Canadian patent practice: major changes to take effect on October 30, 2019

• English

Beginning October 30, 2019, the new Patent Act and Rules will bring Canada into compliance with the Patent Law Treaty and significantly change current Canadian patent practice. Here are some key changes that you need to know about:

Late PCT National Phase Entry

Under the new rules, late national phase entry will require more effort. Advantageously, applicants will still be able to enter the National Phase in Canada up to 42 months after the earliest priority date, but now must:

• Pay a $200 (CAD) reinstatement fee
• Submit a request for the reinstatement of rights
• Provide a statement that the failure to meet the 30-month deadline was unintentional.

Restoration of priority

The current rules prohibit priority claims made more than 12 months after the filing date of the earlier application. Under the new rules, PCT applicants may obtain restoration of priority in the Canadian national phase if (i) priority was restored during the international phase or (ii) the applicant submits a request for restoration of priority within one month following the date of national entry.

For non-PCT applications, the filing date must be within 14 months from the earliest priority date. Applicants who fail to meet the deadline must meet the "unintentional" standard, and the applicant must make the request to restore priority within two (2) months following the Canadian filing date and no more than 16 months following the earliest priority date.

Certified copies of priority documents

The current rules do not require a certified copy of the priority document; that will change under the new rules. Beginning October 30, failure to submit a certified copy of the priority document at the time of filing the national phase application will prompt an Office Notice from the Canadian Patent Office. PCT applicants must submit a certified copy of the priority document within two (2) months following the date of the Office Notice, unless the priority document was filed during the International Phase.

For non-PCT applications, certified priority documents must be provided within 16 months of the earliest priority date. Failure to meet the deadline will prompt an Office Notice; the applicant will then have two (2) months from the date of the notice to provide a certified copy.

Translations and filing fees

There is no change to the translation or filing fee requirements for PCT National Phase Entry, but under the new rules, non-PCT applicants will no longer be required to submit an English or French translation of the application in order to secure a filing date. Under the new rules, the application can be submitted in any language. For non-PCT applicants, payment of the filing fee will also not be necessary to obtain a filing date. Applicants will still need to provide an English or French translation and a filing fee within the two or three-month deadline set by the Canadian Intellectual Property Office (CIPO).

The current rules require payment of the filing fee at the time of filing. The new rules relaxes this requirement for non-PCT applications and applicants can take up to three months to pay, but a $150 late fee will be incurred. Applicants who fail to pay within three (3) months will have their applications withdrawn.

Maintenance fees 

The new rules make it easier to pay the maintenance fees. Currently, only the Agent of Record can pay maintenance fees for pending applications; anyone can pay under the new rules. CIPO will also issue a late notice if the deadline is missed for both pending and granted patents, but the major distinction is that the late fee of $150 must be paid within (i) two months following the late notice and (ii) six months from the original deadline. This is a significant change from the current rules, which provides for a late fee of $200 and up to 12 months to make the payment.

Requesting examination; response to Office Actions

The new rules shorten the deadline for requesting an examination from five years from the filing date to four. The deadline for requesting an examination of a divisional application has been changed, too. Currently, the request must be made at the later of five years from the original filing date or six months from the divisional application submission. Under the new rules, the request must be made at the later of four years from the original filing date or three months from the divisional application submission (if both the parent application and the divisional application have filing dates after October 30, 2019). During the transitional phase, divisional applications filed on or after October 30, with a parent filing date of before October 30, can request examination at the later of five years from the parent filing date or three months from the divisional application submission. Failure to request examination will now prompt a late notice; if the examination request, filing fee, and late fee are not submitted two months after the notice date, the application will be abandoned. Reinstatement of such abandoned application may be difficult, as CIPO will require proof of "due care," or justifiable circumstances that necessitated missing the deadline. It is also important to note that the Federal Court may reverse a due care reinstatement.

Under the current rules, examiner’s reports have a six-month term for a response; under the new rules, the term for response has been shortened to four months. The time can be extended to a maximum of six months with a $200 fee if a request is made prior to the end of the original four-month term and the Commissioner of Patents considers that the circumstances justify the extension.

Third-party rights

Under the new rules, applicants and patent owners are incentivized to pay maintenance fees and request examination in a timely manner. If the applicant fails to pay a maintenance fee or to request examination within six months of the original deadline, third-party rights may apply even though the application or patent has yet to be abandoned. During the time period between the missed deadline and abandonment, a third party will be permitted to commit or prepare to commit acts that would otherwise be considered patent infringement, including practicing the claims of the patent without potential consequences.

Final fees - Allowance

The deadline for payment of final fees has been shortened from six months from Notice of Allowance to four months.

Finding the right partner to navigate rule changes such as these is crucial for successfully registering and maintaining your patents in Canada and throughout the world. Dennemeyer & Associates is here to help you stay in compliance with these new rules and all other agency rules. Our attorneys provide legal guidance on diverse IP matters, ranging from patents and trademarks to risk evaluation, global portfolio management and monetization strategies.