recommend that the common representative be identified in filing instructions, to avoid a default common representative being appointed. Although the common representative can be modified after filing, it requires signatures from all other applicants.
For patent applications filed on or after October 30, 2019, the deadline for requesting examination is shortened to four years from the filing date (the international filing date or Canadian filing date). For divisional applications based on those applications, the deadline for requesting examination is shortened to the later of four years from the filing date and three months from the submission of the divisional application. Extensions of time are not available. Where the parent application is filed before October 30, 2019, but the presentation date of the divisional application is on or after October 30, 2019, the deadline for requesting examination if the divisional application will be the later of five years from the filing date and three months from the presentation date.
If the deadline for requesting examination is missed, CIPO will send a notice to the applicant requiring that the request for examination be filed and requesting payment of the examination fee and a late fee. If these steps are not taken within two months of the date of the notice, the application will be abandoned. There is still the possibility to reinstate the application within 12 months of the abandonment date by filing a reinstatement request and paying the examination fee, late fee, and reinstatement fee. Note, however, that if reinstatement is requested more than six months after the missed deadline for requesting examination, the applicant will also need to submit a statement of reasons for failure to file the request, and the application will only be reinstated if the Commissioner of Patents determines that the failure occurred in spite of due care.
The deadline for responding to an Office Action is also being shortened under the new Rules to four months. However, a 2-month extension may be available upon request prior to the Office Action deadline. If the Office Action is not responded to by the deadline, the application becomes abandoned and can be reinstated as of right within 12 months.
Maintenance fees are payable in Canada beginning on the second anniversary of the filing date and continuing annually up to and including the nineteenth anniversary of the filing date. This aspect of maintenance fees is not changing. However, who can pay a maintenance fee and the consequences of not paying a maintenance fee on time will change as follows.
Under the current Rules, in general, only the appointed patent agent can pay a maintenance fee on a pending patent application while anyone can pay a maintenance fee on an issued patent. Under the new Rules, a maintenance fee on a pending patent application or an issued patent can also be paid by the applicant/patentee or a person authorized by the applicant/patentee.
If a maintenance fee on a pending patent application due on or after October 30, 2019, is not timely paid, CIPO will send a notice to the applicant requiring payment of the maintenance fee and a late fee. If these payments are not made within the later of two months from the notice date and six months from the maintenance fee due date, the patent application will be abandoned. There is still the possibility to reinstate the application within 12 months of the abandonment date by filing a reinstatement request and paying the maintenance fee, late fee, and reinstatement fee. However, the applicant will also need to submit a statement of reasons for failure to pay the maintenance fee, and the application will only be reinstated if the Commissioner determines that the failure occurred in spite of due care.
If a maintenance fee on an issued patent due on or after October 30, 2019, is not timely paid, CIPO will send a notice to the patentee requiring payment of the maintenance fee and a late fee. If these payments are not made within the later of two months from the notice date and six months from the maintenance fee due date, the issued patent will be deemed to have expired as of the maintenance fee due date. There may be the possibility to reverse the expiry of the patent within 12 months from the six-month period of the maintenance fee due date by filing a request to reverse the expiry and paying the maintenance fee, late fee, and reinstatement fee. Note that the patentee will also need to submit a statement of reasons for failure to file the maintenance fee, and expiry patent will only be reversed if the Commissioner determines that the failure occurred in spite of due care.
There will no longer be a general provision to correct clerical errors under section 8 of the Act. Separate provisions in the new Rules deal with correcting errors in the priority claim, the applicant or inventor name, obvious errors in the specification, and errors by the Commissioner. Specific deadlines and procedures will apply in each case.
Other procedures such as reissue, re-examination, and disclaimer will still be available upon the coming-into-force of the new Rules.
The new Rules allow for the recordal of transfers at CIPO, similar to the current Rules, which permit the registration of assignments. The amended Act includes a provision to remove the recordal of a transfer if satisfactory evidence, that the transfer should not have been recorded, is provided.
Allowance and Grant
For applications that are allowed on or after October 30, 2019, there is a new deadline of four months from the date of allowance to pay the final fee. This deadline is non-extendible. If the deadline is not met, the application becomes abandoned and can be reinstated as of right within 12 months from the final fee due date. Reinstating such an application will not re-open prosecution, and the application will instead proceed to grant.
The new Rules set out a more streamlined procedure for amending an application after allowance, replacing the procedure of abandonment and reinstatement with voluntary amendment that is required for substantive amendments under the current Rules. The new Rules allow for correction of obvious errors, which will not require payment of a government fee. Any other amendment to the specification or drawings can be effected by requesting withdrawal of the Notice of Allowance along with payment of a government fee, and submitting the amendment. However, the new procedure subjects the application to further examination.
As noted above, in certain circumstances, an application will only be reinstated if the Commissioner determines that abandonment occurred in spite of due care. Although CIPO has indicated that it will adopt a practice consistent with PCT guidance for receiving offices, this is a new standard in Canada that will depend on the facts of each situation.
Even if CIPO reinstates an application, the Commissioner’s determination of due care can be subsequently challenged by a third party in Federal Court.
We therefore recommend requesting examination and paying maintenance fees in a timely fashion and that if their deadlines are missed, that the fees and associated late fees be paid within six months from the missed deadline to avoid abandonment (or expiry for issued patents) on these grounds.
Third Party Rights
The new Rules provide a safe harbor for otherwise infringing acts committed by third parties during prescribed periods. These third party rights may apply in instances where the applicant fails to request examination by the prescribed date, or misses a maintenance fee payment. In the case of missing the deadline for requesting examination, third party rights may start six months after the deadline for requesting examination. In the case of missing the deadline for paying a maintenance fee, third party rights may start six months after the deadline for paying the maintenance fee.