Changes to Canada’s Patent Rules: Examiner’s Reports
January 14, 2020
On October 30, 2019, the new Canadian Patent Rules came into force. The new Patent Rules include a number of significant changes. One such changes relates to prosecution timelines.
Examiner’s Reports issued before October 30, 2019
For Examiner’s Reports issued prior to October 30, 2019, the time limit for response was fixed at six months. This time limit could not be extended.
For applications that received advanced examination status, the time limit for response was three months.
Examiner’s Reports issued on or after October 30, 2019
For Examiner’s Reports issued on or after October 30, 2019, the time limit for response is four months. This time limit does not change if an application has received advanced examination status.
Under the new Patent Rules, the time limit can be extended to six months at the discretion of the Patent Office. To obtain an extension, the Applicant(s) must request the extension before the four-month time limit, describe why an extension is justified and pay a prescribed fee.
For applications that receive advanced examination status, the advanced examination status will be lost if an extension is requested.
The Patent Office has not provided any guidance as to what circumstances will be accepted to justify an extension. As such, it is unclear how the Patent Office will handle requests of this nature and it is recommended that Applicants take measures to ensure Examiner’s Reports are addressed in a timely manner.
Information in this article is for information only. It is not, and should not be taken as, legal advice. If you have any questions relating to the issues discussed in this post, or any other intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.