Proposed Amendments to the Patent Rules
October 12, 2017
The Canadian Intellectual Property Office (CIPO) recently engaged in public consultation on proposed amendments to Canada’s Patent Rules. The proposed Patent Rules, once implemented, will allow the coming-into-force of amendments to Canada’s Patent Act which, amongst other things, will allow Canada to ratify the Patent Law Treaty (PLT).
The coming-into-force of the changes to the Act and Rules (“the upcoming changes”) may be expected at some time in 2019. In the interim, however, several aspects of the upcoming changes are worth highlighting as they may motivate changes in Canadian filing and prosecution strategy.
Changes to Time Limits
There is a significant focus in the upcoming changes on reducing application pendency. The upcoming changes will reduce the time limits for requesting examination and for responding to office actions.
The time limit for requesting exam will be reduced from five years to three years. Notably, if, as expected, this reduced period is only applicable to cases filed after the transition, the Patent Office may experience a “double cohort” of filings for which exam is requested in the 2022 time frame which could, potentially, lead to a backlog at the office. Accordingly, applicants may consider requesting examination before the five-year mark for current cases in order to avoid their cases becoming mired in any delays at the Patent Office should they materialize.
There will also be a change in the timeline for responding to most office actions, with the deadline for responding to Examiner’s requisitions being standardized at four months as compared to the six-month deadlines currently applicable in most cases. Extensions of time may be available if circumstances justify and an appropriate fee is paid.
At present, in Canada, priority can be claimed to an earlier filing without the need to submit a certified copy of that priority application. Under the proposed changes, certified copies will be required unless the application is made available in a digital library.
At the same time, Canada will also allow restoration of the right of priority where a subsequent application is filed within two months after the expiration of the twelve-month priority period provided the failure to file the application before the expiration of the priority period was unintentional.
Currently abandonment of a Canadian patent application is, in most cases, relatively innocuous, with reinstatement available as-of-right within 12 months of the deemed abandonment. This is a relief to many applicants as, under the present regime, abandonment can in some cases occur without notification.
Under the upcoming changes, applicants will be provided with a notification of a required action and time to take that action prior to the application going abandoned. However, the consequences of allowing an application to go abandoned will be greater. In some circumstances, it will be necessary for an applicant to show “due care” was taken in order to reinstate and abandoned application and rights may be afforded to certain third parties who begin using the invention during a period of abandonment.
National Phase Entry Deadline of 30 months
At present, Canada allows for National Phase Entry beyond the 30-month deadline at up to 42 months beyond the priority date as of right by simple payment of a late fee. Under the proposed changes this option will be eliminated. A strict deadline of 30 months will apply unless the Commissioner of Patents can be satisfied that the failure to timely enter national phase was unintentional.
Amendment after Allowance
Prosecution of Canadian patent applications ends with the issuance of a Notice of Allowance. After that, only compliant amendments that do not require further search can be permitted. As such, in cases where broader amendments are required such as, for example, the introduction of the claims of a related foreign divisional or continuation application, it is necessary to allow the application to go abandoned for failure to pay the final fee so that it can then be reinstated, this having the side-effect of reopening prosecution. With the changes to restrict reinstatement this procedure will no longer be viable; however, the upcoming changes will also make it unnecessary: under the new Rules upon the payment of an appropriate fee, a Notice of Allowance may be deemed never to have been sent allowing further amendments and subjecting the application to further examination.
This is a brief overview of some of the proposed changes to Canada’s Patent Rules. Other changes include refinements clarifying some aspects related to the definition of a Small Entity, new provisions related to correction of errors including missing parts, and changes in the requirements to obtain a filing date including the introduction of reference filing.