Ghosts and Goblins Beware - Major Changes in Patent Practice in Canada to Take Effect on October 30, 2019

July 22, 2019

By Patricia Folkins

On July 10, 2019, the Canadian government published the final version of the new Patent Rules in the Canadian Gazette, Part II. Importantly, it was announced that the new Rules, and therefore corresponding amendments to the Patent Act, will come into force on October 30, 2019. A summary of the major changes being brought in by the amended Act and Rules can be found in our articles; here, here and here.

The final version of the Rules saw only a few significant changes from the previous version, perhaps most noteworthy being that the time limit for requesting correction of obvious errors in a patent has been extended from 6 months to 12 months after the issue date and that having language in sequence listings in a language other than French or English is acceptable. Otherwise, the changes include minor wording modifications, correction of typographical errors and clarifications in certain sections.

Patent Applicants and their representatives in Canada should now be busy adjusting their practices to get ready for all of the changes. Some recommendations for how to best to prepare are as follows:

  • Start preparing dockets and reminder correspondence to refer to the new deadlines for requesting examination, responding to office actions and paying the final fee (4 years from filing date, 4 months from office action date and 4 months from notice of allowance date, respectively)
  • Start preparing dockets and reminder correspondence for shortened time periods for reinstating your patent application or patent after abandonment/lapse due to missed maintenance fee payments and missed examination requests (maximum 6 months after missed due date in view of due care requirements and third party rights)
  • Expect to make a final decision on filing a national phase application in Canada 30 months from the priority date for all PCT applications filed on or after October 30, 2019 to avoid having to address the unintentional standard for missing this date (if you have a due date to file a PCT application that is close to this date, consider filing before October 30th to leave the option of a 42 month national phase entry date (as a matter of right) open)
  • Initiate practices to review all patent application filing documents and issued patents carefully and quickly after they are received as deadlines to make corrections have been shortened
  • Add Canada to your lists of countries where a request for restoration of priority can be made for Canadian applications with a filing date after October 30, 2019
  • Be diligent about filing a certified copy of the priority document in your PCT applications and be prepared to provide a certified copy of the priority document when filing Paris Convention applications in Canada
  • For patent applications with long sequence listings, consider delaying allowance until after October 30, 2019 if possible to avoid paying excess page fees for the listing

Our Patent Practice Group has been diligently staying on top of all of the upcoming changes to patent law and practice in Canada and would be pleased to answer any questions or concerns that you have to make the transition as smooth as possible - and to avoid any “horror stories”.

 

Information on this website is for information only. It is not, and should not be taken as, legal advice. You should not rely on, or take or not take any action, based upon this information. Professional legal advice should be promptly obtained. Bereskin & Parr LLP professionals will be pleased to advise you.

Author(s):

Patricia Folkins Patricia Folkins
B.Sc. (Honours Chem.), Ph.D. (Org. Chem.)
Partner
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