An updated version of this article is available, view the changes to Canada's patent practice here.
On Dec. 1, 2018, the Canadian government published for public consultation an updated version of its proposed amendments to the Canadian Patent Rules. The consultation period runs from Dec. 1, 2018, to Dec. 31, 2018, and follows a consultation process performed in respect of an earlier draft of the Rules published in August 2017. The updated version of the Rules is based on those published in 2017, and together with complementary amendments to the Canadian Patent Act, represent a dramatic change to Canadian patent practice.
Tightening of Timelines, including Elimination of Entitlement to 42 Month National Phase Entry
Under current practice, a response to an Office Action is generally due six months from the mailing date of the Office Action, examination must be requested on an application within five years of its filing date, and the Final Fee must be paid for an application within six months of the mailing date of the Notice of Allowance.
Under the new Act and Rules, a response to an Office Action is generally due four months from the mailing date of the Office Action, examination must be requested on an application within four years of its filing date, and the Final Fee must be paid within four months of the Notice of Allowance. While the four month deadline for responding to an Office Action may be extended by paying a fee at the discretion of the Patent Office, the Final Fee deadline is non-extendible.
Additionally, under current practice a patent applicant may enter the Canadian national phase between 30 and 42 months of an international application's earliest priority date as of right by paying a late fee of $200. The new Act and Rules eliminate this right. While entry between 30 and 42 months remains possible, an applicant must satisfy the Patent Office that the failure to enter by the 30 month deadline was unintentional, in addition to paying a reinstatement fee of $200.
Abandonment and Reinstatement
Under current practice, a patent application that goes abandoned for failure to perform an action by a deadline goes abandoned immediately following that deadline, and may be reinstated as of right within one year from that deadline by performing the action that was due at the deadline and by paying a reinstatement fee.
Under the new Act and Rules, abandonment does not necessarily occur immediately following a missed deadline, nor is reinstatement as of right necessarily available. Instead, the timing and nature of the abandonment and reinstatement depends on the nature of the missed deadline.
For example, failure to respond to an Office Action and failure to pay a Final Fee by a deadline still result in immediate abandonment following that deadline, and reinstatement remains available as of right within 12 months of that deadline.
In contrast, failure to pay a maintenance fee for a pending application results in abandonment the later of six months from the missed deadline and two months from the date of a notice from the Patent Office requiring payment. Once abandoned, the application may be reinstated as late as 18 months from the date the maintenance fee was due only by establishing that abandonment occurred despite the applicant having taken due care. The new Act and Rules do not provide any guidance as to what would qualify as due care, although informally the Office has stated that the threshold will be high. The new Act and Rules establish an analogous regime for reinstating a patent that has lapsed for failure to pay a maintenance fee.
Similarly, failure to request examination will result in abandonment two months after the date of a notice from the Patent Office following the missed examination request deadline. Notwithstanding this, an applicant may reinstate the application and request examination as of right within six months of the examination request deadline. If the fee and request are not filed within six months of the deadline, then the applicant will only be able to reinstate by establishing that the abandonment occurred despite due care, and no later than one year from abandonment.
Third Party Rights
Tied to the new due care requirement for reinstating an application abandoned (or a patent lapsed) for not having paid a maintenance fee or not having timely requested examination, the new Act and Rules introduce the concept of third party rights. These rights limit liability faced by third parties if they undertake actions that would otherwise lead to infringement during a period when an application or patent is abandoned or lapsed and the applicant or patentee needs to satisfy the due care threshold for reinstatement. The period starts six months from the deadline for paying the maintenance fee or requesting examination, which is when the due care requirement begins. A third party will not be liable for what would otherwise be infringing acts committed in good faith during this period or resulting from "serious and effective preparations" the third party makes during this period. Generally speaking, this period ends upon the earlier of the patent or application being reinstated, or when a patent grants from the abandoned application.
Reduced Requirements to Obtain a Filing Date
Under current practice, in order to obtain a filing date for an application other than a PCT national phase application, an applicant needs to pay the filing fee and provide a document in English or French that on its face appears to describe an invention.
Under the new Act and Rules, it will be possible to submit a translation of a specification into English or French after filing. Further, by paying a $150 late fee, it will be possible to defer paying the filing fee. If the filing fee is not paid at filing, the Patent Office will issue a notice requesting payment and the applicant will have up to three months from the date of that notice to pay the filing fee and late fee without loss of filing date.
It will not be possible, however, to defer paying the filing fee when requesting national entry into Canada. The basic national fee, which is identical to the filing fee for a non-PCT national phase application, will need to be paid in order to secure national entry into Canada subject to an exception where an applicant makes an unsuccessful attempt to pay the fee an entry.
Adding Matter to an Application
An applicant cannot under current practice add new matter to a patent application, regardless of whether that matter is contained in an application's priority document.
In contrast, the new Act and Rules permit new matter to be added to a non-PCT national phase application in certain circumstances. Where an application is missing part of the specification or drawing referred to in the specification, the applicant may add that missing part to the specification. An applicant may do this voluntarily, in which case the deadline to do so is two months from the earliest date on which the Patent Office receives any document or information required for establishing a filing date. Alternatively, the Patent Office may issue a notice requisitioning the missing part from the applicant, in which case the deadline will be two months from the date of that notice. The filing date of the application will be no earlier than the date the applicant submits the missing part, unless the missing part was contained entirely within the priority document in which case the missing part will not prejudice the filing date.
It is not currently possible to obtain a filing date in Canada on a day the Patent Office is not open for business, such as the weekend.
Under the proposed new practice, using electronic filing an applicant may file a patent application or any other document with the Patent Office and secure a filing date that same day, regardless of whether the Office is open for business. This may be useful to secure a filing date before a public disclosure of an invention is made, or to secure a filing date within one year of an applicant's own public disclosure so as to be able to rely on the Canadian grace period.
Under current practice, an applicant is not required to provide a certified copy of a priority document to the Patent Office unless requisitioned to do so by the Office, which the Office rarely does. Additionally, Canada does not permit restoration of the right of priority, regardless of whether the Canadian application is a national phase application and priority was restored for the corresponding PCT application during the international phase.
Under the new regime, applicants will be required to either submit a certified copy of a priority document to the Patent Office or to make a certified copy available through a recognized digital library for priority claims made to a non-Canadian priority document. This requirement will be waived if the application is a national phase application and the applicant submitted a copy of the priority document during the international phase. Furthermore, restoring the right of priority will be possible in Canada without a government fee so long as the applicant can establish that priority requires restoring because of an unintentional error. An applicant will have two months after filing to request restoration of priority for a non-PCT national phase application, and one month after national entry for a PCT national phase application.
Amendments after Allowance
Under current practice, an applicant who wishes to amend an application in a manner that would necessitate a new search after it has been allowed and before the Final Fee has been paid must allow the application to go abandoned by not paying the Final Fee and, concurrent with reinstatement, make the amendment. Reinstating has the side effect of re-opening prosecution, thereby allowing the applicant to substantively amend the application.
Under the new regime, an applicant may re-open prosecution as of right by paying $400 to the Patent Office and requesting that the Notice of Allowance be deemed never to have been sent. This allows an applicant to re-open prosecution at any time after the Notice of Allowance is mailed, as opposed to having to wait four months when the Final Fee is due to allow the application to go abandoned. An applicant who wants to amend the application in any manner aside from correcting an obvious error will need to use this process.
Under current practice, in order to record a change of name or a change of ownership in the Patent Office, an applicant needs to submit for recordation the document evidencing or effecting that change and pay a $100 fee. Any documents that are recorded must comply with Canadian practice. For example, notwithstanding that an assignment need not be witnessed under Canadian law to be effective, an unwitnessed assignment cannot be recorded in the Patent Office without other evidence to establish it is suitable for recordation, such as an affidavit or Notice of Recordation from the United States Patent and Trademark Office.
While recording documents will still be an option under the new Act and Rules, the Patent Office is eliminating in many instances the requirement to submit those documents in order to reflect a change at the Office. An applicant/patentee that is also a transferee may record a transfer by filing a request and providing the name and postal address of the transferee. A transferee other than the applicant/patentee will be able to record a transfer without submitting the actual transfer document but will need to provide evidence satisfactory to the Patent Office, such as an affidavit. An applicant/patentee that wishes to record a name change may similarly do so on request and by paying a fee. The $100 fee remains payable for recording transfers under the new regime, regardless of whether a document effecting the transfer is recorded.
Unlike the Rules published in August 2017, the current Rules provide a detailed set of transitional provisions. An Office Action or Notice of Allowance mailed before the coming-into-force (CIF) of the Rules will benefit from the longer prosecution timelines (six months for filing an Office Action response and for paying the Final Fee) as opposed to the shorter four month deadline under the new Rules. An application that is abandoned before CIF, or that is abandoned after CIF on the basis of a failure to comply with a requisition or notice dated before CIF, will benefit from the ability to be reinstated as of right under current practice without having to establish that abandonment occurred despite due care. Analogously, third party rights will not apply to any period of abandonment that begins before CIF or that occurs after CIF as a result of a failure to comply with a requisition or notice dated before CIF.
Importantly, the transition provisions clarify that an international application having an international filing date before CIF will benefit from the current practice of being able to enter the Canadian national phase within 42 months of its earliest priority date as of right. Similarly, an application that is filed in Canada before CIF will be entitled to file a request for examination as late as five years from filing as permitted under current practice, as opposed to the shorter four years from filing under the new practice.
The amended Act and Rules introduce significant changes to Canadian patent practice. These changes are expected to take effect in late 2019. While this article highlights certain salient changes that are coming to Canadian practice, in aggregate the changes are of sufficient scope that we recommend you contact a member of the Gowling WLG patent prosecution team to discuss how they may affect your Canadian patent filing and prosecution strategy in more detail.
This article was updated on Dec. 4, 2018 with a correction.