Canada’s New Patent Regime: CIPO’s Eleventh Hour Guidance

On October 30, 2019, the new Canadian Patent Act and Rules will come into force introducing substantive administrative procedural changes. On October 15, 2019, with only 15 days remaining before these changes come into force, the Canadian Intellectual Property Office (CIPO) has released its revisions to the Manual of Patent Office Practice (MOPOP), finally detailing how these changes will be implemented.

The changes permit Canada to implement the Patent Law Treaty, which aims to harmonize and streamline patent administrative procedures among national intellectual property offices.

Highlights of the upcoming changes are set out below.

Maintenance Fees

Under the present patent regime, only the Canadian Agent of Record can pay a maintenance fee on a pending application, whereas maintenance fees for patents can be paid by any party. In both cases, if the maintenance fee is not paid by the due date, there is a predictable 12 month window during which the fee can still be paid as a matter of right along with a nominal surcharge.

For any application or patent in which a maintenance fee is due on or after October 30, 2019, any party will be permitted to pay the fee. Although responsibility for maintenance fee payments has been relaxed, significant uncertainty and risk have been introduced in terms of the consequences of not paying a maintenance fee by its due date. The new set of due dates to track once a fee is missed is very complex and some periods require a showing of due care if the fee was not timely paid. Moreover, if the fee remains outstanding as of six months from the original due date, third party rights will be available.

Examination Request

Under the present patent regime, examination must be requested within five years of the Canadian or PCT filing date. If examination is not requested by the due date, there is a predictable 12-month window during which examination can still be requested, as a matter of right, along with a nominal surcharge.

For any application with a Canadian or PCT filing date on or after October 30, 2019, the period for requesting examination will be shortened to four years from the filing date.

For any application in which examination is due on or after October 30, 2019, significant uncertainty and risk have been introduced in terms of the consequences of not requesting examination by the due date. The new set of due dates to track once the request for examination is missed is very complex and some periods require a showing of due care if the request was not timely made. Moreover, if the request for examination remains outstanding as of six months from the original due date, third party rights will be available.

Third Party Rights

A third party rights exception to infringement has been introduced that will exclude any act from an action for infringement if that act, or serious and effective preparations to commit that act, occurs when a maintenance fee or examination request remains outstanding for six months or more from the original due date.

Due Care                

If a maintenance fee payment or examination request is not made within varying timelines following the original due date, the fee or examination request can only be made if the Commissioner is satisfied that, in spite of failure to pay the fee or request examination, due care was taken. The changes to the Patent Act and Rules do not specify what is meant by “due care,” however, CIPO has advised that they intend to apply a standard that is consistent with the Receiving Office guidelines under the PCT.

Late National Phase Entry

For any application with a PCT filing date prior to October 30, 2019, national phase entry in Canada is due at 30 months from the earliest priority date, but can be extended to 42 months as a matter of right by paying a late fee.

For any application with a PCT filing date on or after October 30, 2019, national phase entry in Canada will only be extended to 42 months by stating that failure to meet the 30-month deadline was unintentional and by paying a reinstatement fee. The changes to the Patent Act and Rules do not specify the types of circumstances that will meet the “unintentional” standard, however, CIPO has indicated in consultations that they intend to apply a standard that is consistent with the Receiving Office guidelines under the PCT when restoring the right to priority.

Common Representative

This is a new concept that applies to applications or patents with joint Applicants. Upon filing an application, we will have the opportunity to designate one of the joint Applicants to be the Common Representative. The Common Representative has slightly more power than the joint Applicant(s). For example, the Common Representative can revoke and appoint the Agent of Record and can hold Examiner interviews with the consent of the Agent of Record. If a Common Representative is not positively selected at filing, CIPO will select the first listed Applicant in the filing documents. Once selected, the Common Representative can only be changed from one Applicant to another by having all Applicants provide their consent.

Office Actions

Prosecution will be advanced with these changes. Under the current regime, Office Actions set a six month due date for response, which will be reduced to four months under the new Patent Act and Rules. This four-month deadline will be extendible to six months if the request for extension is made before the four month deadline and if reasons are submitted that justify the extension. While this extension is discretionary, CIPO has indicated that the bar will be set low to justify an extension.

If a response to an Office Action is not filed by the original deadline or the extended deadline (if granted), the application will become abandoned and can be reinstated as a matter of right within 12 months by filing the response and paying a reinstatement fee. There are no third party rights during this period of abandonment.

Amendments After Allowance

Under the present patent regime, substantive amendments can only be made after allowance by permitting the application to become abandoned by not paying the final fee. Upon reinstatement within 12 months, any desired amendments can be made and the application will be subject to further examination.

For any application with a Notice of Allowance dated on or after October 30, 2019, substantive amendments can only be made after allowance by requesting withdrawal of the Notice of Allowance. The request for withdrawal must be made prior to the due date for payment of the final fee and the final fee must not have been paid. Once the request is made, any desired amendments can be submitted and the application will be subject to further examination.

Restoration of Priority

For any application with a Canadian or PCT filing date on or after October 30, 2019, restoration of priority is available. This means that if the PCT application or Canadian convention priority application is unintentionally filed more than 12 months after the priority date but within 14 months of the priority date, a priority claim can still be made. In order to meet restoration requirements, it will need to be stated that failure to file the application within 12 months of the priority date was unintentional; no reasons need to be provided.

Certified Copy of Priority Document

Under the present patent regime, a certified copy of the priority document is only required if requested by an Examiner during prosecution.

For any application with a Canadian or PCT filing date on or after October 30, 2019, certified copies of priority documents are required. If, however, the certified copy provision was satisfied at the PCT stage, there is no requirement to furnish a certified copy to CIPO. CIPO has indicated that WIPO-DAS will be an available source for accessing certified copies of priority documents.

Where Do We Go From Here?

Although intended to harmonize and streamline patent administrative procedures, these changes have introduced significant complexity into Canada’s patent regime, particularly with respect to the consequences of missing certain due dates. The professionals of Aird & McBurney can guide you through this new regime. Details are available on our Intellectual Property webpage.