Proposed Adoption of PCT Sequence Listing Standard and Other Miscellaneous Amendments to the Patent Rules of Canada

On July 3, 2021, proposed amendments to the Canadian Patent Rules were published by the Canadian Intellectual Property Office (CIPO) in the Canada Gazette.

Certain of the proposed amendments are directed to bringing the Canadian Patent Rules in line with obligations under the Patent Cooperation Treaty (PCT), particularly regarding provisions related to sequence listings and translations. The proposed amendments related to the PCT will come into effect on January 1, 2022 (particularly Sections 1 and 5), whilst the remaining proposed amendments will only come into effect 30 days after being approved and registered.

 

Sequence Listings

Under the proposed amendments, sequence listings accompanying Canadian patent applications are to comply with the latest World Intellectual Property Organisation (WIPO) Standard 26, which includes, for example, making the sequence listing available in electronic format (specifically XML format with elements and attributes), having specific reference to the SEQ ID NO. in the specification, and providing one letter abbreviations for amino acids (instead of three letter abbreviations). The new standard also prohibits sequence listings of less than 10 specifically defined nucleotides, or sequence listings encoding less than four specially defined amino acids. Furthermore, the proposed amendments to the translation requirements would allow the text of sequence listings to be filed in English or French.

 

Translation Corrections

The proposed amendments would allow corrections to translations of certain documents where obvious translation errors were included after filing a National Phase Entry from a PCT application in a foreign language. This will reduce the translation burden on foreign Applicants in Canada and will provide a swift mechanism for making correction of obvious errors.

 

Time Limit Extensions

The proposed amendments would make available extensions of time limits, at the discretion of the Commissioner, where the CIPO’s written information results in the incorrect payment of fees. This extension would be available to Applicants regardless of whether or not the period of time to correct the payment has expired. The Applicant would, however, need to identify the source of erroneous information, and file a statement that the extension of time is applied for without undue delay from becoming aware of the insufficiency in payment. This extension of time may be particularly relevant where annual adjustments in official fees arising under the Service Fees Act (sometimes 1-2% adjustments) have yet to be recorded on the CIPO’s electronic systems.

 

Discretionary Waivers of Fees

The proposed amendments further introduce different waivers, at the discretion of Commissioner, for fees for extensions of time requested when there are significant (and unavoidable) delays in the delivery of communications from the CIPO and the circumstances of such delay justify the extension. For example, the Commissioner would have discretion to waive a fee for an extension where a delay of more than one month occurred between the CIPO dispatching a communication and the Applicant receiving same (provided such a waiver is requested by the Applicant within 14 days of receipt). In another example, the Commissioner would have discretion to waive a fee for an extension where significant delays at the CIPO occurred in dispatching a report.

 

National Phase Entry Requirements

Several proposed amendments clarify CIPO’s position on National Phase Entry requirements and processing. For example, the proposed amendments provide that when a National Phase Entry is filed, a statement of entitlement compliant with the PCT would be an acceptable alternative to statements required under Section 54(2). However, if all or part of the PCT statement of entitlement is not in English or French, a translation would be required. In a similar vein, the proposed amendments clarify that PCT-compliant priority claims would be compliant with certain requirements under Patent Rules, including a request for priority.

 

Miscellaneous

Several other miscellaneous or so-called “housekeeping” amendments are also proposed. These include, for example, the proposed removal of retroactivity of filing Small Entity declarations in certain situations. The proposed amendments stipulate that if the standard fee is paid and a Small Entity Declaration is filed later, but within the payment time limit, the fee due will remain unchanged (i.e. the fee will not be reduced to the Small Entity fee and no refund will be paid).

The proposed amendments further clarify that Section 104 is to be used to correct errors in naming applicant(s), including adding, removing or replacing applicants, and further, that corrections in the naming of inventor(s) are allowable where such correction has no effect on the identity of inventor(s) and where the Applicant provides a statement confirming same. Yet further proposed amendments clarify, for example, that Section 78 is not applicable to the time periods during the international phase of an Application, and that Applicants are to rely on the PCT time limits in such instances.

 

Preliminary Commentary

On the face of it, the proposed amendments to the Patent Rules related to PCT sequence listings, translations, extensions for payment of fees, and discretional waivers for fees in certain circumstances, all appear to be acceptable additions to Canadian patent practice and will largely be to the benefit of Applicants in Canada.

Other amendments to the Patent Rules are also proposed, some of which introduce major prosecution changes, including the introduction of excess claim fees and requests for continued examination. We have a separate article directed to these proposed amendments, which you can view here.

Should you have any questions or concerns, please feel free to contact us.

 

Although the above information is believed to be accurate, it is provided without liability for general information purposes only, and should not be relied on as a substitute for proper professional advice.

 

By: Kimberley Conroy – Technical Advisor – Patents