Major Changes to the Canadian Patent Rules Effective October 30, 2019

By James Ramsbottom

On October 30, 2019 the anticipated new Patent Rulesand corresponding amendments to the Canadian Patent Act will come into force.  As a result of the new Patent Rules, certain aspects of Canadian Patent Practice will be altered. These new Patent Rule changes were needed to allow Canada to ratify the Patent Law Treaty (PLT).

In order to simplify the new Patent Rules, we provide below the major points which may affect advice given to both domestic and foreign clients.

PCT National Phase Entry Requirements

Current Rule (for PCT Applications with International Filing Date before October 30, 2019) New Rule (for PCT Application with International Filing Date after October 30, 2019)
Late National Phase Entry If the 30-month deadline from the earliest priority date has passed, Applicants may enter Canada up to 42-months from the earliest priority date with:

·       payment of a $200 reinstatement fee as a matter of right

If the 30-month deadline from the earliest priority date has passed, Applicants may enter Canada up to 42-months from the earliest priority date with:

·       payment of a $200 reinstatement fee;

·       a request that the rights of the Applicant be reinstated; and

·       a statement that the failure to meet the 30-month deadline was unintentional

Restoration of Priority No priority claim can be made after the 12-month period following the filing date of the earlier application from which the benefit of priority is claimed ·       Priority can be restored during the International Phase; or

·       Priority can be restored during the National Phase provided a request to restore the priority is made within one month after National Entry

Certified Copy of priority document Not required If a certified copy of priority document is not filed during the International Phase, it must be submitted within 2 months of Office Notice.
Filing Fees Must be paid at National Phase Entry (by 30-month deadline) Must be paid at National Phase Entry (by 30-month deadline) (No Change)
Translations Must be provided in English or French at National Phase Entry (by 30-month deadline) Must be provided in English or French at National Phase Entry (by 30-month deadline) (No Change)

 

Directly-Filed (Non-PCT) Canadian Application Filing Requirement

Current Rule (Canadian Applications with a Filing Date before October 30, 2019) New Rule (Canadian Applications with a Filing Date after October 30, 2019)
To obtain a filing date ·       Indication that a patent is sought

·       Petition, identifying inventors and applicant

·       Copy of the application in English or French

·       Filing Fees

·       Indication that a patent is sought

·       Petition, identifying inventors and applicant

·       Copy of the application in any language

Obtaining a filing date Only on days CIPO is open Any day, including weekends, holiday or any other day whether CIPO is open or closed to the public

 

Payment of Filing Fees Must be paid at filing ·       May be paid within 3-months of filing

·       $150 late fee must be paid

N.B. if not paid within 3-months application will be deemed withdrawn

 

Translations Must be provided in English or French at filing ·       Must be filed within 2-months of a Requisition to submit a translation for CIPO

·       No additional fee required

·       Deadline non-extendible

If deadline not met application will be considered abandoned

Restoration of Priority No priority claim can be made after the 12-month period of the filing date of the earlier application

 

 

·       Canadian application must be filed within 14-months from earliest priority date provided failure to meet the deadline was unintentional

·       Request to restore priority must be made within 2-months from Canadian filing date and no later than 16-months from earliest priority date

 

Certified Copy of priority document None Must be provided the later of 16-months from earliest priority date or 2 months from CIPO Requisition.  Failure to comply with the requisitions will result in the application being deemed withdrawn.

 

 

Maintenance Fees

Current Rule (Before  October 30, 2019) New Rule (After October 30, 2019)
Pending Applications ·       Only Agent of Record may pay the Maintenance Fees

·       If payment deadline is missed, can be paid up to 12-month from original deadline with additional payment of $200

·       Anyone can pay the Maintenance Fees

·       If deadline is missed, CIPO will issue a Late Notice

·       To avoid abandonment, the original Maintenance Fees amount plus an additional $150 late fee must be paid within 2-months of CIPO Late Notice and no later than 6-months from original deadline

 

Issued Patents Anyone can pay the Maintenance Fees ·       Anyone can pay the Maintenance Fees

·       If deadline is missed, CIPO will issue a Late Notice

·       To avoid abandonment, the original Maintenance Fees amount plus an additional $150 late fee must be paid with 2-months of CIPO Late Notice and no later than 6-months from original deadline

 

NOTE: to Reinstate after 6-month late payment window, new “due care” requirements will apply

 

The “Rule of 4’s”

Current Rule (Canadian Applications/National Phase Entries with a Filing Date before October 30, 2019) New Rule (Canadian Applications/National Phase Entries with a Filing Date after October 30, 2019)
Requesting Examination and payment of Examination Fees ·       5-years from Canadian Filing Date for directly filed Canadian Applications

·       5-years from International Filing Date for National Phase Entries

·       4-years from Canadian Filing Date for directly filed Canadian Applications

·       4-years from International Filing Date for National Phase Entries

Requesting Examination of a Divisional Application and payment of Examination Fees Later of:

·       5-years from the filing date; or

·       6-months from the Canadian Divisional filing date

For parent applications filed before October 30, 2019, but divisional filed after, later of:

·       5-years from the filing date; or

·       3-months from the Canadian Divisional filing date

 

For parent application filed after October 30, 2019, later of:

·       4-years from the filing date; or

·       3-months from the Canadian Divisional filing date

 

Failure to Request Examination Application can be reinstated with 12-month from abandonment deadline with payment of $200 reinstatement fees ·       If examination not requested by deadline, CIPO will issue a Late Notice

·       Examination Request, Examination fees and Late Fees must be submitted within 2-months of CIPO Late Notice or application will be abandoned NOTE: for Reinstatements new “due care” requirements will apply

 

Examiner’s Reports ·       6-months from Examiner’s Report date

·       3-months from Examiner’s Report date for “advanced prosecution” applications

·       4-months from Examiner’s Report date

·       Maximum of 6-months

·       An extension of time can be obtained if a request is made prior to the expiry of the original 4-month term, with $200 fee, and provided Commissioner considers that circumstances justify the extension

 

Final Fee (aka Issue Fee) Payment must be made within 6-months from Notice of Allowance Payment must be made within 4-months from Notice of Allowance

 

Under the Patent Rules in force prior to October 30, 2019, should an application or patent become abandoned for failure to act on a deadline, it can be reinstated as a matter of right within 12-month from the date of abandonment and payment of a $200 fee.  However, under the Patent Ruleswhich come into force on October 30, 2019, in certain circumstances, such as failing to pay a Maintenance Fee or Request Examination more than 6-months after the original deadline, the Applicant will need to, in addition to paying additional late fees, establish to the Commissioner that the failure occurred despite due care. Accordingly, under the new Patent Rules,reinstatement as a matter of right, in certain circumstances, has been removed.

Furthermore, in the new Patent Rules and amended Patent Act, third party rights will be introduced such that a third party will not be liable for acts which may constitute infringement of a claim during a period when an application or patent is considered to be abandoned or lapsed while a due care threshold for reinstatement is applicable. Thus, a third party will not be liable for acts committed in good faith during such periods.

Recommendations

We provide below some general recommendations in anticipation of the new Patent Rules coming into effect on October 30, 2019:

  1. File any Late National Phase Applications (beyond the 30-month deadline) as soon as possible, even though the new requirements will apply only to International applications with an international filing date on or after October 30, 2019.
  2. Make sure that certified copies of priority applications are filed during the International Phase.
  3. Provide certified copies of priority applications at the time of filing Direct Canadian patent applications. Alternatively, make the priority documents available at the time of filing via the WIPO Digital Access Service.
  4. Highlight immediately at the time of filing or national entry in Canada if restoration of priority is required.
  5. Ensure that maintenance fee and examination request deadlines are timely met in view of the new due care standard for reinstatement.

Other changes to the Patent Rules and Patent Act have been made. However, we highlight here changes that may be most relevant to you or your clients’ patent portfolio and filing strategies. We would be pleased to answer any specific questions you may have on a case-by-case basis.

For more information, please contact James Ramsbottom (james@mrfip.com), André Merizzi (andre@mrfip.com), Alistair Forster (alistair@mrfip.com), Craig Armstrong (craig@mrfip.com) or any other member of the firm.

 

Copyright 2019 Merizzi Ramsbottom & Forster