Changes To The Canadian Patent Act

Author:Mr José Santacroce
Profession:Moeller IP Advisors

The Government of Canada is changing the current Patent Act and Patent Rules to modernize the Canadian patent regime. The current Patent Rules will be replaced with a new set of rules (the "New Rules"), which will come into force on October 30, 2019.

Below the most relevant changes are summarized:

  1. "Unintentional" Requirement for 42 Month PCT National Phase Under the New Rules, national phase entry in Canada is still allowable up to 42 months from the priority date of the PCT application, but the applicant will have to submit a statement to the Canadian Intellectual Property Office ("CIPO") that failure to enter the national phase by the 30-month deadline was "unintentional". Transition consideration: An applicant having a PCT application with an international filing date that precedes the coming-into-force date may enter the national phase in Canada up to 42 months after the earliest priority date without establishing that failure to meet the 30-month date was unintentional.

  2. "Due care" Requirement for Reinstatement Some reinstatements will no longer be "as of right". Notably, reinstatement will require a showing of "due care" in regards to: (1) applications abandoned for failure to pay a maintenance fee, (2) applications abandoned as of or after 6 months from the request examination due date for failure to request examination, or (3) patents expired for failure to pay a maintenance fee. CIPO has indicated that they will adopt a standard of due care consistent with PCT receiving office guidelines.

  3. Third-Party Rights with Abandonment Under the New Rules, third party rights may accrue during the time that patent rights are uncertain. While the patent rights are uncertain, such as when an applicant or patentee does not take an action that should have been taken, third parties may take actions in good faith that would otherwise constitute an infringement, and may be protected against infringement proceedings.

  4. Shortened Response Timelines The New Rules reduce the time limit to: (1) request examination from five years to four years from the filing date; (2) respond to an examiner's requisition from six months to four months from the date of the examiner's requisition, with a possible two-month extension; and (3) pay the final fee from six months to four months from the date of the notice of allowance. Transition consideration: For a transitional application, the deadline for requesting examination is still five years from the filing date...

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