On October 23, 2014, the Government of Canada introduced and moved for first reading of Bill C-43, A Second Act to Implement Certain Provisions of the Budget Tabled in Parliament on February 11, 2014 and Other Measures, also known by its short title Economic Action Plan 2014 Act, No. 2.
In addition to implementing various tax measures and amending numerous and diverse federal acts, the Bill seeks to make Canada’s Patent Act and Industrial Design Act consistent with the Patent Law Treaty and the Hague Agreement Concerning the International Registration of Industrial Designs, respectively.
Amendments to the Patent Act
The amendments to the Patent Act include easing the requirements for obtaining a filing date for a patent application, requiring that an applicant be notified of a missed due date before an application is deemed to be abandoned and providing that a patent may not be invalidated for non-compliance with certain requirements relating to the application on the basis of which the patent was granted.
Certain specific highlights of the amendments to the Patent Act are as follows:
- A notice regime has been introduced when certain fees are not timely paid — including the patent application fee, patent maintenance fees and the fee for requesting examination — requiring the Commissioner of Patents to send a notice informing the applicant of the non-payment. There is a two month deadline to respond to such a notice by submitting payment of the specified fee and a late fee. [See e.g. amended Section 73(1)]
- Following the notice period, reinstatement of a patent application will still be possible if the failure occurred in spite of “due care” required by the circumstances having been taken. [See e.g. amended Section 73(3)]
- An applicant will have the ability to amend an application by adding material to the specification or by adding drawings within a prescribed period, not later than six months after an application was originally filed. The added material will not affect the filing date of the application if the material was completely contained in an application to which priority was claimed. [See e.g. new Section 28.01]
- The restoration of a right of priority for applications where a request for priority was unintentionally omitted will be possible. Priority may be restored within 14 months of the filing date of the application to which priority is intended to be claimed. This brings Canadian practice into line with the right of restoration of priority provided for in Rule 49ter of the Regulations under the Patent Cooperation Treaty (PCT). [See e.g. new Section 28.4(6)]
- It will be possible to file an application by submitting a statement referring to a previously filed application instead of submitting all or part of a specification or drawings. [See e.g. new Section 27.01(1)]
Amendments to the Industrial Design Act
The Bill also amends the Industrial Design Act to make that Act consistent with the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs and to give the Governor in Council the authority to make regulations for carrying it into effect. The amendments also provide some modernization to the language of the Act. The amendments include provisions relating to the contents of an application for the registration of a design, the requirements to be a registrable design, the grace period for filing a design and the term of an exclusive right for a design.
Certain specific highlights of the amendments to the Industrial Design Act are as follows:
- The required contents of an application for an industrial design registration have changed. For example, the statute has changed the requirement that “a drawing or photograph of the design” be submitted. Instead, the statute now makes reference to the broader term “representation of the design”. [See e.g. amended Section 4(1)(b)]
- The statue borrows from the language of the Patent Act and has replaced the requirement that the design not be “confounding” with a design already registered with a requirement that the design be “novel”. [See e.g. new Section 8.2]
- The “priority date” is defined, again borrowing from the language of the Patent Act, and the grace period for pre-filing disclosures by the applicant has been tied to the priority date rather than the Canadian filing date, which was previously the case. [See e.g. new Section 8.2(1)(a)]
- The term for the exclusive right afforded by an industrial design has been extended from 10 years beginning on the date of registration to the later of that date and the end of 15 years after the filing date. [See e.g., amended Section 10(1)(b)]
The full effect of the these amendments to the Patent Act and the Industrial Design Act remain to be seen following amendments to the Patent Rules and the Industrial Design Rules, which are each expected to be released in the coming months.
To consult the Bill’s information page on the Parliament of Canada website, please see: http://www.parl.gc.ca/LEGISInfo/BillDetails.aspx?Language=E&Mode=1&billId=6732518&View=0.
For further information regarding the upcoming changes to the Patent Act and the Industrial Design Act, please contact:
David Schwartz, Ottawa (deschwartz@smart-biggar.ca)
Ronald Faggetter, Toronto (rdfaggetter@smart-biggar.ca)
Stephan Georgiev, Montreal (spgeorgiev@smart-biggar.ca)
Stephen Ferance, Vancouver (sjferance@smart-biggar.ca)
Alistair Simpson, Calgary (agsimpson@smart-biggar.ca)
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.