Changes to Canada's patent practice

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The 2019 Patent Rules will apply to all applications with certain provisions differing depending on an application's filing date or presentation date at CIPO. For example, many filing related changes only apply to applications filed on or after October 30, 2019.  The amendments fall generally in two categories: Harmonization and Timelines, as follows:

  1. Harmonization: Changes that implement the PLT and harmonize practice in Canada with other jurisdictions. These changes include:
    1. National phase applications to be filed by the 30-month deadline, with extensions only in cases of an unintentionally missed deadline, as opposed to the current 42 months as of right deadline;
    2. As in US, no need to pay the filing fee to obtain a filing date for non-NPE applications (NPE applications still require basic national fee to be paid, as in the US);
    3. Translation may be provided after filing by paying a fee for non-NPE applications (NPE applications require translation by 30 months);
    4. Missing parts: applicants can incorporate matter from a priority document into an application without loss of the filing date; and, can otherwise add matter to an application within 2 months of an attempt to gain filing date or a Notice from office;
    5. Electronic filing will allow filing dates to be secured on days the Office is officially closed;
    6. Applicants can amend after allowance without waiting to let the application go abandoned and then reinstating; instead, applicants can amend after allowance with the payment of a fee;
    7. Unwitnessed transfers to an applicant can be recorded without further formality, in contrast to current practice that requires additional evidence to effect recordal of unwitnessed assignments (e.g., Notice of Recordation);
    8. Priority claims must be supported with a certified copy or an available digital library copy.
       
  2. Timelines: A general tightening of patent timelines. These changes include:
    1. Office Action response deadline: default deadline shrinking to 4 mos. from 6 months (extensions of time are available);
    2. Final Fee deadline: going to 4 months from Notice of Allowance from 6 months (no extensions);
      1. For both Office Action response and Final Fee deadlines, current 12 month reinstatement as of right remains
    3. Examination Request deadline: going to 4 years from filing from 5 years, for applications having a PCT or Canadian filing date on or after
      October 30, 2019;
      1. Reinstatement currently possible as of right up to 12 months from missed Examination Request deadline; late payment deadline is changing to 6 months, following which the new due care standard will apply;
    4. Maintenance fees: losing reinstatement as of right up to 12 months from missed deadline; late payment deadline is changing to 6 months; generally speaking due care standard will apply thereafter until 18 months;
    5. For both examination request and maintenance fee abandonments, new third party rights apply when application/patent can only be reinstated by satisfying due care standard.