December 10, 2018
The Government of Canada is planning to enact significant changes to the current patent rules in an effort to modernize the Canadian patent regime and better align it with the regimes of Canada’s major trading partners, including the U.S., U.K., France and Australia. The Government also plans to join several international IP treaties, including the Patent Law Treaty (“PLT”), complementing Canada’s membership in the Patent Cooperation Treaty (“PCT”). These changes are meant to codify and streamline the patent regime in Canada, and will be enacted by replacing the current Patent Rules with an entirely new set of rules (the “New Rules”).
In this article, we briefly summarize the most important proposed changes found in the New Rules. These changes are subject to a public consultation process that is open until December 31, 2018. It is expected that the New Rules will be finally implemented in the Fall of 2019. In addition to this summary, we will release other articles in the weeks ahead discussing some of these changes in greater detail.
To comply with the PLT, the documents and information required to be filed in order to receive an official filing date will be simplified. Under the New Rules, the applicant will only need to provide an indication that a Canadian patent is sought, the identity of the applicant along with his or her contact information, and a document in any language that appears to describe an invention. The application fee will no longer be necessary in order to obtain a filing date, though the fee, together with a late fee, will need to be paid within a prescribed period. The New Rules will also allow for the filing of an application simply by making reference to an earlier regularly filed patent application. However, many of these relaxed filing requirements will not apply to national phase entries of PCT applications.
To be entitled to claim priority, an application would have to be filed in Canada within 12 months after the filing date of an earlier application (“priority application”), or within 14 months if the failure to meet the 12-month deadline was “unintentional”. This is a significant change from the current practice that does not allow any leniency with regard to the 12-month period.
The New Rules will allow the applicant to submit a request for priority before the later of: a) 16 months after the earliest priority filing date; or b) 4 months after the filing date of the Canadian application. The New Rules will also require the applicant to file a certified copy of the priority application, or make it available via an approved digital library, and the priority application need not be in English or French.
Compliant Patent Applications
Since a filing date can be obtained with relatively minimal information submitted, the New Rules will introduce a time limit of three months from the date of a notice from the Commissioner to ensure all the required parts of an application have been submitted, failing which the application will be deemed abandoned. Currently, applicants have the later of three months from the date of a notice and 12 months after the filing date. In addition, the New Rules will simplify certain parts of the application, such as the Petition.
The New Rules would prescribe situations when an applicant, patentee or other person may or must be represented by a patent agent or common representative in order to prosecute a patent application. For example, the New Rules would introduce the concept of a “common representative” where there are multiple inventors or applicants for an application. The New Rules will also allow the applicant to take certain actions on their own even if a patent agent has been appointed. At present, if an agent has been appointed, only the agent may take those actions.
Examination and Amendments to Applications
The New Rules propose changes to the examination process and the procedure for amending applications in order to streamline patent prosecution. These changes include the reduction of various time limits to shorten the average time before a decision is made on the patentability of inventions. For example, the proposed time limit to request examination would be reduced from five years to four years, and the time for responding to an office action and to pay the final fee will be reduced to four months from the current six months.
The New Rules propose increased flexibility in correcting what were previously termed “clerical errors”. The New Rules would codify time limits within which certain types of errors (now termed “obvious errors”) must be corrected, such as errors in the identity of the applicant or inventor, or an error in the specification or drawings. This change is important as courts have historically interpreted the term “clerical error” narrowly.
Abandonment and Reinstatement
The New Rules propose changes to the Patent Act that would introduce additional safeguards to help applicants avoid an unintentional loss of rights by notifying them of missed deadlines (e.g., to pay a maintenance fee or to request examination), as well as additional grace periods to comply before the application is deemed abandoned.
Third-party Rights and Due Care
Because some of the proposed changes to the rules include periods of uncertainty for third parties, e.g., periods within which applications are deemed to be abandoned but could still be reinstated, the New Rules contemplate balancing provisions to afford rights to third parties. For example, third parties may have rights in certain circumstances to protect them from infringement actions when they take actions in good faith during such uncertain periods. Another balancing provision would require that, in order to reinstate an abandoned application or reverse the expiry of a patent deemed to have expired, the applicant or patentee must show that the failure occurred in spite of due care having been taken.
Transfers, Changes of Name
The New Rules simplify the requirements for recording transfers and name changes. For example, evidence of the name change or supporting documentation would no longer be required.
The fees payable to the Patent Office would mostly remain unchanged, including the current system which allows “small entity” applicants to pay lower fees. The New Rules, however, include a $150 late fee for: the payment of the application fee after the filing date, the late payment of a maintenance fee, and requests for examination made after the deadline. The New Rules also enable the Commissioner to waive certain fees if justified under the circumstances.
The regime for payment of annual maintenance fees would remain largely unchanged aside from the late fee mentioned above. However, in order to streamline the patent granting process, the grant of a patent would not be delayed solely due to an unpaid maintenance fee. Additional safeguards to prevent the unintended expiry of a patent would also be introduced, such as additional time to pay an annual maintenance fee for a patent that has been granted.
The New Rules propose to codify certain administrative practices relating to divisional applications. These changes include prescribing requirements and conditions for filing a divisional application, including petition requirements and time limits. Although a divisional application will continue to be given the same filing date as its parent application, the New Rules introduce the concept of a “presentation date”, that is, the date the divisional application is filed.
Patent Cooperation Treaty Provisions
Although the New Rules generally maintain the current system for PCT national phase entries, one significant change is proposed. Currently, national phase entry into Canada must be done within the 30-month period from the priority date, but late entry is permitted within an additional 12-month period upon the payment of a $200 late fee. The New Rules will permit late entry but only if the applicant provides a statement that the late entry was unintentional.
The New Rules propose to make a number of important changes to the current rules. However, on the whole, the New Rules are not expected to fundamentally change the current patent regime in Canada; rather, they are expected to help modernize and align Canada’s regime with the PLT.
Over the next few weeks, we will be analyzing some of these proposed changes in greater detail.
Do not hesitate to contact members of the Goodmans IP team if you have any questions about the proposed New Rules.
Authors: Dino Clarizio and Abid Khalid