Beware of Traps in the New Canadian Patent Rules

“Patent owners and practitioners should be aware of key changes coming to the Canadian patent regime by October 30, 2019.” Government of Canada is changing the current Patent Act and Patent Rules to modernize the Canadian patent regime. The current Patent Rules will be replaced with a new set of rules (the “New Rules”), which will come into force on October 30, 2019.

Below, we discuss some traps to watch out for when patenting in Canada under the new laws.

1. Changes to Patent Cooperation Treaty National Phase 42-Month Safe-Haven

Most countries have limited or no extensions to the national phase entry deadline under the Patent Cooperation Treaty (PCT). Canada has been traditionally used as a fallback jurisdiction when late national phase entries are desired after the national phase entry deadline.

Under the New Rules, national phase entry in Canada is still allowable up to 42 months from the priority date of the PCT application, but the applicant will have to submit a statement to the Canadian Intellectual Property Office (CIPO) that failure to enter the national phase by the 30-month deadline was “unintentional”.

2. Changes to Reinstatement Process

The previous rule had allowed applicants to reinstate an abandoned application without prejudice within 12 months by simply paying a fee. Some reinstatements will no longer be “as of right.” Notably, reinstatement will require a showing of “due care” in regard to: (1) applications abandoned for failure to pay a maintenance fee or to request examination, or (2) patents expired for failure to pay a maintenance fee.  The definition of “due care” is presently unclear but is likely to require a higher level of diligence than “unintentional”.

3. Shortened Response Timelines

The New Rules reduce the time limit to: (1) request examination from five years to four years from the filing date; (2) respond to an examiner’s requisition from six months to four months from the date of the examiner’s requisition, with a possible two-month extension; and (3) pay the final fee from six months to four months from the date of the notice of allowance.

4. Avoid Informal Translations

When entering the national phase, a translation of the specification in English or French must be provided within three months of notice from CIPO or the application will become abandoned. The translated specification replaces the existing specification.

Any subsequent amendment must be reasonably inferred from the translated specification. It is therefore important to ensure accurate translations.

5. File Wrapper Estoppel

There was no (or very little) file wrapper estoppel in the previous patent regime.  Under recent amendments to the Patent Act, which are in force as of December 13, 2018, written communication that is: (1) prepared for the prosecution of a patent application, and (2) is between the applicant and CIPO, may be relevant to claim construction. Notably, written communications from CIPO to the applicant may affect claim construction. Arguments and responses should be carefully crafted in order to avoid potentially damaging admissions.

6. Submission of Priority Application

Under the New Rules, for a new application, a certified copy of the priority document must be submitted or made available in a digital library. If the certified copy is not submitted, a notice will be sent having an additional two month deadline.

As an additional trap, the certified copy must be submitted prior to requesting early publication. Early publication is a mandatory part of expedited exam, which is a common strategy in Canada.

7. New Third-Party Rights

Under the New Rules, third-party rights may accrue during a time period after certain deadlines are missed, even if the application is subsequently reinstated. Third parties may commit activities that would otherwise constitute an infringement and may be protected against infringement proceedings.

As well, some recent amendments to the Patent Act expanded the prior use defense. If a person, in good faith, and before the priority date, committed an act that would infringe the patent, then it is not an infringement of the patent if the person commits the same act on or after the priority date.

Not All Scary

Be wary of traps that could affect your practice, and ensure your deadlines are updated in preparation of the changes by October 30, 2019. Not all of the changes involve traps, however. There are many more changes to the Patent Rules, some of which can benefit the applicant. For example, the applicant now has the ability to restore a priority claim for an additional two-month grace period, when the usual 12- month priority deadline is missed unintentionally (totaling 14 months).

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Join the Discussion

4 comments so far.

  • [Avatar for TFCFM]
    September 10, 2019 02:03 pm

    Thank you very much, Mr. Mak.

  • [Avatar for Benjamin Mak]
    Benjamin Mak
    September 10, 2019 10:47 am

    1) The officially published copy will not suffice. The certified copy must be of the actual application, requested from the U.S. Patent Office.
    2) In your scenario, the US provisional application from PAIRS is not considered to be available in a digital library. You need to submit the access rights using the Digital Access Service at the PCT stage, or alternatively simply submit the certified copy at the PCT stage.

    Benjamin Mak

  • [Avatar for TFCFM]
    September 10, 2019 10:01 am

    Thank you for the update. May I request one clarification? You write:

    Under the New Rules, for a new application, a certified copy of the priority document must be submitted or made available in a digital library.

    Does an “officially published” copy of a priority application suffice as a “certified copy.”

    For example, suppose a U.S. non-provisional application is claimed as the sole priority application and has been published by the USPTO (e.g., by requesting early publication) by the time the Canadian application claiming priority is filed. Must a certified copy of the already-published U.S. application still be obtained, or will the official publication suffice?

    As long as I have your attention, let me propose a second, surely common, scenario:

    An international application claims priority to a US provisional application. The US provisional application is never published, but becomes electronically available for public inspection upon publication of the international application. In due time, a Canadian national phase application is filed, claiming priority to the US provisional application (the provisional is electronically available to the public by the time of Canadian national phase entry). Is the US provisional application considered “available in a digital library,” or must a certified copy of that provisional application be obtained and submitted?

  • [Avatar for Daniel Hanson]
    Daniel Hanson
    September 10, 2019 09:43 am

    This was a very nice discussion, and helpful to those who need to have some familiarity with Canadian practice.

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