One Step Closer to Significant Changes in Canadian Patent Law - CIPO Publishes Revised Version of Amended Patent Rules

December 14, 2018

By Sam Frost and Patricia Folkins

 

On December 2, 2018, the Canadian Intellectual Patent Office (CIPO) published a revised version of its proposed new draft Patent Rules in the Canada Gazette, Part 1. As we previously reported, CIPO published a first draft version of their proposed amendments to the Patent Rules on August 3, 2017. This most recent version of the Rules includes changes made in consideration of comments provided during the public consultation period following the release of the first version.

Background

As a quick refresher, the Canadian Patent Rules are being amended to primarily implement the changes made to the Canadian Patent Act to comply with the provisions of the Patent Law Treaty (PLT), to which Canada became a signatory in 2001. We provided a detailed description of the proposed changes to the Rules in two articles published on November 9th and 10th, 2017.

Changes made to the draft Rules

Many of the changes made to the first version of the proposed Rules are relatively minor. For example, the sections have been re-organized so that fee provisions are located alongside their corresponding Rules.

Perhaps one of the most significant changes to the updated Rules is the addition of greater detail to the transitional provisions. These provisions are quite complex, dealing with three categories of applications/patents by filing date. For practical purposes, the transitional provisions mainly concern category 3 applications/patents, which are those with a filing date on or after October 1, 1996 but before the coming into force date (CIF) of the new Rules. We will be publishing a future article where we will describe the transitional provisions in greater detail.

Other changes of note are as follows:

  1. The deadline for requesting examination is changed from 3 years to 4 years from the Canadian Filing Date;
  2. The requirements for late national phase entry are amended to remove the requirement for “a statement of the reasons for the failure to enter” by 30 months and “the Commissioner determin[ing] that the failure was unintentional”. A statement that the failure was unintentional is still required;
  3. The Rules now provide that the Commissioner can extend certain periods of time “whether that period has expired or not”;
  4. A new section clearly indicates that requests for restoration of priority under Rule 26bis.3 of the Regulations under the PCT are effective in national phase applications filed in Canada;
  5. The term “division date” is replaced with “presentation date”;
  6. A definition for “national phase entry date” is added and the definition of “PCT national phase application” is amended to include those applications that entered the national phase under the previous Rules;
  7. A provision that revoked “special order status” if a notice of allowance is withdrawn is deleted;
  8. A section is added that sets the prescribed time for making a request for restoration of priority in a PCT national phase application at 1 month after the national phase entry date of the application. This compares with a prescribed time of 2 months from the filing date of a non-PCT application;
  9. The prescribed time for requesting reinstatement for all reasons for abandonment of an application is set to 12 months from the day on which the application for a patent is deemed to be abandoned;
  10. The requirement to provide reasons that information cited in corresponding foreign patent applications is not known to the application is removed;
  11. The prohibition on introducing claims into an original application, when those claims were the subject of a divisional application that resulted from the division of that original application, is deleted;
  12. As a clarification, a communication sent by the Commissioner to an email address is deemed to have been sent only where the person “authorizes the sending of communications to that address” and does not apply if “the communication is withdrawn”; and
  13. The requirement for “consent” is introduced when someone other than a patent agent is submitting documents to appoint a patent agent, to address possible conflict issues.

Next Steps

There is now a further period of time, which expires on December 31, 2018, for comments to be submitted on the latest revised Patent Rules. The government is projecting a publication of the final Rules later in the summer 2019 with a coming into force date of fall 2019. Therefore, we are taking this time to digest all of the nuances of the amendments to the Patent Rules and will be providing updates in future articles about the necessary steps that applicants should be taking in preparation for what will be significant changes to patent practice in Canada.

 

 

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):

H. Samuel Frost H. Samuel Frost
B.A. (Eng. Sci.), M.Sc. (Nucl. Eng.)
Partner
905.817.6100  
Patricia Folkins Patricia Folkins
B.Sc. (Honours Chem.), Ph.D. (Org. Chem.)
Partner
905.817.6101