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.
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.
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:
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.