New Patent Laws for Canada: The Next Step in Canada’s IP Modernization Project

8 octobre 2019 | Karen Durell

( Disponible en anglais seulement )

Over the past several months, many of the Canadian intellectual property laws have been amended to comply with international treaties. Such treaties include the Madrid Protocol, the Singapore Treaty, the Nice Agreement, the Patent Law Treaty and the Hague Agreement. So far, amended trademark and industrial design laws have come into force in Canada. The last in this series of amendments is soon to be rolled out.

As of October 30, 2019, amendments to the Patent Act and Patent Rules will come into force in Canada. The new laws alter several functions in the patent process. Some of the key changes are discussed below.

Patent Office Communications

New categorizations of communications sent by the Patent Office will be implemented as of October 30th. These include Notices, Requisitions and Letters. Notices will indicate that an action is required to be undertaken by a patentee within a set period of time. Requisitions (e.g., Examiner’s Reports or other types of requisitions) will require a response within four months. Letters will provide courtesy information to patentees.

Patent Application Filing Requirements

The requirements as to what must be filed with a patent application will be altered somewhat to cause the patent application process to be more accessible to patentees. For example, failure to fully pay an application fee at filing will not cause the application to be rejected. Instead, the Patent Office will issue a Notice requiring that the fee and late fees be paid within three months. As another example, if the patent application is filed in a language other than English or French, a period of time will be allowed for a translated application to be filed.

PCT Filing Requirements

Under the new laws, a Canadian national phase PCT application may still be filed up to 42 months after the PCT priority date. However, if the national phase application is filed more than 30 months after the priority date of the PCT application, a request for reinstatement of filing rights must be filed with the national phase application. This request must include a statement that indicates that the failure to file within 30 months of the priority date was unintentional. The application must also be accompanied by a late fee.

Identification of a Common Representative

If a patent application indicates multiple applicants, the new laws require that one of the applicants be identified as the common representative. The common representative must either be appointed by the applicants or deemed appointed in accordance with patent laws.

Representation for a Patent Application

The Patent Office has amended the rules regarding the appropriate persons who can undertake particular activities in the patent process, opening some activities to persons who are not patent agents. The requirement that a Canadian patent agent be named for each patent application remains unchanged. However, certain activities, such as payment of some fees, may now be undertaken by any of a common representative, other applicants or another person authorized by any applicant.

Shortened Period to Request Examination

The new laws require that a Request for Examination of a patent application be filed by a shortened period of four years from the filing date of the application. Under the present laws a period of five years from the filing date is granted to file a Request for Examination. Other due dates have also been altered by the new patent laws.

Late Maintenance Fee

Under present patent laws, if a maintenance fee is not paid for a patent or a patent application by the due date, the patent or application will be deemed expired (patent) or abandoned (application) for a period of twelve months after the missed maintenance fee due date. The patent or application can be reinstated during the twelve-month period. The amended patent laws allot a period of time after a missed maintenance fee for the missed fee to be paid with a late fee. For example, the late fee period allotted for a patent is six months. Deemed expiry (for a patent) or deemed abandonment (for an application) will only occur if the maintenance fee remains unpaid after the allotted late fee period. In conjunction with this change, new consequences will be imposed upon a patentee who allows a patent to be deemed expired or an application to be deemed abandoned. Specifically, during the deemed expired or deemed abandoned period: (i) a due care standard must be met to reverse expiry of a patent or reinstate an application; and (ii) third parties may have rights to undertake actions that would otherwise constitute patent infringement.

Corrections to Patents

As of October 30, 2019, a twelve-month period will be allotted after a patent is granted for corrections to the patent either without a fee (for corrections to Commissioner’s errors) or with a fee (for other corrections). In light of this amendment, all granted patents should be reviewed in detail by a patentee to ensure that any errors in the granted patent are identified early. This should ensure that the corrections can be filed within the allotted time period.

We would suggest that you consult your patent agent for more details regarding these amended Canadian patent laws and the potential effects of such laws upon your patent portfolio.

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