Written by Roseann Caldwell and Peter Wong
On October 30, 2019, the final stage of the new Canadian Patent Law will come into force. There will be many changes to Canadian Patent Law and practice.
- elimination of as of right, late Patent Cooperation Treaty (PCT) National Entry into Canada, where national entries in the 30 to 42 month period will only be accepted if the delay is unintentional;
- new provisions relating to priority claims, including the requirement to file certified copies where they haven't already been filed in the PCT, the opportunity to restore a priority claim and to add omitted content based on a priority application;
- introduction of a "due care" assessment for reinstatement of abandoned applications;
- shorter periods for requesting examination and for responding to Patent Office notices and requisitions;
- improved amendment after allowance process; and
- easier processes regarding transfers of ownership.
PCT National Entry and Regular Filings in Canada
The upcoming amendments will change some filing requirements:
"Unintentional" Standard Applied for Late National Entry
The as of right, late PCT National Entry into Canada will no longer be available. Instead, for PCT applications filed after October 29, 2019, if the Request for Canadian National Entry is not made by the 30-month deadline, late National Entry will only be possible if, in the following 12 months the Entry is requested along with a request for reinstatement of rights, a statement that the failure to file within the 30-month period was unintentional and the filing and reinstatement fees.
The new rules introduce a number of important changes regarding the filing of translations, if the patent application to be filed is not already in English or French.
The rules introduce differences between PCT and regular filings regarding the need for a translation. Specifically, Canadian PCT National Entry requires the translation to be filed before 30 months from the PCT priority date. However, after October 29, 2019, a regular patent application can be filed in a language other than English or French, provided a translation is filed shortly thereafter.
Regardless of whether the application is directly filed to Canada or through the PCT, the Canadian Office will only permit amendments that can be reasonably inferred from both the original language application and the translation.
Certified Copy of the Priority Document
For applications filed after October 29, 2019, a certified copy of the priority document will have to be filed or made available through World Intellectual Property Organization Digital Access Service at the time of PCT National Entry or, if a regular application, by the later of 16 months from the earliest of the priority date claimed or 4 months from the Canadian filing date. This requirement does not apply if the priority document is a previously filed Canadian patent application.
Restoration of Priority
For applications filed after October 29, 2019, it will be possible to request restoration of priority rights, thus allowing applications to be filed later than 12 months priority period after the filing date of a priority application, provided that certain requirements are met. For regular filings, the application must be filed and the request must be made within 14 months of the earliest priority date, and the failure to meet the 12 priority period filing deadline must have been unintentional. For PCT applications, a request made during the international phase will be effective in Canada. For PCT applications, the request can also be made within one month after national phase entry, but the failure to meet the 12 month priority period filing deadline must have been unintentional.
Due Care Requirement for Reinstatement
A due care standard will be adopted for restoration of rights in respect of certain missed deadlines, as follows:
Annual Maintenance Fees
If a maintenance fee is not paid on time or within 6 months of the filing date anniversary, the maintenance fee can only be paid within a further 12 months if the Commissioner determines that the failure to pay the maintenance fee occurred in spite of due care having been taken in the circumstances.
Request for Examination
For applications where a request for examination comes due on or after October 30, 2019, and where the request for examination and examination fee are not filed by an original deadline, the Commissioner will issue a notice to make a request for examination, pay the examination fee and pay a late fee. If the request for examination and examination and late fees are not filed within 2 months from the notice (the late fee period), then the application will be deemed abandoned. The application can be reinstated as of right within 6 months of the original deadline. Thereafter, the abandoned application can be reinstated within 12 months from the end of the late fee period, only if the Commissioner determines that the failure to file the request for examination, the examination fee and the late fee occurred in spite of due care having been taken in the circumstances.
Due Care Standard—General Comments
In each case, the evidence of due care must be filed with the request for restoration of rights.
The due care assessment is made by the Commissioner. The Canadian law does not define what is "due care". As such, what will be considered due care is currently unknown. Early indications are that attorney error may not be considered as a situation meeting the due care standard. The law provides that the Commissioner's determination in respect of due care can be challenged in Federal Court. Therefore, there is significant risk in any situation that relies on due care. You may wish to consider the value of specific standing orders to avoid failures that lead to a due care assessment.
Many deadlines established after October 29, 2019, will be shortened compared to the current time frames. Some of the most notable changes are as follows:
Request for Examination
For applications with a Canadian filing date after October 29, 2019, the deadline for requesting examination is now 4 years from the filing date instead of the previous 5 years. Failure to timely request examination leads to a complicated process for late payment and possibly the application of the due care standard noted above.
Response to Office Action
All office actions issued after October 29, 2019, will have only a 4-month time period for response. A request for extension of time can be filed before the 4-month deadline to secure an extra 2 months for response. Failure to respond by the 4 month, or by the extended 6-month deadline, will start a period for reinstatement of 12 months.
Term for Issue Fee Payment
All Notices of Allowance issued after October 29, 2019, will establish a 4-month deadline for payment of the final fee. Failure to pay the issue fee by the deadline will start a period for reinstatement of 12 months from the 4-month deadline.
Amendment after Allowance
In response to a Notice of Allowance issuing after October 29, 2019, prosecution of the application can be re-opened upon payment of a fee, before payment of the issue fee.