Canada's new Patent Act and Patent Rules with Lisa Thorne

Canada’s new Patent Rules are coming into effect on October 30, 2019 and will apply to applications with filing dates on or after this date, as well as applications that are currently pending before the Canadian Patent Office.

In summary, the changes fall into two categories: first, changes that implement the Patent Law Treaty, these are changes that will, in general terms, bring the Canadian patent system into closer alignment with the United States system.  The second category of changes involve a general tightening of what are still generous prosecution timelines.

First, we will discuss the changes that implement the Patent Law Treaty.

Perhaps the most important change is that national phase applications will need to be filed by the 30-month deadline, with extensions only in cases of an unintentionally missed deadline, as opposed to the current 42-month deadline as of right. 

As in the United States, there will be no need for applicants to pay a filing fee for non-National Phase Entry applications in order to obtain a filing date. For National Phase Entry applications, Applicants will still be required to pay a basic national fee at the time of filing.

The New Rules will provide a mechanism for incorporating missing parts into an application.  For non-National Phase Entry applications, matter from a priority document can be incorporated into an application without loss of the filing date.  Alternatively, the applicant has 2 months to file the missing part, and the filing date will be adjusted accordingly.

After October 30, applications may be filed electronically.  This will allow filing dates to be secured on days when the Patent Office would otherwise be closed, such as on weekends or public holidays.

The new Rules will alter the mechanism for amendments after allowance in Canada.  Applicants will now be able to amend their applications within four months of receiving a Notice of Allowance and upon payment of a fee.  There will no longer be a need for Applicants to let their applications go abandoned in order to file an amendment after allowance.    

Under current practice, transfers cannot be recorded without additional evidence, such as a Notice of Recordation from the USPTO or witnessed signatures.  Under the new regime, unwitnessed transfers of a patent or patent application can be recorded with the Canadian Patent Office without difficulty.

We will now discuss the changes to Canada’s prosecution timelines, which will still remain generous by international standards.  We also note that the new Rules will not increase the costs of prosecution in Canada.    

The new Rules change the default deadline for filing a response to an Office Action issued on or after October 30th from 6 months to 4 months.  However, the current 12-month reinstatement period as of right will remain.

The default deadline for paying the Final Fee will change from 6 months to 4 months as well.  Again, the current 12-month reinstatement period as of right will remain.

The default deadline for filing a request for examination will change from 5 years to 4 years.  Under the new Rules, an applicant may pay a late fee and request examination within 6 months of the deadline, following which, a new due care standard will apply. 

With respect to maintenance fees, applicants will lose the option to reinstate an application as of right for up to 12 months from a missed maintenance fee deadline.  Instead, applicants may pay a late for fee for maintenance fee payments made within 6 months of the deadline, after which, a new due care standard will apply thereafter for an additional 12 months.

The new Rules will introduce the concept of third party rights.  These rights will limit the liability faced by third parties if they undertake actions that would otherwise lead to infringement during a period when a patent or patent application is abandoned or lapsed and the patentee or applicant needs to satisfy the due care threshold for reinstatement. 

If you have any questions about the new Rules and how they may affect your patent filing strategy, please contact any member of our team.