A Goose-Eye View of the New Canadian Patent Rules Coming Into Force on October 30, 2019

Canadian patent practice will soon undergo significant changes due to the introduction of new patent rules. The new rules follow Canada’s recent ratification of the Patent Law Treaty and will provide greater harmonization with foreign jurisdictions and modernization of procedures.

Although the patent protection available in Canada will not change substantively, many aspects of patent practice will be affected. We provide a summary below of the key changes for applicants to consider after the coming-in-force date of October 30, 2019.

Purpose :

• Compliance with the Patent Law Treaty
• Harmonization with US & EP
• Modernization & Simplification of Procedures

Key Changes

National phase entry due at 30 months – Consider filing PCT applications before October 30, 2019 for access to the 42 month delayed national phase entry.
National entry can no longer be delayed until 42 months from priority, unless the Applicant satisfies the Patent Office that the failure to meet the 30-month deadline was unintentional. This change rules out late entry for most cases. Applicants should now assume that they must enter Canada by the 30-month deadline. This change will apply for all PCT applications filed on or after October 30, 2019.

Restoration of priority now available under the unintentional standard.
If priority was restored during the PCT phase, this will now be accepted for the Canadian national entry. Deadline for restoration is 14 months from priority or 1 month after national entry. It is strongly recommended to restore priority during the PCT phase whenever possible.

Office action responses now due at 4 months.
A 2-month extension of time is available at the Patent Office’s discretion, with a fee. The extension of time must be requested before expiration of the 4-month deadline, and a reason must be provided.  However, if the deadline is missed, the application can be reinstated as a matter of right within 1-year.

Request for Examination now due 4 years after Canadian/ PCT filing date (previously 5 years).

Reinstatement of abandoned patent applications no longer “as a matter of right” in every case.
Reinstatement deadlines and requirements will vary depending on the deadline missed and on the cause of abandonment. A showing of “due care” may be required for reinstatement. Applicants should avoid missing deadlines, particularly for maintenance fee and examination fee payments.

Introduction of third party rights.
Third party rights may now be triggered by abandonment/expiry of patent applications/patents and used as a defence to infringement, even where patent applications/patents are subsequently reinstated. Temporary abandonment during prosecution should be avoided in most cases to avoid triggering third party rights.

Maintenance fees for pending patent applications can now be paid by any party (not only the agent of record).
Applicants will have more flexibility in paying fees. However, there are some risks associated with using a third party, since the Patent Office will only notify one designated party of a missed payment or abandonment. We are still awaiting guidelines from the Patent Office regarding communications to be sent by the Patent Office to avoid accidental abandonment.

Simplified procedures for making amendments after allowance and for recording changes in Inventor names and Applicant names will be put in place.

What Stays the Same

• Fees remain largely unchanged (except no more fees for sequence listings)
• No claims fees
  -  Put all claims in one patent
  -  Use multiple dependencies
• Flexibility: claim amendments can be made at any time.
• Patent Prosecution Highway: about 37% of PCT-PPH applications and 26% of PPH applications are allowed without an office action. No fee.
• Patent term extension for pharmaceuticals (max. 2 years), and other CETA-based provisions are unchanged
• Problematic Voluntary Divisional Practice
• No Continuation-Type Practice
• 1-year grace period for disclosures by Applicant (based on the Canadian/ PCT filing date)

For more information, please contact Tuba Yamaç, Partner and Patent Agent or the Patent Team.