Detailed overview of deadlines and requirements under new Patent Rules

Introduction
PCT national phase entry requirements
Canadian patent application (non-PCT) filing requirements
Maintenance fees
Examination
Allowance
Reinstating abandoned applications and reversing deemed expiry
Transfers (assignments)
Correcting errors
Other errors
Third-party rights
Recommendations

Introduction

On 10 July 2019 the government published the final version of the new Patent Rules(1) in Part II of the Canada Gazette. The new rules and associated amendments to the Patent Act will come into force on 30 October 2019.

The new rules substantially alter Canadian patent practice and include many changes which will enable Canada to ratify the Patent Law Treaty.

This article provides a detailed analysis of revised requirements under the new rules, together with recommendations for best practice.

PCT national phase entry requirements

PCT national phase entry deadline
The new rules place restrictions on the time for entry into the Canadian national phase.

If the Patent Cooperation Treaty (PCT) international filing date is on or after 30 October 2019, an application can enter the national phase in Canada up to 42 months from the earliest priority date. However, if the application enters the national phase more than 30 months from the earliest priority date, a C$200 reinstatement fee must be paid and the applicant must submit a request that the applicant's rights be reinstated and a statement that the failure to meet the 30-month deadline was unintentional.

If the PCT international filing date is before 30 October 2019, the current right to enter the Canadian national phase up to 42 months from the priority date merely on payment of a C$200 late fee is retained.

Restoration of priority
Restoration of priority will be available in the Canadian national phase if the PCT international filing date is on or after 30 October 2019 and priority has been restored in the international phase. This is a significant change in Canadian practice.

Alternatively, if priority has not been restored in the international phase, it may be restored in the Canadian national phase on an unintentional standard if the PCT international filing date is on or after 30 October 2019 and a request for restoration of priority is submitted within one month from national entry.

Certified copy of priority document
If the PCT international filing date is on or after 30 October 2019, in the rare event that a certified copy of the priority document was not filed in the international phase, a certified copy must be submitted to the Canadian Intellectual Property Office (CIPO) or made available from a digital library specified by CIPO (expected to be the World Intellectual Property Organisation (WIPO) Digital Access Service).

Filing fee and translation
Although filing requirements for non-PCT applications are relaxed, to effect entry into the Canadian national phase of a PCT application, it will remain necessary under the new rules to pay the filing fee and file an English or French translation of a foreign-language specification by the national entry deadline.

Canadian patent application (non-PCT) filing requirements

Obtaining filing date
Under the new rules, the filing fee and an English or French translation of an application are no longer required in order to secure a filing date.

If the 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 a filing fee needing to be paid.

The application will be abandoned if a translation into English or French is not filed within two months of a notice issued by CIPO (no additional late fee). The time for responding to the notice cannot be extended.

The application will be deemed to be withdrawn if the filing fee and a late fee of C$150 are not submitted within three months of a notice issued by CIPO.

On or after 30 October 2019 it will be possible to obtain a filing date on a weekend, holiday or any other day when CIPO is closed to the public by filing the application electronically.

Restoration of priority
New to Canadian practice, priority may be restored on an unintentional standard if the Canadian filing date is on or after 30 October 2019. The Canadian application must be filed within 14 months of the priority date and restoration of priority must be requested within two months of the Canadian filing date.

Certified copy of priority document
If the Canadian filing date is on or after 30 October 2019, the applicant must submit certified copies of each priority application or make them available to CIPO from a digital library (expected to be the WIPO Digital Access Service).

If the certified copy or access is not provided within 16 months of the earliest priority date, CIPO will issue a notice requiring the certified copy or access within two months of the notice date. No government fee is payable when responding to the notice.

Failure to comply with the notice results in the priority claim being considered to have been withdrawn.

Reference to previously filed patent application
If an application is submitted on or after 30 October 2019, the applicant may refer to a previously filed application rather than submit a specification to obtain a filing date.

The non-extendable deadline may be as early as two months from the application's submission.

Within two months of referring to a previously filed application, a copy of the previously filed application must be filed or made available from a digital library (expected to be the WIPO Digital Access Service).

Addition to specification or addition of drawing based on priority application
If an application is submitted on or after 30 October 2019, it may be corrected by adding a missing part of the specification or adding a drawing from a priority application.

The non-extendable deadline may be as early as two months from the application's submission.

Maintenance fees

Pending applications
In a significant change to Canadian practice, on or after 30 October 2019, anyone can pay a maintenance fee on a pending application. In general, only the Canadian agent can currently do this.

If the original deadline is missed for a maintenance fee due on or after 30 October 2019, CIPO will issue a late notice. The application will be abandoned if the missed maintenance fee and a late fee of C$150 are not paid within the later of two months from the late notice and six months from the original deadline.

Granted patents
As discusses above, under the new rules, anyone can pay a maintenance fee on or after 30 October 2019.

However, the procedure relating to missed fee payments will change. If a maintenance fee payment due on or after 30 October 2019 on a granted patent is missed, CIPO will issue a late notice. The patent will be deemed to have expired on the original maintenance fee deadline if the missed maintenance and a late fee of C$150 are not paid within the later of two months from the late notice and six months from the original deadline.

Examination

Deadline for requesting examination of original application
At present, examination must be requested within five years of the PCT international filing date or the Canadian filing date. This term is shortened under the new rules.

If the PCT international filing date or Canadian filing date is on or after 30 October 2019, examination must be requested within four years from the international filing date or Canadian filing date.

Deadline for requesting examination of divisional application
At present, examination of a divisional application must be requested within the later of five years from the original filing date and six months from submission of the divisional application. These terms are shortened under the new rules.

If a divisional application has a parent (ie, original) filing date before 30 October 2019 but a presentation date (ie, actual submission date) on or after 30 October 2019, examination must be requested and the examination fee must be paid within the later of five years from the original filing date and three months from the divisional application's presentation date.

If a divisional application has a parent (ie, original) filing date on or after 30 October 2019, examination must be requested and the examination fee paid within the later of four years from the original filing date and three months from the divisional application's presentation date.

Abandonment for failure to request examination
If the deadline for requesting examination is on or after 30 October 2019 and the examination request and fee are not submitted by the original deadline CIPO 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.

Examiner's reports
Examiner's reports issued before 30 October 2019 have a six-month term for response (three-month term if prosecution is expedited under the special order procedure). All examiner's reports issued on or after 30 October 2019 will have a four-month term for response.

The maximum term for response to an examiner's report is six months under both the old and new rules. If a shorter term has been set, an extension of time may be obtained if a request is made before the expiry of the original response term and if the commissioner of patents considers that the circumstances justify the extension. A government fee of C$200 is required. Obtaining an extension will result in loss of entitlement to expedited examination under the special order procedure.

Allowance

Final fee
The final fee is due six months from the notice of allowance date issued before 30 October 2019. This term is shortened under the new rules and the final fee is due four months from the notice of allowance date issued on or after 30 October 2019. These terms cannot be extended.

Excess page fee
The excess page fee, which relates to a sequence listing in electronic form, is removed under the new rules. If a notice of allowance issues on or after 30 October 2019, the excess page fee calculation of C$6 for each page in excess of 100 pages of description, claims and drawings does not apply to pages of a sequence listing in electronic form.

Reopening prosecution after allowance
If the final fee deadline is before 30 October 2019, prosecution can be reopened only by not paying the final fee so that the application becomes abandoned. On reinstatement, the application is subject to amendment and further examination.

The new rules introduce a simplified procedure. 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 paying the final fee.

However, if the application becomes abandoned for non-payment of the final fee and is subsequently reinstated only limited amendments to correct obvious errors are permitted. Such an amendment must be submitted no later than when reinstating and paying the final fee.

If the notice of allowance issues before 30 October 2019, but the final fee deadline is on or after 30 October 2019, prosecution can be reopened by not paying the final fee and then reinstating the application. Prosecution potentially could also be reopened under the new procedure (ie, within four months of the notice of allowance by paying the C$400 fee to have the application withdrawn from the allowance).

Reinstating abandoned applications and reversing deemed expiry

The reinstatement procedure largely remains the same under the new rules. In most cases, if a prosecution deadline is missed and an application is abandoned, the application may be reinstated within 12 months of the date of abandonment by:

• requesting reinstatement;
• paying a C$200 government fee; and
• taking the action that should have been taken to avoid abandonment.

However, the reinstatement procedure changes under the new rules with respect to maintenance fees and requesting examination.

If an application is abandoned on or after 30 October 2019 for failure to pay a maintenance fee or it becomes abandoned on or after this date for failure to request examination and more than six months from the original examination deadline has passed, the application may be reinstated only if the commissioner of patents determines that the failure to pay the maintenance fee or request examination occurred despite the due care required by the circumstances having been taken.

The same due care requirement applies to the reversal of deemed expiry of a granted patent for failure to pay a maintenance fee and late fee in response to a missed maintenance fee notice.

A further notable change under the new rules is that the deadline for reinstating an application cannot be extended – a procedure that was occasionally used in the past.

Transfers (assignments)

Under the old rules, an assignment and the C$100 fee must be submitted to record a transfer.

However, under the new rules, after 30 October 2019, a transfer will be recorded at the request of the applicant or patentee on payment of the C$100 fee. A transfer will be recorded at the request of the transferee of an application or patent on submission of evidence of the transfer satisfactory to the commissioner and payment of the C$100 fee.

Under the new rules, the current owner can record a transfer on request, without submission of assignment, but there is no reduction in the government fee. Effectively, if someone other than the applicant or patentee wishes to record a transfer, they must file an assignment (or other transfer document) meeting formal requirements that CIPO has established.

Correcting errors

The rules in force until 30 October 2019 provide only limited guidance with respect to the correction of errors in patent applications or granted patents. Requests are often submitted to correct clerical errors under Section 8 of the Patent Act – a provision which will be repealed on 30 October 2019. 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 is determined to be clerical, CIPO has discretion as to whether to enter the correction and potential prejudice to the public is considered. There are no time limits under Section 8 and clerical errors can be corrected before or after grant.

Under the new rules, the 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.

Errors in priority claims
Irrespective of when an application is filed, on or after 30 October 2019, an error in the filing date of a priority application as recited in a priority claim may be corrected if a request is submitted before a period that usually will expire on the earlier of 16 months from the corrected priority date and 16 months from the uncorrected priority date.

Irrespective of when an application is filed, on or after 30 October 2019, an error in the name of a country or office of filing or in the number of a priority application as recited in a priority claim may be corrected if a request is submitted on or before the day on which the final fee is paid.

Errors in naming or identifying applicants and inventors
On or after 30 October 2019:

• an error in the identity of an applicant in an application (other than a PCT national phase application) may be corrected on or before the publication date and before a transfer is submitted for recordal;
• an error in the identity of an applicant in a PCT national phase application may be corrected within three months from national phase entry and before a transfer is submitted for recordal;
• an error in the identity of an inventor may be corrected before allowance; and
• an error in the name of an applicant or inventor (no change in actual identity) may be corrected on or before payment of the final fee.

Other errors

Errors by CIPO
Errors made by CIPO in a patent (eg, owner or inventor name or priority claim) or in a specification or drawings may be corrected if a request is made no later than 12 months from grant of the patent and if, from the documents that were in CIPO's possession on the date of the grant, it is obvious that something other than what appears in the patent, the specification or the drawings was intended and that nothing other than the correction could have been intended. No government fee is payable.

Errors by patentee
On the request of the patentee no later than 12 months from grant of the patent and payment of the C$200 fee, the commissioner must correct:

• an error in the name of the patentee or an inventor if the correction does not change their identity; or
• an error in the specification or the drawings if the specification or drawings at the time of grant made it obvious to a person skilled in the art or science to which the patent pertains that something other than what appears in the specification or drawings was intended and that nothing other than the correction could have been intended.

Third-party rights

The new rules introduce a system of third-party rights to practise a patented invention.

There are no third-party rights to practise a patented invention associated with prosecution deadlines missed before 30 October 2019.

However, on or after 30 October 2019, if an applicant or patentee fails to pay a maintenance fee on time or the applicant fails to request examination and pay the examination fee on time, third-party rights to practise the invention post-grant may arise. Third-party rights may arise starting from six months after the missed maintenance fee deadline or missed examination request deadline.

Notably, the third-party rights provisions are independent from the abandonment and reinstatement procedure. Thus, third-party rights may apply during a period after a maintenance fee or examination fee deadline has been missed but before the application is abandoned.

Pursuant to the third-party rights provisions, if during a prescribed period a person acting in good faith committed an act that would otherwise constitute an infringement of that patent, that act is not an infringement of the patent. Further, if during the prescribed period a person acting in good faith committed an act that would otherwise constitute an infringement of that patent or made serious and effective preparations to commit that act, it is not an infringement of the patent if the person commits the act after that period.

Recommendations

The following are some general recommendations to ensure the safe and effective prosecution of Canadian patent applications under the new Patent Rules:

• Plan ahead for the new stricter 30-month deadline for entering the Canadian national phase, even though the new requirements will apply only to PCT applications with an international filing date on or after 30 October 2019.
• Ensure that certified copies of priority applications are filed during the international phase of PCT applications; if they are not, highlight this at the time of national entry.
• Provide certified copies of priority applications at the time of filing Canadian (non-PCT) patent applications or make them available when filing under the WIPO Digital Access Service.
• If restoration of priority is required, highlight this immediately at the time of filing or national entry in Canada.
• Ensure that the maintenance fee and examination request deadlines are not missed in view of the due care standard that may apply to reinstate an application or reverse deemed expiry of a patent, and third-party rights to practise the invention that may arise.
• If an application contains a long sequence listing, consider taking steps to avoid allowance before 30 October 2019, to minimise the excess page fee.
• Check specifications and bibliographic data promptly on filing, allowance and grant, in view of the time-limited opportunities to correct errors.

For further information on this topic please contact David Schwartz at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (deschwartz@smart-biggar.ca). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.

Endnotes

(1) SOR/2019-251.