A Practical Guide to the transition to Canada’s new Patent Act and Rules Part I

September 5, 2019
By Sam Frost

In 2014, Canada’s patent law was amended to implement Canada’s obligation under the Patent Law Treaty (PLT), but implementation awaited drafting of amended Patent Rules. The Patent Rules have now been finalized, and amendments to both the Patent Act and Rules will come into force on October 30, 2019 (CIF).

This series of articles will cover the most significant amendments that affect users of the system, and in the transition to the new regime, will discuss options available to Applicants.

Many of the provisions of the PLT are intended to make the law and procedure more forgiving, e.g. by reducing the minimum requirements necessary to file a patent application and obtain a filing date, and by ensuring that whenever some action is missed, a patent applicant or patentee is given some form of notice and/or an opportunity to make a correction. An unfortunate effect of implementing the obligations under the PLT is that many of the provisions in the Patent Act and Rules have become more complex. Timelines for making some corrections are shorter, calculation of due dates is more complex, and new concepts of “due care” and omissions being ”unintentional” have been introduced, with the exact scope of these concepts not yet clear.

This article addresses the requirements for filing a direct, non-PCT national phase Canadian patent application (a later article will address PCT national phase applications), and factors to consider in deciding to file before or after the CIF date of October 30, 2019. Patent applicants should first bear in mind that each claim will bear a claim date that is either the Canadian filing date or the filing date of priority application, so delay in filing may impact claim dates.

The important points for applications filed before the CIF date are:

  1. The basic requirements to establish a filing date are stricter;
  2. There is no requirement to file a certified copy of a priority application;
  3. The period for requesting examination is 5 years from the Canadian filing date; and
  4. There is no restoration of priority available.

For applications filed on or after the CIF date:

  1. The minimum requirements to obtain a filing date are simply: an indication that a patent is sought; a document in any language that appears to be a description; and information identifying the applicant and enabling the applicant to be contacted;
  2. Reference can be made to a previously filed application, instead of providing a description;
  3. The specification, or application to which reference is made, need not be in English or French on filing, but a translation will be required later;
  4. The translation must not to include any matter not reasonably to be inferred from the original document, and any subsequent amendment must be reasonably inferred from both the original document and the translation;
  5. The filing fee can be paid later with a penalty fee;
  6. Additions to the specification and drawings will be permitted, but note that:
    a. If the addition is not disclosed in an earlier application, then filing date will not be earlier than the date of filing the addition;
    b. If the addition is contained in a priority application and appropriate request made then addition deemed to be contained in the application as filed.
  7. Examination must be requested within 4 years from the Canadian filing date;
  8. A certified copy of a priority application will now be required;
  9. Restoration priority, after the standard 12 month period, is available if the failure to file within the 12 month period was ‘unintentional’;
  10. Where there are joint applicants, there are complex rules determining the identity of a common representative.

For divisional applications, the basic requirements, while revised, are broadly similar to those now in force. Divisional applications from currently pending applications must have an examination request filed within the later of 5 years from the filing date or a set term from the divisional’s presentation date, even if the presentation date is on or after CIF. Where the presentation date of such a divisional application is close to the end of that 5 year term, there is some small advantage in filing the application before CIF, since the set term will then be 6 months from the presentation date; the set term will be only 3 months from the presentation date for divisional applications filed on or after October 30, 2019.

Maintenance fees continue to be payable on the same schedule as currently in force.

In view of these changes, applicants looking to file a patent application near to the CIF date should carefully consider whether it is better for the application to be governed by the current Act and Rules or the new Act and Rules.

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