Patent Rule changes | Brion Raffoul - Intellectual Property Law

By Stacey Dunn and Dominique Lambert

Recent implementation of the Patent Law Treaty has required Canada to update its Patent Rules. While the expected changes will modernize patent laws and their administration, patent owners should be mindful of some of the anticipated pitfalls.

Filing Dates

Under the new Rules, an Applicant can obtain a filing date by submitting: an indication that a Canadian patent is sought; the Applicant’s information; and a document describing the invention in any language. A translation of the invention description document into English or French and the filing fee may now follow at a later date.

Late translations and late filing fees do not apply to PCT national phase applications.

Furthermore, Applicants may now obtain a filing date on a holiday or on the weekend as electronic communications will be deemed received on the day they are submitted, even if the Patent Office is closed.

Priority Claims

If the priority claim requirements are not complied with, the priority claim will merely be disregarded rather than being deemed abandoned.

Priority documents now must be certified copies.

Certified copies of each priority document must be submitted or made available through an acceptable digital library. This requirement will not apply when the priority document is an earlier Canadian application or a national phase application that already satisfied its PCT priority document requirement.

Restoration of Priority Claim

The Office will now provide a two-month extension beyond the twelve-month period for claiming priority. Applicants may now file an application up to fourteen months from the earlier filed application and restore priority.

The two-month extension is available only if the delay was unintentional.

Streamlined Process for Amending an Application After Allowance

Applicants are no longer required to withhold paying the final fee to let an application go abandoned to re-enter examination. The new Rules allow for requesting a Notice of Allowance to be withdrawn, after which the Application re-enters Examination and the Application may be amended.

Timelines for responding to an Office Action or Notice of Allowance have been shortened to four months (from six), and the deadline for requesting examination has been shortened to four years (from five).

Notice Required from Patent Office Prior to Abandonment

Under the new Rules, an Application will not go abandoned for failure to pay maintenance fees or to request examination without prior notification of a deadline. A notice letter will be sent establishing a deadline of the later of six months from the missed deadline or two months from the notice date.

If a maintenance fee deadline is missed, the new deadline may not be known until the late notice has been issued by the Office.

42 Month Deadline for National Phase Entries is No Longer “As of Right”

The twelve-month deadline extension for entering national phase in Canada after the thirty-month deadline is not available “as of right”.

Late entries now require a statement that the failure to enter by the thirty-month deadline was unintentional.

While these changes are a step in the right direction for patent practice, Patent Applicants should be aware of the tightened timelines and additional requirements coming into force within the year.

If you have any questions regarding the new Rules, please do not hesitate to contact us at [email protected].