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24 December 2018
On 1 December 2018 the Canadian government released its proposed new Patent Rules in the Canada Gazette, Part I. This is one of the last steps necessary for implementing significant changes to Canada's patent law, which are expected to come into force in 2019.
There will be many changes to Canadian patent law and practice. This article discusses the most notable changes to be expected and offers some tips for safe and effective practice under the new rules.
Many of the changes intend to implement the Patent Law Treaty and to help minimise the risk of loss of rights. The changes to look forward to are outlined below.
Restoration of priority will be available
To make a valid priority claim in Canada, a Canadian patent application must currently be filed no more than 12 months after the filing date of the priority application.
The new system will allow for the 12-month priority period to be extended to 14 months if the failure to meet the 12-month deadline was unintentional. This change will bring Canadian practice into line with the right of restoration of priority provided for in Rule 49ter of the Patent Cooperation Treaty (PCT).
However, the Federal Court of Canada can reverse the restoration of priority and declare the priority claim invalid if it is later determined that the failure to meet the 12-month deadline was intentional.
The unintentional standard for restoration of priority in Canada will likely be easier to meet than a due care standard applied by other patent offices. It is important to consider Canada as a favourable choice for situations in which restoration of priority must be relied on.
Easier to secure filing date in Canada
In order to obtain a filing date under the current system, the patent application must be in English or French and a filing fee must be paid.
The new system will relax the requirement for direct filings not entering through the PCT: even if the filing fee is not paid or if the patent application is not in English or French, the Canadian Patent Office will still grant a filing date.
It will also be possible to obtain a filing date on a day that the Canadian Patent Office is closed (eg, on a weekend or holiday) by filing the application electronically. It will even be possible to defer filing a specification and drawing by referring to a previously regularly filed application instead.
However, most of these relaxed filing requirements will not apply to PCT national phase applications. For example, it will remain necessary to pay the filing fee at the time of national entry and, if the international application is not in English or French, a translation into English or French must be submitted at the time of national entry.
As discussed in greater detail below, restrictions will be placed on amendments after a translation is filed. Care should be taken to ensure that all translations submitted to the Canadian Patent Office are free of errors.
Opportunity to submit missing content contained in priority application
Occasionally, a patent application will be filed missing content (eg, due to a clerical error when preparing the application).
Under the new system, the applicant may add the missing content without loss of the original filing date if:
The addition cannot add to the claims of the application.
This procedure applies only to direct filings not entering through the PCT. If missing content is discovered the error must be advised immediately because the deadline to add the missing content may expire as soon as two months from filing.
Amendment after allowance practice streamlined
Currently, only limited amendments are permitted after an application is allowed. In order to re-open prosecution, the issue fee deadline must pass such that the application becomes abandoned and then applicants can reinstate the application. This is complex and time consuming.
Under the new system, the procedure will be streamlined such that the notice of allowance can be withdrawn and prosecution re-opened simply on payment of a fee within four months of the date of allowance (and before the issue fee is paid).
It is advisable to use the new simplified amendment after the allowance procedure to add claims instead of filing a voluntary divisional application that could be rejected for obviousness double patenting.
Excess page fees will not apply to electronic sequence listing
Currently, the issue fee is C$300 plus C$6 for each page of specification and drawings in excess of 100.
The fee schedule will be updated to clarify that the excess page fee does not apply to pages of an electronic sequence listing. This will come as welcome news to biotechnology patentees which have in some instances been stuck with exorbitant issue fees due to long electronic sequence listings.
It will be important to consider deferring allowance of applications from having very long sequence listings until after the new rules come into force in order to avoid excess page fees.
More certainty regarding deadline to correct certain errors
The current system allows for the correction of clerical errors at the discretion of the commissioner of patents. This has led to a complicated body of law concerning whether an error truly is clerical and if it is what (if anything) the commissioner should do about it.
The new system removes the ability to request the correction of clerical errors but introduces more certainty by establishing clear deadlines for correcting common types of errors. For example, specific deadlines are set in relation to correcting:
Filing documents and granted patents should be checked promptly and if an error is discovered it should be advised immediately. In some cases, the window in which to correct an error is small.
Some of the expected changes will reduce patent applicants' or patentees' rights. The changes that may require preparation are outlined below.
No more 42-month national phase entry by right
Under the current system, a PCT application can enter the Canadian national phase as late as 42 months from the priority date, although a late fee must be paid if the applicant enters the national phase more than 30 months from the priority date.
Under the new system, the option to enter late by right is removed. If the applicant fails to enter the national phase by the 30-month deadline, it is still possible to enter national phase within 42 months of the priority date, but only on submitting a statement that the failure to enter the national phase by the 30-month deadline was unintentional.
This change affects PCT applications having a filing date on or after the coming-into-force date of the new rules. For such applications, it is advised to plan ahead for Canadian national phase entry no later than 30 months from the priority date.
More complex maintenance fee regime
To maintain a Canadian application or patent, a maintenance fee is due each year beginning on the filing date's second anniversary. Under the current system, a missed maintenance fee may be paid up to 12 months late as a matter of right. In the case of a pending application, this requires a request for reinstatement and the payment of a reinstatement fee, whereas only a late fee is required in the case of a missed maintenance fee on a patent.
The new system is beneficial as it will require the Canadian Patent Office to issue a late notice if a maintenance fee is missed. Further, anyone will be able to pay the maintenance fee on a pending application.
However, the new system adds complexity and uncertainty. If the maintenance fee deadline is missed, the deadline for late payment of the maintenance fee is not immediately known and therefore cannot be immediately docketed. Instead, the deadline for late payment is dependent on when the Canadian Patent Office issues the late notice. If the deadline for late payment is also missed, then a submission showing due care must be filed within a prescribed period to restore rights. What constitutes due care is currently unknown and restoring rights under the due care standard may be subsequently challenged in Federal Court. In addition, an exemption from infringement (third-party rights) may apply six months after a missed maintenance fee payment, which is also a new concept to Canadian law. Further, because anyone will be able to pay a maintenance fee on a pending application, it will be more difficult to know with certainty whether a maintenance fee payment deadline has been met.
Missing maintenance fee deadlines should be avoided. Steps should be taken to put in place robust procedures for the payment of maintenance fees on Canadian patent applications and patents and consider providing instructions to pay maintenance fees as they come due, absent positive abandonment instructions. In addition, providing instructions to pay the maintenance fee in the event that the Canadian Patent Office issues a notice indicating that the maintenance fee payment was missed (it is anticipated that the notice will be sent to the Canadian patent agent of record), and absent positive abandonment instructions.
More significant consequences for missing examination request deadline
Before a Canadian patent application is examined, examination must be requested, and an examination fee must be paid.
Under the current system, the deadline to request examination is five years from the patent application's filing date. If the deadline is missed, the application is abandoned but may be reinstated as of right within 12 months.
Under the new system, the deadline for requesting examination is reduced to four years from the patent application's filing date. The term for requesting examination in a divisional application filed after the original examination request deadline is reduced from six months to three months from the divisional application's presentation date. Further, complexities similar to those described above in relation to maintenance fees are introduced if the deadline for requesting examination is missed. For example, missing the deadline to request examination could ultimately result in a situation in which third-party rights and due care reinstatement applies.
It may be advantageous to delay the examination request until close to the deadline so that examination can proceed based on the claims allowed in a corresponding application filed in another country. However, the deadline for requesting examination must not be missed. It is advisable to have standing instructions to request examination close to the deadline, absent positive abandonment instructions.
Strict limits on amendments when translation is filed
An amendment to a Canadian patent application must be reasonably inferred from the application as originally filed, assuming that the amended subject matter is not admitted prior art.
However, an additional requirement will be imposed under the new system. If a translation into English or French is filed, then any future amendment to the Canadian patent application must be reasonably inferred from both the application as originally filed (in the foreign language) and the filed translation.
It is advisable to take extra caution to ensure that the patent application's translation is accurate and complete.
Certified copy of priority applications now required
Under the new system, it will be necessary to submit a certified copy of each priority application to the Canadian Patent Office, unless a certified copy is otherwise made available through prescribed means.
Submitting a certified copy to the World Intellectual Property Organisation during the international phase of a PCT application will avoid the need for a certified copy during the Canadian national phase. Therefore, this change will primarily affect direct filings, not entering through the PCT, in which a claim to priority is being made under the Paris Convention. The deadline to submit the certified copy of each priority application in such a situation will be four months after the Canadian patent application's filing date and 16 months from the date of the earliest priority application.
The proposed rules permit making a priority application available to the Canadian Patent Office in a digital library specified by the commissioner of patents, but details are still forthcoming.
For direct filings not entering through the PCT, or if a certified copy was not filed in the international phase of a PCT application, a certified copy of each priority application with the original filing instructions must be provided.
Shortened prosecution deadlines
The new system reduces the time that the applicant will have to meet certain deadlines and respond to certain requisitions. The term for requesting examination will be reduced from five years to four years from the filing date. Examiners' reports will have a standard term for response of four months rather than six months. The final fee will be due four months rather than six months from the notice of allowance.
It may be possible to extend the time to respond to examiners' reports by an additional two months (ie, six months from the date of the report). However, if such an extension is obtained, it will not be possible to request or continue accelerated examination under the special order procedure.
There is a 30-day public consultation on the proposed new rules, ending on 31 December 2018. Subsequently, the final rules will be published in the Canada Gazette, Part II. It is anticipated that the new rules may come into force later in 2019.
For further information on this topic please contact David Schwartz or Jeff Leuschner at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (firstname.lastname@example.org or email@example.com). The Smart & Biggar/Fetherstonhaugh 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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