Playing by the New (Patent) Rules: A Guide to Upcoming Changes to Canada’s Patent Procedures

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Autumn is known as a season of change, and this is certainly holding true for Canada’s patent system. On October 30, 2019, a host of amendments to Canada’s Patent Rules will come into effect to implement previously enacted amendments to Canada’s Patent Act and to bring Canada into compliance with requirements under the Patent Law Treaty (PLT). These changes will require modifications to current filing and prosecution strategies involving Canadian patent applications.

NATIONAL ENTRY DEADLINE FOR PCT APPLICATIONS

One of the more important changes to the Rules is the elimination of the right of applicants to file a late national entry.

Under the current Rules, an applicant enjoys the right to file a Patent Cooperation Treaty (PCT) national entry application in Canada within 12 months after the prescribed 30-month national entry deadline (running from the earlier of the filing or priority date of the international application). The only additional requirement for making this late entry is the payment of a C$200 government fee.

Under the new Rules, the current late entry provision will no longer be available as a matter of right. Although a national entry can still be made within 12 months after the 30-month deadline, the applicant will need to do so under a procedure for “reinstatement of rights”, which requires, in addition to a reinstatement fee of C$200, a statement showing that the failure to meet the 30-month deadline was unintentional. The Rules do not provide any guidance as to what circumstances would meet this test. This new procedure will apply to national entries based on international applications filed on, or after, October 30, 2019.

Practice tip: For international applications filed on, or after, October 30, 2019, applicants cannot rely on a national entry deferral and should plan to enter the national phase in Canada by the 30-month deadline.

REQUIREMENT FOR TRANSLATIONS OF APPLICATION

Under the current Rules, a Canadian application must be filed in English or French, regardless of whether the application is a national filing or a PCT national entry filing.

The new Rules allow an applicant to establish a filing date for a national Canadian application by filing a description in any language. In such case, the commissioner will issue a notice requiring a translation of the description into English or French to be filed within two months.

For PCT national entry cases, however, the new Rules still require that the application must be in English or French. Moreover, where the national entry is made using a translation, the new Rules stipulate that such translation replaces the text of the international PCT application. Thus, in the event of error in preparing the translation, reliance on the parent foreign language text may not be possible.

Practice tip: Extra care should be taken when preparing translations for filing in Canada, particularly for national entry cases.

PRIORITY CLAIMS

Currently, where priority is claimed, the submission of a certified copy of the priority document is not a requirement for filing of an application. Under the new Rules, however, the filing of a certified copy of the priority document will be mandatory. This requirement can be met in one of the following three ways: 

  1. The applicant may allow the Canadian Intellectual Property Office (CIPO) to access the priority document through the Digital Access Service (DAS) managed by the World Intellectual Property Organization. This is possible in cases where the priority country subscribes to the DAS.
  2. For PCT national entry cases, the filing of the priority document in the international application will be sufficient for the purposes of Canada.
  3. In situations where the above two options are unavailable or not applicable, the applicant will need to file a certified copy of the priority document.

This requirement must be met within the later of four months from the Canadian filing date, 16 months from the priority date, and for PCT cases, the national entry date. The new Rules allow for submitting a certified copy after the prescribed deadline but require that a request for the certified copy must have been filed with the foreign patent office before such deadline.

It is also noted that, should the priority claim contain an error (e.g., an incorrect serial number or filing date), the new Rules stipulate that the correction must be made within a calculated period of time.

Practice tip: The priority document(s) should be made accessible to the CIPO, or a certified copy of the priority document obtained, prior to the filing date in Canada. 

PRIORITY RESTORATION

The new Rules will also introduce a provision for an applicant to restore the right to a priority date for applications filed after October 30, 2019. For priority restoration, the applicant must submit a request for priority restoration within two months of the filing date in Canada or for PCT cases, within one month of the national entry date in Canada and must state that the failure to claim priority by the prescribed deadline was unintentional.

Practice tip: Applicants should carefully review the priority information prior to filing in Canada and act quickly where any restoration of priority is found to be needed.

CORRECTIONS TO APPLICANT OR INVENTOR

Under the new Rules, strict requirements will be imposed for correcting errors in the naming of applicants or inventors.

Where the identity of an applicant is incorrectly identified in the application, a request to correct the error must be filed before filing a request to record a transfer (i.e., assignment) and within three months of the national entry date, for PCT applications, or before the publication date, for national applications.

Corrections to the identity of the inventor(s) can be requested at any time up to the allowance of the application. In this regard, guidance from the CIPO emphasizes that the inventorship of a pending application may need to be updated based on amendments to the claims during prosecution.

Corrections to the name of the applicant and/or inventor can be requested at any time up to the payment of the final fee.

Practice tip: In view of the strict deadlines for correcting errors in the names of the applicant and/or inventor, the accuracy of this information should be carefully reviewed ideally prior to filing the application. The applicant and inventor information contained in the filing certificate should also be carefully reviewed.

It is also recommended to defer filing of an assignment until these details are verified. Where expedited prosecution is requested, publication of the application must be requested if that has not already occurred. Therefore, in such cases, extra care must be taken prior to requesting advanced examination to ensure that all applicant and inventor information is correct. The inventorship of the application should be reviewed upon filing of every amendment to the claims. A final confirmation of the above information should be made prior to payment of the final fee.

CORRECTIONS TO PATENTS

Under the current Rules, corrections to clerical errors in a granted patent may be requested at any time. Under the new Rules, however, the ability to correct obvious errors in patents will be restricted to requests that are filed within 12 months of grant, regardless of whether the error was made by the CIPO.

Practice tip: Given the strict timeframe for requesting corrections to patents, it is prudent that all patent grants be carefully reviewed as soon as possible after issuance to identify errors that may need correction.

SHORTENED PROSECUTION TIMEFRAMES

Currently, examination of patent applications must be requested within five years of the filing date (the international filing date in the case of PCT national entries). Further, examiner’s reports are generally issued with a six-month response deadline and the deadline to pay the final fee upon issuance of a notice of allowance is also six months.

The new Rules aim to shorten prosecution times by requiring examination to be requested within four years of the filing date and requiring responses to examiner reports and final fees after allowance to be submitted within four months. The Rules include a provision for extending the response period for examiner reports by two months with payment of a C$200 fee and by providing a statement explaining the circumstances necessitating the extension. It should be noted that this extension is not available as a matter of right and is awarded only if the commissioner considers that the extension is justified.

In addition, in its 2017–2022 business plan, the CIPO set a goal for issuing a first examiner’s report within 10 months of examination being requested and completing prosecution of patent applications within 24 months.

Practice tip: Be ready for fast-tracked procedures before the CIPO. It is recommended that all examiner’s reports and notices of allowance be processed and attended to promptly. Also, due to the uncertainty surrounding extensions of time, and the fact that such extension must be requested before the deadline, it is recommended that all examiner reports be responded to by the prescribed four-month due date.

ABANDONMENT AND REINSTATEMENT/REVERSAL OF DEEMED EXPIRY

Under the current Rules, an application that is abandoned for any reason may be reinstated as a matter of right within 12 months by filing a request to reinstate the application and paying a reinstatement fee of C$200. This provision has been used by applicants effectively as an extension of time.

After October 30, 2019, the current reinstatement provision will remain applicable for applications abandoned for failure to respond to an examiner’s report. However, where a deadline for paying a maintenance fee or requesting examination is missed, the procedure will change.

Under the new Rules, if a maintenance fee or examination request deadline for a pending application is missed, the CIPO will be required to issue a notice advising that the application will be abandoned unless the missed action, along with payment of a C$150 late fee, is attended to within two months of the date of the notice or, in the case maintenance fees, the later of two months from the date of the notice and six months after the missed deadline. If an application is deemed to be abandoned, it may be reinstated within 12 months upon requesting reinstatement (with a reinstatement fee) and providing sufficient details to satisfy the commissioner that abandonment occurred despite the exercise of “due care”.

As with pending applications, non-payment of a maintenance fee for a granted patent will result in a notice being issued by the commissioner stipulating the deadline to pay the missed fee, along with a late fee, within the later of two months from the notice and six months from the missed deadline. Failure to take the corrective action will result in the deemed expiry of the patent. Such deemed expiry can be reversed, however, if a request is filed within 12 months and the patentee satisfies the commissioner that the deemed expiry occurred despite the exercise of due care.

The new Rules also introduce the ability for third parties to claim rights under the patent for activities commencing after the abandonment date.

Practice tip: It is recommended that all steps be taken to ensure that maintenance fees and examination requests are submitted by the prescribed deadlines. It is also recommended that clear documentation be retained relating to any maintenance fee or examination request so that enough evidence can be gathered should a showing of due care be needed.

AMENDMENTS AFTER ALLOWANCE

Currently, amendments after allowance are permitted, upon payment of a fee, where the proposed amendment does not necessitate a further search by the examiner. This amendment route is often used to enter new dependent claims and/or consistory clauses in the description. In the event of any substantive amendments post-allowance, the applicant’s only recourse is to abandon the application by failing to pay the final fee and then reinstating the application, at which point the amendments may be submitted. Given that the final fee is due six months after the date of allowance, entering such amendments involves a considerable delay.

The new Rules provide two avenues for amending an application after allowance. First, where the amendment serves to correct obvious errors, a request for such amendment may be submitted before payment of the final fee. No additional fee is required for requesting corrections of obvious errors.

Second, in situations where amendments other than obvious error corrections are desired, a request must be filed prior to payment of the final fee (and within four months of the date of allowance) to withdraw the application from allowance and return it to examination. A C$400 fee is required for this request. Once withdrawn from allowance, the desired amendment can be submitted, and the application will be returned to the examiner for further review.

Practice tip: While the new Rules simplify the procedure for entering substantive amendments to applications, entering amendments that do not require further searching will require reopening of examination. It is therefore recommended to ensure that all claims and other amendments to the specification be made prior to allowance.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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