CIPO Consultation on Proposed Patent Rule Amendments to Implement Amendments to Patent Act – Eight Things You Need to Know

August 3, 2017

By H. Samuel Frost

The Canadian Patent Rules are being amended to enable implementation of various outstanding amendments to the Patent Act. Together, the amendments to both the Act and the Rules ensure Canada’s compliance with the Patent Law Treaty. These amendments, generally introduce provisions that are user-friendly for Patent Applicants and their Representatives. Some highlights of the proposed changes to the Patent Rules are summarized below. It is expected that these changes, to both the Act and Rules, will come into force sometime in 2019.

Eight things you need to know about the Canadian Patent Rule Amendments

1. Filing Requirements
Requirements to secure a filing date are being simplified and, for example, a filing fee will no longer be needed to establish a filing date. To obtain a filing date, an application will only need to include: (i) applicant information; (ii) a description; and (iii) an indication that the elements are intended to be a patent application. The description may be in a language other than English or French, but a translation will have to be filed later. Further, it will be possible to refer to a previously filed application by number, in order to incorporate subject matter from that application.

2. Missing Parts
Applicants will be able to submit missing parts of an application after filing. This will enable the addition of drawings and other missing elements. Where the missing parts are contained in the prior application from which priority is claimed, then the missing parts can be added to the application and the filing date maintained; otherwise, the filing date will be the date on which the missing parts are received.

3. Claiming Priority
Currently certified copies or priority documents do not have to be provided. Under the new Rules it will be mandatory to submit a certified copy, or make it available through a digital library. PCT National phase entry applications will not require resubmission of the priority document. As current practice, translations of priority documents will only be required, in response to an Examiner’s notice requesting the same.

4. Restoration of Priority
Making a late priority claim, up to 16 months from the priority date, and correction of various details of a priority claim will now be possible. The Patent Office will apply the unintentional standard for restoration of a priority claim.

5. PCT National Phase Entry
The current option of late entry up to 42 months from the priority date simply by paying a ‘late fee’ will be removed. Under the amended Rules, if the standard 30 month deadline is missed, it may still be possible to file the application within 42 months from the priority date, but it will be necessary to show that the delay was unintentional and a statement of reasons for the failure to meet the initial deadline will be required.

6. Examination
The time limit for requesting examination will be reduced from 5 years to 3 years. The time limit for responding to office actions will also be reduced to 4 months.

7. Abandonment and Reinstatement
For numerous actions, the whole scheme for reinstatement following abandonment has been revised. To comply with the Patent Law Treaty, a notice must be sent before abandonment occurs. In most cases the notice will set a two month period, or six months from the original due date whichever is later, to cure a default, failing which the application will become abandoned. Following abandonment, reinstatement may be possible and a due care standard will apply; to protect third parties, intervening rights are provided in some circumstances.

8. Electronic Filing
Current practice only permits the filing of an application and allocation of a filing date to days when the Patent Office is open for business. There may be cases where it is necessary to secure a date that falls on a weekend or holiday when the Patent Office is closed, e.g. to benefit from a grace period. Electronic filing is currently permitted, but filing dates are only assigned to a day when the Patent Office is open; under the proposed Rules, for an electronically filed application the assigned filing date will be the actual date the application is filed, even if this is a day on which the Patent Office is closed.

Five more things of note

1. Completion
If the application is not complete a notice will be sent giving up to three months to comply with the completion requirements, with no fee being required.

2. Representation
There are extensive changes to the Rules governing representation and appointment of a patent agent, and include a definition of a common representative. The proposed amendments will enable more individuals to represent the applicant for certain actions. For example, a person authorized by the applicant(s), may pay a maintenance fee and record a transfer.

3. Amendment after Allowance
The proposed Rules will permit an applicant to withdraw an application from allowance so that further examination and amendments will be possible. This will replace the only option under current Canadian practice, which requires the application to be abandoned by not paying the final fee and then reinstated, so the proposed amendment can be submitted for consideration by the Examiner.

4. Corrections
In contrast to the current limited provisions governing correction of clerical errors, the new Rules will make it possible to request corrections to the application, including, corrections in the identification of names of applicants and inventors.

5. Small Entity Definition
The definition of small entity is clarified, to make it clear that a ‘contingent obligation’, e.g. a loan from a non-small entity for which patent rights are collateral, is not a transfer or license that impacts small entity status. This has been unclear and of concern to Canadian applicants and Patent Practitioners.
Although the intent of the amendment to the Patent Rules is to reduce administrative burden on applicants, we note that some of the changes to the Rules are fairly complex. We plan on further articles to delve deeper into the proposed Patent Rule package and how it will affect Canadian patent applications.
If you have any questions, please contact any member of our Patent Group.

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