Today, the government of Canada published the final version of the new Patent Rules (SOR/2019-251) in Canada Gazette, Part II on July 10, 2019. The new Rules and associated amendments to the Patent Act will come into force on October 30, 2019.
The new Rules substantially alter Canadian patent practice, and include many changes needed to permit Canada to ratify the Patent Law Treaty (PLT).
In this article, we provide a detailed analysis of revised requirements under the new Rules, together with recommendations for best practices.
PCT National Phase Entry Requirements
PCT national phase entry deadline
The new Rules place restrictions on the time for entry into the Canadian national phase.
If the Patent Cooperation Treaty (PCT) international filing date is on or after October 30, 2019, an application can enter the national phase in Canada up to 42 months from the earliest priority date. However, if the application enters the 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 a request that the rights of the applicant be reinstated and a statement that the failure to meet the 30-month deadline was unintentional.
If the PCT international filing date is before October 30, 2019, the current right to enter the Canadian national phase up to 42 months from the priority date merely upon payment of a CAD $200 late fee is retained.
Restoration of priority
Restoration of priority will be available in the Canadian national phase if the PCT international filing date is on or after October 30, 2019, and priority was restored in international phase. This is a significant
change in Canadian practice.
Alternatively, if priority was not restored in the international phase, priority may be restored in the Canadian national phase on an “unintentional” standard, if the PCT international filing date is on or after October 30, 2019 and a request for restoration of priority is submitted within one month after national entry.
Certified copy of priority document
If the PCT international filing date is on or after October 30, 2019, in the rare event that a certified copy of the priority document was not filed in the international
phase, a certified copy must be submitted to the Canadian Intellectual Property Office (CIPO), or made available from a digital library specified by CIPO (which is expected to be the World Intellectual Property Organization (WIPO) Digital Access Service).
Filing fee and translation
Although filing requirements for non-PCT applications are relaxed, to effect entry into the Canadian national phase of a PCT application, it will remain necessary under the new
Rules to pay the filing fee and file an English or French translation of a foreign-language specification by the national entry deadline.
Canadian Patent Application (Non-PCT) Filing Requirements
Obtaining a filing date
Under the new Rules, the filing fee and an English or French translation of the application are no longer required in order to secure a filing date.
If the 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 application will be abandoned if a translation into English or French is not filed within two months of a notice issued by CIPO (no additional late fee). The time for responding to the notice cannot be extended.
The application will be deemed to be withdrawn if the filing fee and a late fee of CAD $150 are not submitted within three months of a notice issued by CIPO.
On or after October 30, 2019, it will be possible to obtain a filing date on a weekend, holiday, or other day when CIPO is closed to the public, by filing the application electronically.
Restoration of priority
New to Canadian practice, priority may be restored on an “unintentional” standard if the Canadian filing date is on or after October 30, 2019. The Canadian application must be filed within 14 months
of the priority date and restoration of priority requested within two months of the Canadian filing date.
Certified copy of priority document
If the Canadian filing date is on or after October 30, 2019, the applicant must submit a certified copy of each priority application or make it available to CIPO from a digital library expected
to be the WIPO Digital Access Service.
If the certified copy or access is not provided within 16 months of the earliest priority date, CIPO will issue a notice requiring the certified copy or access within two months of the date of the notice. No government fee is payable when responding to the notice.
Failure to comply with the notice results in the priority claim being considered to have been withdrawn.
Reference to previously filed application for a patent
If the application is submitted on or after October 30, 2019, the applicant may refer to a previously-filed application rather than submitting a specification to obtain a filing
date.
The non-extendable deadline may be as early as two months from submission of the application.
Within two months of making reference to a previously-filed application, a copy of the previously-filed application must be filed or be made available from a digital library expected to be the WIPO Digital Access Service.
Addition to specification or addition of a drawing based on priority application
If the application is submitted on or after October 30, 2019, the application may be corrected by adding a missing part of the specification or adding
a drawing from a priority application.
The non-extendable deadline may be as early as two months from submission of the application.
Maintenance Fees
Pending applications
In a significant change to Canadian practice, on or after October 30, 2019, anyone can pay a maintenance fee on a pending application. Currently, generally only the Canadian agent can pay a maintenance fee on
a pending application.
If the original deadline is missed for a maintenance fee due on or after October 30, 2019, CIPO will issue a late notice. The application will be abandoned if the missed maintenance fee and a late fee of CAD $150 are not paid within the later of two months from the late notice and six months from the original deadline.
See below for heightened “due care” reinstatement requirements and third party rights under the new Rules.
Granted patents
As before, under the new Rules, anyone can pay a maintenance fee on or after October 30, 2019.
However, the procedure relating to missed fee payments will change. If a maintenance fee payment due on or after October 30, 2019 on a granted patent is missed, CIPO will issue a late notice. The patent will be deemed to have expired on the original maintenance fee deadline if the missed maintenance and a late fee of CAD $150 are not paid within the later of two months from the late notice and six months from the original deadline.
See below for heightened “due care” late payment requirements and third party rights under the new Rules.
Examination
Deadline for requesting examination of an original application
Presently, examination must be requested within five years of the PCT international filing date or Canadian filing date. This term is shortened under the new Rules.
If the PCT international filing date or Canadian filing date is on or after October 30, 2019, examination must be requested within four years from the international filing date or Canadian filing date.
Deadline for requesting examination of a divisional application
Presently, examination of a divisional application must be requested within the later of five years from the original filing date and six months from submission of the
divisional application. These terms are shortened under the new Rules.
If a divisional application has a parent (i.e. original) filing date before October 30, 2019 but a “presentation date” (i.e. actual submission date) on or after October 30, 2019, examination must be requested and the examination fee paid within the later of five years from the original filing date and three months from the presentation date of the divisional application.
If a divisional application has a parent (i.e. original) filing date on or after October 30, 2019, examination must be requested and the examination fee paid within the later of four years from the original filing date and three months from the presentation date of the divisional application.
Abandonment for failure to request examination
If the deadline for requesting examination is on or after October 30, 2019, in the event the examination request and fee are not submitted by the original deadline, CIPO 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.
See below for heightened “due care” reinstatement requirements and third party rights under the new Rules.
Examiner’s Reports
Examiner’s Reports issued before October 30, 2019 have a six-month term for response (three-month term if prosecution is expedited under the “special order” procedure). All Examiner’s
Reports issued on or after October 30, 2019 will have a four-month term for response.
The maximum term for response to an Examiner’s Report is six months under either the old Rules or new Rules. If a shorter term has been set, an extension of time may be obtained if a request is made prior to the expiry of the original response term and if the Commissioner of Patents considers that the circumstances justify the extension. A government fee of CAD $200 is required. Obtaining an extension will result in loss of entitlement to expedited examination under the “special order” procedure.
Allowance
Final (i.e. issue) fee
The final fee is due six months from the date of a Notice of Allowance issued before October 30, 2019. This term is shortened under the new Rules, and the final fee is due four months from the date of a Notice of Allowance issued on or after October 30, 2019. These terms cannot be extended.
Excess page fee
The excess page fee relating to a sequence listing in electronic form is removed under the new Rules. If a Notice of Allowance issued on or after October 30, 2019, 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 the final fee deadline is before October 30, 2019, prosecution can only be re-opened by not paying the final fee so the application becomes abandoned. Upon reinstatement, the application
is subject to amendment and further examination.
The new Rules introduce a simplified procedure. If the notice of allowance issues on or after October 30, 2019, 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.
If the notice of allowance issues before October 30, 2019 but the final fee deadline is on or after October 30, 2019, prosecution can be re-opened by not paying the final fee and then reinstating the application. It appears that prosecution potentially could also be re-opened under the new procedure, i.e. (within four months of the notice of allowance) paying the CAD $400 fee to have application withdrawn from allowance.
Reinstatement of Abandoned Applications and Reversal of Deemed Expiry
The reinstatement procedure largely remains the same under the new Rules. In most cases, if a prosecution deadline is missed and an application is abandoned, the application may be reinstated within 12 months of the date of abandonment by: (1) requesting reinstatement; (2) paying a government fee of $200; and (3) taking the action that should have been taken to avoid abandonment.
But the reinstatement procedure changes under the new Rules with respect to maintenance fees and requesting examination.
If (1) an application becomes abandoned on or after October 30, 2019 for failure to pay a maintenance fee, or (2) becomes abandoned on or after October 30, 2019 for failure to request examination and more than six months from the original examination deadline has passed, the application may only be reinstated if the Commissioner of Patents determines that the failure to pay the maintenance fee or request examination occurred in spite of the due care required by the circumstances having been taken.
The same due care requirement applies to reversal of deemed expiry of a granted patent for failure to pay a maintenance fee and late fee in response to a missed maintenance fee notice.
A further notable change under the new Rules is that the deadline for reinstating an application cannot be extended, a procedure that was occasionally used in the past.
Transfers (Assignments)
Under the old Rules, an assignment and CAD $100 fee must be submitted to record a transfer.
Under the new Rules, after October 30, 2019, a transfer will be recorded at the request of the applicant or patentee upon payment of $100 fee. A transfer will be recorded at the request of the transferee of an application or patent upon submission of evidence of the transfer satisfactory to the Commissioner and payment of $100 fee.
Under the new Rules, the current owner can record transfer on request, without submission of assignment, but there is no reduction in the government fee. Effectively, if someone other than the applicant/patentee wishes to record a transfer, they will need to file an assignment (or other transfer document) meeting formal requirements established by CIPO.
Correction of Errors
The Rules in force prior to October 30, 2019 provide only limited guidance with respect to correction of errors in patent applications or granted patents. Requests are often submitted to correct “clerical” errors under section 8 of the Patent Act, a provision which will be repealed on October 30, 2019. 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 is determined to be clerical, CIPO has discretion whether to enter the correction, and potential prejudice to the public is considered. There are no time limits under section 8, and clerical errors can be corrected before or after grant.
Under the new Rules, the 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.
Errors in priority claims
Irrespective of when an application is filed, on or after October 30, 2019, an error in the filing date of a priority application as recited in a priority
claim may be corrected if a request is submitted before a period that usually will expire on the earlier of 16 months from the corrected priority date and 16 months from the uncorrected priority date.
Irrespective of when an application is filed, on or after October 30, 2019, an error in the name of a country or office of filing or in the number of a priority application as recited in a priority claim may be corrected on request submitted on or before the day on which the final fee is paid.
Errors in naming or identifying applicants and inventors
On or after October 30, 2019:
An error in the identity of an applicant in an application other than a PCT national phase application may be corrected on or before the publication date, and before a transfer is submitted for recordal.
An error in the identity of an applicant in a PCT national phase application may be corrected within three months after national phase entry and before a transfer is submitted for recordal.
An error in the identity of an inventor in a may be corrected prior to allowance.
An error in the name of an applicant or inventor (no change in actual identity) may be corrected on or before payment of the final fee.
Other errors
Errors by CIPO – Errors made by CIPO in the patent (e.g. owner or inventor name, priority claim) or in the specification or drawings, may be corrected if a request is made not later than 12 months from grant of the patent and if, from the documents that were in the possession of CIPO on date of grant, it is obvious that something other than what appears in the patent, the specification, or the drawings was intended, and that nothing other than the correction could have been intended. No government fee is payable.
Errors by patentee – On the request of the patentee not later than 12 months from grant of the patent, and payment of a $200 fee, the Commissioner must correct:
(a) an error in the name of the patentee or an inventor if the correction does not change their
identity; or
(b) an error in the specification or the drawings, if from the specification or the drawings at the time of grant it would have been obvious to a person skilled in the art or science to which the patent pertains that something other than what appears in the specification or the drawings was intended, and that nothing other than the correction could have been intended.
Third Party Rights
The new Rules introduce a system of “third party rights” to practice a patented invention.
There are no third party rights to practice a patented invention associated with prosecution deadlines missed before October 30, 2019.
But, on or after October 30, 2019, if the applicant or patentee fails to pay a maintenance fee on time, or the applicant fails to request examination and pay the examination fee on time, third party rights to practice the invention post-grant may arise. Third party rights may arise starting from six months after the missed maintenance fee deadline or missed examination request deadline.
Notably, the third party rights provisions are independent of the abandonment/reinstatement procedure. Thus, third party rights may apply during a period after a maintenance fee or examination fee deadline has been missed, but the application has not yet become abandoned.
Pursuant to the third party rights provisions, if during a prescribed period, a person, in good faith, committed an act that would otherwise constitute an infringement of that patent, that act is not an infringement of the patent. Furthermore, if during the prescribed period, a person, in good faith, committed an act that would otherwise constitute an infringement of that patent or made serious and effective preparations to commit that act, it is not an infringement of the patent if the person commits the act after that period.
Recommendations
The following are some general recommendations for safely and effectively prosecuting Canadian patent applications under the new Patent Rules:
- Plan ahead now for the new stricter 30-month deadline for entering the Canadian national phase, even though the new requirements will apply only to PCT applications with an international filing date on or after October 30, 2019.
- Ensure that certified copies of priority applications are filed during the international phase of PCT applications. But if they are not, highlight this at the time of national entry.
- Provide certified copies of priority applications at the time of filing Canadian (non-PCT) patent applications, or make them available at the time of filing under the WIPO Digital Access Service.
- If restoration of priority is required, highlight this immediately at the time of filing or national entry in Canada.
- Ensure that maintenance fee and examination request deadlines are not missed in view of the due care standard that may apply to reinstate an application or reverse deemed expiry of a patent, and third party rights to practice the invention that may arise.
- If an application contains a very long sequence listing, consider taking steps to avoid allowance prior to October 30, 2019, so that the excess page fee will be minimized.
- Check specifications and bibliographic data promptly upon filing, allowance, and grant, in view of the time-limited opportunities to correct errors.
If you have any questions about these changes and how to best prepare for them, please contact a member of our Patents practice group.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.