Written by By Robert Irani and Michael R. Whitt, QC
On December 16, 2014, amendments to the Canadian Patent Act contained in Bill C-43, known as the Economic Action Plan 2014 Act, No. 2, received Royal Assent.
The amendments seek to fulfill Canada's undertakings to adhere to the Patent Law Treaty adopted in Geneva on June 1, 2000. The Treaty aims to simplify and harmonize administrative practices among national intellectual property offices with respect to the patent application process. In addition to Canada, the United States and the European Patent Organisation are among the 36 contracting parties.
The amendments to the Patent Act include provisions relating to:
- Filing formalities;
- Additions and incorporation by reference;
- Notification of unpaid fees;
- Reinstatement process;
- Restoration requirements;
- Intervening rights; and
Presently, the Patent Act requires that an application fee be paid at the time of filing a patent application in order to obtain a filing date. Under the current amendments to the Patent Act, a filing date will be awarded even if the application fee is omitted, so long as all other filing requirements are met. In such an instance, the Commissioner of Patents will notify the applicant to pay a late fee in addition to the application fee on or before the prescribed date.
The amendments to the Patent Act will also permit a patent application to be filed in a language other than English or French to receive a filing date. The translation into English or French will be a completion requirement. However, reasonable compensation to a patentee for any act that would have constituted an infringement would run only from the time that the English or French language specification became open to public inspection.
Additions and Incorporation by Reference
Currently under the Patent Act, no new descriptive or illustrative material may be added to a patent application as originally filed.
Under the amendments however, an applicant may be permitted to add material to the specification or drawings up to six months after the original filing date by submitting the addition to the Commissioner of Patents with a statement that the addition is being made. The filing date will be the date that the subject matter was added, unless the addition is completely contained in a previously filed application to which a request for priority is claimed, in which case the original filing date will be granted.
The amendments to the Patent Act also permit an applicant to file a statement up to six months after the original filing date that incorporates missing specification or drawings by reference to a previously filed application. In accordance with the amendments, if within the prescribed period, the applicant submits a statement to the Commissioner to the effect that a reference to a previously filed application is being submitted, the specification or drawing in the previously filed application is deemed to have been contained in the application on the date on which the Commissioner receives the statement.
Notifications of Unpaid Fees
The amendments to the Patent Act, introduce a notification regime whereby an applicant or patentee will be notified by the Patent Office if certain fees remain unpaid.
Under the amendments, if a patent application is filed without payment of the application fee, the Commissioner of Patents will send a notice to the applicant requiring payment of the application fee and late fee by a prescribed date.
If a maintenance fee for a patent or patent application is not paid on time, the Commissioner will send a notice requiring payment of the maintenance fee and late fee due, the payment to be made within the later of six months after the maintenance fee due date or two months from the date of the notice. Failure to do so will result in the deemed abandonment of a patent application or the term of a patent deemed to have expired.
If a request for examination or payment of the examination fee is not made on time, the Commissioner will send a notice requiring the filing of the request and payment of the examination fee and late fee within two months from the date of the notice. Failure to do so will result in the patent application being deemed abandoned.
A significant aspect of the amendments concerns the procedure which must be followed when a deadline is missed during the prosecution of a patent application or during the life of a patent.
Presently under the Patent Act, abandonment of a patent application occurs immediately after a deadline is not met, such as a deadline for the filing of a good faith response to an examination requisition or the payment of fees. As a matter of right, an applicant has the opportunity to reinstate an abandoned application by submitting a reinstatement request together with a fee within 12 months of the date of abandonment. Present reinstatement rules do not require any further explanation by the applicant and apply to all types of abandonment.
The amendments to the Patent Act introduce certain provisions for requesting the reinstatement of an abandoned patent application or for restoring the term of a patent which has been deemed expired. The time limit for reinstatement will be established in the Patent Rules but, for compliance with the Treaty, cannot be earlier than 12 months from the date of deemed abandonment or, in the case of the payment of a maintenance fee, 18 months from the prescribed due date for the payment of the maintenance fee.
The amendments to the Patent Act also incorporate additional requirements for the reinstatement of an abandoned application or the term restoration of an issued patent. In particular, an applicant or patentee will be required to state the reasons for the failure to take action in the request and the Commissioner of Patents must determine "that the failure occurred in spite of the due care required by the circumstances having been taken". The period and circumstances for this requirement is to be specified in the Patent Rules.
Under the amendments, however, the Federal Court may overturn the Commissioner's decision to remove a patent expiry or declare an application to never have been reinstated if the statement of reasons contains an untrue material allegation or the failure did not occur in spite of the due care required by the circumstances having been taken.
Restoration of Priority
Presently under the Patent Act, a request for priority to a previously filed patent application can only be made if the application is filed within 12 months of the filing date of that previously filed application.
Under the amendments, the 12-month priority period can be extended to 14 months on the basis that the failure to file within 12 months was unintentional.
However, the issue of whether the failure to file within 12 months was unintentional can be challenged in the Federal Court.
Presently, there is no specific provision in the Patent Act for third-party intervening rights for infringement of a patent during the time that a patent application might be deemed abandoned. Rather, the Patent Act provides that if a patent is issued, the patentee may obtain reasonable compensation for any otherwise infringing actions occurring once the application for the patent became open to public inspection. Consequently, a patentee does not suffer a loss of any rights of enforcement for infringement during a time period when the patent was not in force (abandoned or expired) until reinstated.
The amendments, however, introduce the concept of intervening rights in instances where a patent application is abandoned and reinstated or an expired patent is revived. Pursuant to the amendments, there would be no action of infringement against a person in respect of an act that would otherwise constitute an infringement of the patent, if that act is committed in good faith by the person during the prescribed period. It is presumed that such period will be the time an application goes abandoned or a patent expires, and the time the application is reinstated or the patent is no longer expired.
The amendments introduce new provisions related to transfers, formerly known as assignments, into the Patent Act.
Under the amendments, the Commissioner of Patents will record the transfer of a patent or patent application on the request of the patentee or applicant. Evidence will only be required in instances where the request originates from the transferee. Pursuant to the amendments, the fact of the transfer is registered, as opposed to the transfer document.
A transfer of an issued patent that has not been recorded is also void against a subsequent transferee, in instances where the transfer to the subsequent transferee has been recorded. The Commissioner of Patents can remove the recording of a transfer of either a patent or patent application upon receipt of evidence that the transfer should not have been recorded. However, with respect to an issued patent, the recording of the transfer cannot be removed for the reason only that the transferor had previously transferred the patent to another person. Registrations of security interests "by way of assignment" will be done similarly "by way of transfer".
The amendments to the Patent Act remove the requirements for non-resident applicants to appoint as a representative a person or firm residing or carrying on business in Canada. Any third party will also be permitted to attend to the payment of maintenance fees without needing to have a special capacity or appointment for representation.
The amendments to the Patent Act provide powers to the Governor in Council to make rules or regulations respecting the circumstances in which an applicant, patentee or other person may or must be represented by a patent agent or other person in business before the Patent Office. As such, the Patent Rules should clarify where representation is required and it is anticipated that certain post-grant procedures, such as reissues, re-examinations, corrections and disclaimers will be included.
The amendments also set out that a patent shall not be declared invalid for the failure to comply with an administrative requirement, such as the payment of maintenance fees, during the application stage.
The amendments to the Patent Act introduced in Bill C-43, received Royal Assent on December 16, 2014. The amendments will allow Canada to ratify the Patent Law Treaty. The amendments provide the authority of the Governor in Council to make regulations so as to implement the amendments to the Patent Act.
The date for the coming into force of the amendments to both the Patent Act and the Patent Rules will be established by way of Order in Council. The amendments to the Patent Rules are being developed in accordance with the regulatory amendment process and will be the subject of formal consultations.