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18 November 2019
The Patent Law Treaty (PLT), administered by the World Intellectual Property Organisation (WIPO), was adopted on 31 May 2000. The treaty aims to harmonise and streamline formal procedures for patent applications and patents and make such procedures more user friendly. Canada signed the treaty on 21 May 2001 and ratified it on 30 July 2019.
Canada has now reached the end of its journey to implement the PLT, with new Patent Rules and associated amendments to the Patent Act having come into force on 30 October 2019. To help ease the transition, this article summarises the more significant changes to Canadian patent practice and procedure that are now in effect.
PCT national phase entry deadline
If a Patent Cooperation Treaty (PCT) application with an international filing date of 30 October 2019 or later enters the Canadian national phase more than 30 months from the earliest priority date, a C$200 reinstatement fee must be paid and the applicant must submit:
In no circumstance can a PCT application enter the Canadian national phase more than 42 months from the earliest priority date.
Certified copies of priority documents
Certified copies of priority documents must be filed with the Patent Office or made available from the WIPO Digital Access Service in Canadian patent applications filed on or after 30 October 2019. Certified copies of priority documents will be required in the national phase of a PCT application only if the international filing date is on or after 30 October 2019 and a certified copy was not submitted in the international phase.
Restoration of priority
Restoration of priority may be available on an unintentional standard in Canadian patent applications filed on or after 30 October 2019 or in the national phase of PCT applications with an international filing date of 30 October 2019 or later.
Obtaining filing dates
If a Canadian patent application is filed on or after 30 October 2019, a filing date will be granted based on a specification filed in a foreign language, without payment of the filing fee. The English or French translation and the filing fee may be submitted subsequently. However, the national phase entry fee and English or French translation of a foreign-language specification are still due 30 months from the earliest priority date in the case of a PCT national phase entry in Canada.
A filing date may now be obtained on a weekend, holiday or other day when the Patent Office is closed to the public by filing an application electronically.
Additions based on priority application
If a Canadian application is filed on or after 30 October 2019, the application may be corrected shortly after filing by adding a missing part of the specification or adding a drawing from a priority application.
Anyone can now pay a maintenance fee on a pending application. The application will be abandoned if the missed maintenance fee and a late fee are not paid within the later of two months from the late notice and six months from the original deadline. The application may be reinstated within 12 months from the date of abandonment, but only if the commissioner of patents determines that the failure to pay the maintenance fee occurred despite the due care required by the circumstances having been taken. Third-party rights to practise the invention commencing from six months after the missed maintenance fee deadline arise, irrespective of whether the application was abandoned. A similar regime applies to maintenance fees for issued patents.
Examination requests and fees
If the examination request and fee are not submitted by the original deadline, the Patent Office 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. The application may be reinstated within 12 months from the date of abandonment, but if more than six months from the original deadline have passed, the application may be reinstated only if the commissioner of patents determines that the failure to request examination and pay the examination fee occurred despite the due care required by the circumstances having been taken. Third-party rights to practice the invention commencing from six months after the missed examination request deadline arise, irrespective of whether the application was abandoned.
Shortened prosecution deadlines
The deadline for requesting examination has been reduced from five to four years from the filing date in applications filed on or after 30 October 2019 or in the national phase of PCT applications with an international filing date of 30 October 2019 or later. The deadlines for responding to examiners' reports issued on or after 30 October 2019 and for paying the final fee (ie, issue fee) in response to a notice of allowance issued on or after 30 October 2019 have both been reduced from six to four months.
Excess page fees
If a notice of allowance issues on or after 30 October 2019, the excess page fee calculation of C$6 per page over 100 pages of description, claims and drawings does not include pages of a sequence listing in electronic form.
Reopening prosecution after allowance
If a notice of allowance issues on or after 30 October 2019, prosecution can be reopened on request for withdrawal of the notice of allowance and payment of a C$400 government fee before payment of the final fee. However, if the application is abandoned for non-payment of the final fee and is subsequently reinstated, only limited amendments to correct obvious errors are permitted and such amendments must be submitted no later than the reinstatement and payment of the final fee.
The applicant or patentee may now request the recordal of an application or patent transfer without submitting an assignment document. In contrast, a transfer will be recorded at the transferee's request only on submission of evidence of the transfer satisfactory to the commissioner. The same C$100 government fee applies in either case.
Correction of errors
The rules in force before 30 October 2019 provided only limited guidance with respect to the correction of errors in patent applications or granted patents. Requests were often submitted to correct clerical errors under Section 8 of the Patent Act, which has been repealed. 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 was determined to be clerical, the Canadian Intellectual Property Office had discretion whether to enter the correction and potential prejudice to the public was considered. There were no time limits under Section 8 and clerical errors could be corrected before or after grant. Under the new rules, this 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. The new rules address the correction of:
For further information on this topic please contact David Schwartz at Smart & Biggar by telephone (+1 613 232 2486) or email (firstname.lastname@example.org). The Smart & Biggar website can be accessed at www.smart-biggar.ca.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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