Canadian Patent Rules

CHANGES TO THE CANADIAN PATENT ACT AND RULES

Ef fective: 30 October 2019

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:

Maintenance Fees

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.

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