On 30 October 2019, the new Canadian Patent Act and Rules came into force. This affects all Australian businesses with a Canadian patent. The changes are intended to streamline patent administrative procedures, make it easier for Canadian businesses to protect their innovation and to make Canada a more attractive destination for foreign investment.
In order to assist our clients, we have prepared below a brief summary of the major changes and included some recommendations Some of the highlights of the changes include:
Under the previous rules, only the Canadian Agent of Record could pay a maintenance fee on a pending patent application, whereas maintenance fees for granted patents could be paid by any party. In both cases there was a 12 month window during which the fee could still be paid after the due date (with a nominal surcharge). From now on, any party will be able to pay the fee on both patent applications and patents. Please note, if a fee is not paid within 6 months of the due date, third parties may be awarded certain rights to the claimed invention.
Deadline for Requesting Examination
Under the previous rules, examination had to be requested within five years of the Canadian or Patent Cooperation Treaty (PCT) filing date. If examination was not requested by the due date, there was a 12 month window during which examination could still be requested, along with a nominal surcharge. Under the new rules, for any application with a Canadian or PCT filing date on or after October 30 2019, the period for requesting examination will be shortened to four years from the filing date. An extension of time to request examination may be possible on request and payment of fees.
Deadline for Responding to Office Actions
Currently, Office Actions set a 6 month due date for response. This will be reduced to 4 months under the new Patent Act and Rules. Requests for an extension of time to respond must be made before the 4 month deadline and will be at the discretion of the CIPO.
New Post-Allowance Amendment Procedures
Substantive amendments to applications prior to 30 October 2019 can be made after allowance by permitting the application to become abandoned by not paying the final acceptance fee, and then opening the application up to further examination. From 30 October 2019, substantive amendments can only be made after allowance by requesting withdrawal of the Notice of Allowance. The request for withdrawal must be made prior to the due date of the final fee and the final fee must not have been paid. Once the request is made, any desired amendments can be submitted and the application will be subject to further examination.
PCT National Phase Entry Deadlines
For any application with a Patent Cooperation Treaty (PCT) filing date prior to 30 October 2019, national phase entry in Canada is due at 30 months from the earliest priority date, but can be extended to 42 months merely by paying a late fee. For any application with a PCT filing date on or after 30 October 2019, national phase entry in Canada will only be extended to 42 months by stating that failure to meet the 30 month deadline was unintentional and by paying a reinstatement fee.
Restoration of Priority
For applications filed on or after 30 October 2019, it may be possible to request “restoration” of priority to an earlier application filed within the preceding 14 months. A request for restoration of priority must include a statement indicating that the failure to file the application within 12 months was unintentional, no reasons need to be provided.
Certified Copy of Priority Document
Currently, a certified copy of the priority document is only required if requested by an Examiner during prosecution. Under the new changes, for any application with a Canadian or PCT filing date on or after 30 October 2019, certified copies of priority documents will be required. The exception to this change is that if the certified copy provision was satisfied at the PCT stage, there is no requirement to furnish a certified copy to CIPO.
Recommended Actions for Clients with Canadian patents
– – To avoid loss of rights, check the due date of maintenance fees and pay accordingly to avoid the potential loss of rights.
– – Be diligent when reviewing accepted claims to avoid further costs for post-allowance amendments.
– – Review the practices set out in the Manual of Patent Office Practice (MOPOP), which are the Canadian Intellection Property Office’s interpretation of the Patent Act, Patent Rules. http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00720.html
– – Contact your Wrays patent attorney if you have any questions on how this may affect your application or patent
Wrays is one of the largest independent IP specialist firms in Australia – bringing together the right combination of experts to protect, grow and defend our client’s intellectual property assets locally and globally for more than 90 years. And when you combine our passion for achieving the best result with our broad capability across the IP spectrum, it’s our clients who enjoy the benefits. In day-to-day reality, this means bringing the right people in the room every time and working together across disciplines to deliver what’s needed. It doesn’t stop there. Through our extensive local and global networks, we can connect clients with like-minded experts who deliver supporting services, such as private equity, tax advisors, corporate and employment law, as well as IP specialists around the world servicing other jurisdictions.