Introduction

On 30 October 2019 amendments to the Patent Act and Patent Rules will come into force, which are largely geared towards implementing the Patent Law Treaty (for further details please see "Detailed overview of deadlines and requirements under new Patent Rules").

An updated Manual of Patent Office Practice (MOPOP) was recently published, explaining Patent Office administrative and examination practice effective from 30 October 2019.

The updated MOPOP provides important information as to how the Patent Office will handle certain aspects of patent practice under the new rules. Most significantly, the updated MOPOP provides details concerning:

  • the new requirement for the submission of certified copies of priority documents;
  • the basis on which extensions of time will be granted; and
  • the determination as to whether certain deadlines were missed despite the due care required by the circumstances having been taken.

Certified copies of priority documents

If the filing date of a Canadian patent application that is not a Patent Cooperation Treaty (PCT) national phase application is on or after 30 October 2019, the applicant must:

  • submit a certified copy of each priority application to the Patent Office; or
  • make it available from a digital library that is specified by the commissioner of patents as being accepted for that purpose.

The same requirements apply in the national phase of a PCT application with an international filing date on or after 30 October 2019 in the rare case that a certified copy of the priority document was not filed in the international phase.

The updated MOPOP now confirms that the specified digital library will be the World Intellectual Property Office (WIPO) Digital Access Service (DAS). The DAS is a secure electronic digital library service, administered by the WIPO to facilitate the secure exchange of patents, trademarks and design priority documents between IP offices.

Extensions of time

Various prosecution deadlines may be extended under the new rules. Most significantly, all examiners' reports issued on or after 30 October 2019 will have a four-month term for response, potentially extendable by a maximum of two months. Previously, most examiners' reports had an unextendible six-month term for response.

An extension of time may be obtained only if:

  • the extension request is made and a C$200 government fee is paid before the original deadline expires; and
  • the commissioner of patents considers that the circumstances justify the extension.

The updated MOPOP sets out the Patent Office's practice for granting such extensions, explaining that in order for the commissioner to be satisfied that the circumstances justify the extension, the applicant must provide "a simple justification that explains why an extension of time is being requested". No evidence or affidavit is required when requesting an extension of time.

Subsequent requests for an extension of time for the same action on the same file will be considered only under exceptional circumstances. The updated MOPOP explains that examples of exceptional circumstances include:

  • a recent change in the appointment of a patent agent; and
  • circumstances beyond the control of the person concerned, such as severe illness, accident, death, bankruptcy or other serious and unforeseen circumstances.

The commissioner's decision concerning the extension will be communicated to the applicant in writing. Importantly, the Patent Office's current published service standard is to process requests for extensions of time within eight calendar weeks. Therefore, an applicant seeking an extension of time to respond to an examiner's report would be well-served to request the extension within two months of the report's issuance in order to have a decision on the extension request in hand before the original four-month deadline expires.

Particularly for responding to examiners' reports, depending on how quickly the Patent Office actually processes extension requests, it may be simpler to use the reinstatement procedure than to obtain an extension of time, as the costs and consequences are similar.

If a response to an examiner's report is not submitted by the original or any extended deadline, the application will be abandoned. An application abandoned in these circumstances may be reinstated within 12 months of the date of abandonment on submission of:

  • a request for reinstatement;
  • a C$200 reinstatement fee; and
  • a response to the examiner's report.

There are procedures for expediting prosecution of a patent application. In general, these will be unavailable in any application that has been abandoned or in which an extension of time has been granted.

Due care

Pursuant to the amended Patent Act and Patent Rules, an application may be abandoned only for the failure to pay a maintenance fee, or to request examination and pay the examination fee, after the Patent Office has provided notice of the missed deadline. A similar notice requirement is established for the failure to pay a maintenance fee on a granted patent. However, if the applicant or patentee fails to respond in due time to the notice, a showing of due care may be required in order to remedy the missed maintenance fee or examination fee deadline.

In greater detail, if the original deadline for paying a maintenance fee due on a pending application on or after 30 October 2019 is missed, the Patent Office will send a late notice to the patent agent of record. The application will be abandoned if the missed maintenance fee and a C$150 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 of 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.

Similarly, if a maintenance fee payment due on or after 30 October 2019 on a granted patent is missed, the Patent Office will send a late notice to the patent agent of record.

The patent will be deemed to have expired on the original maintenance fee deadline if the missed maintenance and a C$150 late fee are not paid within the later of two months from the late notice and six months from the original deadline.

Deemed expiry can be reversed within 18 months of the original maintenance fee deadline, 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.

There is a parallel procedure for failure to request examination. If the deadline for requesting examination is on or after 30 October 2019, in the event that 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 of the date of abandonment. However, if more than six months from the original examination fee 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.

The updated MOPOP elaborates procedures for establishing that due care was exercised.

The commissioner of patents will assess:

whether the applicant [or patentee] took all measures that a reasonably prudent applicant [or patentee] would have taken - given the particular set of circumstances related to the failure - to avoid the failure, and despite taking those measures, the failure occurred.

Measures taken after the failure has occurred will not be considered.

This approach is similar to that taken by the Patent Office when acting as a receiving office in the context of a request for the restoration of priority under the PCT when a request for restoration of the right of priority is made on the basis that due care required by the circumstances was taken.

The Patent Office recommends that the applicant or patentee provide information on:

  • the circumstances that led to the failure;
  • the measures that the applicant or patentee took to avoid the failure (including any remedial or alternative steps that were taken to avoid the failure); and
  • any other justifications.

Evidence of the circumstances and reasons for the failure to meet the deadline (eg, a medical note or an affidavit) may be submitted. Such information will be available to the public in the Patent Office's records, so care should be exercised to avoid unnecessarily submitting sensitive information.

In determining whether the failure occurred despite the due care required under the circumstances having been taken, the commissioner of patents will consider:

whether anything else could have been reasonably expected to have been done to avoid the failure while taking into consideration the particular set of circumstances surrounding the failure to take the required action.

As noted above, the commissioner will have no regard to measures taken by the applicant or patentee after the failure occurred. The commissioner of patents will consider "the customary diligence that a prudent party would have exercised in the circumstances".

While acknowledging that no two cases have identical sets of facts or circumstances, the Patent Office indicates that it will have regard to the considerations that are taken into account by the International Bureau and Receiving Offices of WIPO as described in Paragraph 166M of the Receiving Office Guidelines.

The updated MOPOP explains that, in general, the following circumstances may justify a finding that the failure occurred despite the due care required by the circumstances having been taken:

  • Force majeure – where an external, unforeseeable or unavoidable circumstance beyond the control of the applicant, patentee, patent agent or other authorised person (eg, a hurricane, volcanic eruption, earthquake or war) made it impossible for an applicant, patentee, patent agent or other authorised person to take the necessary action to avoid abandonment of an application or expiration of a patent.
  • Unexpected illness – where an applicant, patentee, patent agent or other authorised person fell unexpectedly ill or needed urgent treatment that prohibited all communication with other persons.
  • Facsimile or software submission failure – where an error using facsimile or software occurred due to an external technical problem that was beyond their control, and where the applicant, patentee, patent agent or other authorised person exhausted all alternative means to take the required actions.
  • Docketing system error – where an unexpected and unforeseeable technical error in a docketing system caused an applicant, patentee, patent agent or other authorised person to miss the deadline to take the actions that should have been taken to avoid abandonment of an application or expiration of a patent.
  • Isolated human error by assistant – where an assistant made an isolated error in docketing, monitoring, preparing or filing the application or patent.

In contrast, the updated MOPOP provides that, in general, the following circumstances may favour a determination that due care required by the circumstances was not taken:

  • Lack of financing by the applicant or patentee – where an applicant or patentee claims that they did not have the requisite funds to take the actions that should have been taken to avoid abandonment of an application or expiration of the patent.
  • Human error by applicant, patentee, patent agent or other authorised person – where a human error results from an increase in workload, a lost file or other lack or organisation or diligence when dealing with files.
  • Lack of knowledge by the applicant or patentee – where an applicant or patentee fails to take the actions necessary to avoid abandonment of an application or expiration of a patent due to lack of knowledge of the Patent Act and the Patent Rules.
  • Absence from the office – where an applicant, patentee, patent agent or other authorised person fails to meet the deadline to take the action to avoid abandonment of an application or expiration of a patent because the deadline fell on a date of a planned a holiday or medical appointment.

In the event that the commissioner of patents intends to make a determination that due care was not taken, the applicant or patentee will be notified and given one month to submit observations before a final determination is made.

Other than in circumstances where the applicant or patentee has been informed that the commissioner of patents intends to reach a finding of lack of due care, the Patent Office will aim to notify the applicant or patentee of the commissioner's decision within two months of receipt of the request or the last correspondence relating to the request.

Importantly, the remedial effect of a finding of due care by the commissioner of patents may later be reversed by the Federal Court if the court determines that either:

  • the statement of the reasons for missing the deadline provided by the applicant or patentee contains a material allegation that is untrue; or
  • the failure to act did not occur despite the due care required by the circumstances having been taken.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.