The Patent Law Treaty (PLT), administered by the World Intellectual Property Organization (WIPO), was adopted on May 31, 2000, with the aim of harmonizing and streamlining formal procedures with respect to patent applications and patents, and making such procedures more user friendly. Canada signed the PLT on May 21, 2001, and ratified the treaty on July 30, 2019.
Canada has now reached the end of its journey to implementing the PLT, new Canadian Patent Rules and associated amendments to the Patent Act having come into force today. To help ease the transition, we have provided a brief summary of the more significant changes in Canadian patent practice and procedure that are now in effect.
PCT national phase entry deadline – If a PCT application with an international filing date on or after October 30, 2019 enters the Canadian national phase more than 30 months from the earliest priority date, a reinstatement fee of CAD $200 must be paid and the applicant must submit (1) a request that the rights of the applicant be reinstated and (2) a statement that the failure to meet the 30-month deadline was unintentional. In no circumstance can a PCT application enter the Canadian national phase more than 42 months from the earliest priority date.
Certified copies of priority documents – Certified copies of priority documents must be filed with the Canadian Patent Office or made available from the WIPO Digital Access Service in Canadian patent applications filed on or after October 30, 2019. Certified copies of priority documents will only be required in the national phase of a PCT application if the international filing date is on or after October 30, 2019, and a certified copy was not submitted in the international phase.
Restoration of priority – Restoration of priority may be available on an “unintentional” standard in Canadian patent applications filed on or after October 30, 2019, or in the national phase of PCT applications having an international filing date on or after October 30, 2019.
Obtaining a filing date –If a Canadian patent application is filed on or after October 30, 2019, a filing date will be granted based on a specification filed in a foreign language, without payment of the filing fee. The English or French translation and filing fee may be submitted subsequently. But the national phase entry fee and English or French translation of a foreign-language specification are still due 30 months from the earliest priority date in the case of a PCT national phase entry in Canada.
24/7/365 filing –A filing date may now be obtained on a weekend, holiday, or other days when the Patent office is closed to the public, by filing the application electronically.
Addition based on priority application – If a Canadian application is filed on or after October 30, 2019, the application may be corrected shortly after filing by adding a missing part of the specification or adding a drawing from a priority application.
Maintenance Fees –Anyone can now pay a maintenance fee on a pending application. The application will be abandoned if the missed maintenance fee and a late fee 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. Third-party rights to practice the invention commencing from six months after the missed maintenance fee deadline arise, irrespective of whether the application was abandoned. A similar regime applies to maintenance fees for issued patents.
Examination request and fee – If 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 the original deadline have passed, the application may be reinstated only 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. Third-party rights to practice the invention commencing from six months after the missed examination request deadline arise, irrespective of whether the application was abandoned.
Shortened prosecution deadlines –The deadline for requesting examination is reduced from five to four years from the filing date in applications filed on or after October 30, 2019, or in the national phase of PCT applications having an international filing date on or after October 30, 2019. The deadlines for responding to Examiner’s Reports issued on or after today’s date and for paying the final fee (i.e. issue fee) in response to a notice of allowance issued on or after today’s date are both reduced from six to four months.
Excess page fee – If a notice of allowance issues on or after today’s date, the excess page fee calculation of CAD $6.00 per page over 100 pages of description, claims, and drawings does not include pages of a sequence listing in electronic form.
Re-opening prosecution after allowance – If a notice of allowance issues on or after today’s date, prosecution can be re-opened upon request for withdrawal of the notice of allowance and payment of a CAD $400 government fee prior to payment of the final fee. But if the application becomes abandoned for non-payment of the final fee and is subsequently reinstated, only limited amendments to correct “obvious” errors are permitted, and such an amendment must be submitted no later than when reinstating and paying the final fee.
Transfers (Assignments) –The applicant or patentee may now request recordal of a transfer of an application or patent without submission of an assignment document. In contrast, a transfer will be recorded at the request of the transferee only upon submission of evidence of the transfer satisfactory to the Commissioner. The same government fee of $100 applies in either case.
Correction of Errors – The Rules in force prior to October 30, 2019 provided only limited guidance with respect to correction of errors in patent applications or granted patents. Requests were often submitted to correct “clerical” errors under section 8 of the Patent Act, a provision which has been repealed. The Canadian courts have held that a clerical error under section 8 is an error “arising in the mechanical process of writing or transcribing.” Even if an error was determined to be clerical, CIPO had discretion whether to enter the correction, and potential prejudice to the public was considered. There were no time limits under section 8, and clerical errors could be corrected before or after grant. Under the new Rules, this broad general procedure for correcting clerical errors is replaced with a new regime establishing deadlines for correcting only particular errors. If a deadline for correcting an error is missed, correction may not be possible. The new Rules address correction of: (1) errors in priority claims; (2) errors in the identity or name of inventors and applicants; (3) errors made by the Patent Office in the patent (e.g. owner or inventor name, priority claim) or in the specification or drawings; and (4) errors made by the patentee in the name of the patentee or an inventor, or in the specification or drawings.