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Executive Summaries Oct 21, 2019

Countdown to October 30 Canadian Patent Rule Changes – Action Needed?

As discussed in our recent article, a new set of Canadian Patent Rules and related amendments to the Patent Act are coming into force on October 30, 2019, bringing with them a number of changes in Canadian patent practice.

Read our article here.

As we transition to these new Rules, it is important that applicants of Canadian patent applications and Patent Cooperation Treaty (PCT) applications be ready for these changes so as to avoid any potential loss of rights. In this newsletter, we focus on a few specific changes that will be of particular interest to such applicants.

Deadline for Entry Into the National Phase

Currently, PCT applications are allowed delayed entry into the national phase in Canada up to 42 months from the earliest priority date of the application simply by paying a late fee (CAD $200) for missing the regular 30-month deadline. This oft-used delayed entry procedure will be considerably more restrictive as of October 30, 2019.

Notably, under the new Rules, delayed national phase entry for PCT applications filed on or after October 30, 2019 will require the applicant to pay the late fee and, in addition, submit to the Patent Office a request for reinstatement of rights with regard to the PCT application and a statement that the failure to meet the 30-month deadline was unintentional. Delayed national phase entry will thus no longer be able to be part of an intentional strategy, but rather reserved for cases in which the 30-month deadline was missed by mistake.

In light of this change, it will be important for applicants of PCT applications filed on or after October 30, 2019 to enter the national phase in Canada within 30 months from the earliest priority date. In addition, if the filing of a PCT application is foreseen in the near future and protection in Canada will be sought, it is clearly preferable to file the application prior to October 30, 2019 so as to have the option for “intentional” delayed entry into the national phase offered under the current Rules.

Restoring Priority

As it stands, a Canadian application (or the national phase entry of a PCT application) cannot have a right of priority restored if it is filed beyond 12 months from its priority date. For instance, if a PCT application is filed beyond this deadline but its priority is restored during the international phase, the restored priority will not be recognized in Canada. This practice will change under the new Rules for applications filed on or after October 30, 2019. This includes national phase entries of PCT applications filed on or after this date, as well as divisional applications having a parent filing date on or after this date.

Notably, a restoration of priority done during the international phase of a PCT application will be recognized in Canada if the request to restore priority in the PCT application was filed within 14 months from the priority date.

In addition, it will be possible to effect the restoration of priority during the national phase of PCT applications as well as for regularly filed Canadian applications by submitting to the Patent Office a request including a statement that the failure to file the application within 12 months from the priority date was unintentional. It should be noted that the Federal Court can reverse a restoration of priority if it finds that the failure to meet the deadline was actually “intentional”.

The deadline for requesting restoration of priority will be 1 month from the date of entry into the national phase or 2 months from the filing date for a regularly filed Canadian application (which must be filed within 14 months from the priority date). However, it should be noted that for national phase entries, the request for priority and the priority application information must be submitted by the earlier of (i) 1 month from the date of entry into the national phase and (ii) the later of (a) 16 months from the earliest priority date and (b) 4 months from the filing date of the PCT application.

In view of the above, it is highly advised to seek restoration of priority during the international phase for PCT applications whenever possible.

Correcting Errors in Identity of Applicants and Inventors

Section 8 of the Patent Act allows for the correction of so-called “clerical” errors in a patent application or patent at the discretion of the Patent Office. Although there can be some contention as to what exactly constitutes a clerical error, the Courts have stated it is an error “arising in the mechanical process of writing or transcribing”. On October 30, 2019, this section of the Patent Act will be repealed and new procedures will be provided under the new Rules for correcting specific types of errors in accordance with different deadlines. In particular, as of October 30, 2019, irrespective of the filing date of an application:

Errors in the name of an applicant or an inventor, where rectification of the error does not change the identity of the applicant or inventor, will be correctable by submitting a request on or before the day of the payment of the final fee.

Errors in the identity of an applicant will be correctable before a transfer is recorded and (i) up to 3 months after the date of entry into the national phase or (ii) up to the date of publication of the application for regularly filed Canadian applications. In order to correct this type of error, the applicant will have to submit a request containing a statement that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention.

Errors in the identity of an inventor will be correctable upon the submission of a request prior to the date of emission of a notice of allowance.

Therefore, it is strongly recommended to fix any error in the identity of an inventor early on, in case the application is allowed in quick order.

Maintenance Fees

Under the new Rules, payment of maintenance fees for pending applications will no longer be restricted to Canadian patent agents of record. Instead anyone will be allowed to pay a maintenance fee for a pending application (as well as for a granted patent as was already the case). A new procedure for dealing with missed maintenance fees due on or after October 30, 2019 will also be in effect, irrespective of the filing date of an application or patent.

Notably, if a maintenance fee is not paid in time, the Patent Office will issue a late notice and the maintenance fee and an additional CAD $150 late fee will have to paid within the later of (i) 2 months from the notice and (ii) 6 months from the original deadline. For pending applications, if the new “extended” deadline is missed, the application will be considered abandoned as of that date, whereas for granted patents, if the extended deadline is missed, the patent will be considered expired as of the original maintenance fee due date.

While greater flexibility is afforded to the applicant by allowing the payment of maintenance fees by third parties, it should be noted that missing a maintenance fee payment will be of particular risk as reinstatement will no longer be available as a “matter of right” and will instead require a showing of “due care”. In view of the new requirements for reinstatement along with the introduction of third party rights (which will be discussed in an upcoming newsletter), it is highly advisable that applicants avoid missing maintenance fee payments.

If you have any questions about these changes, please contact a member of our Patent Team.

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