Canadian Patent Rules
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
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