Significant changes to the Patent Rules will come into force on October 30, 2019.
Some of the highlights are listed below.
New Canadian Applications Filed After October 30, 2019
Requirements to obtain a filing date will be simplified. Submission of the filing fee and translation into English or French can be delayed until after filing – the Canadian Intellectual Property Office (CIPO) will issue a notice setting a 2-month deadline to make the submission. Note: This does not apply to national phase entry applications – filing fees and translations are still required at national phase entry.
42 Month Deadline for National Phase applications is no longer “as of right”. For national phase entry into Canada of a PCT application with a PCT filing date on or after October 30, 2019, in order to secure a filing date after 30 months, a statement is required that entry by the 30-month deadline was “unintentional”.
Certified copies of priority documents will be required. These can be submitted to CIPO or can be made available through an acceptable digital library. Note: For national phase applications, if a certified copy of a priority document is not submitted during the International Phase, it must be submitted within 2 months of national phase entry.
Restoration of Priority will now be available up to 14 months from the earliest priority date provided failure to meet the deadline was unintentional. The request to restore must be made within 2 months from the Canadian filing date and no later than 16 months from the earliest priority date. Note: For national phase applications request must be made within one month from national phase entry.
Deadline to Request Examination will be 4 years (instead of 5) from the filing date. Note: In the case of national phase applications, if the filing date of the PCT application is prior to October 30, 2019 the deadline for request for examination remains 5 years from filing date. Failure to request examination by the deadline will result in a late fee notice being issued by CIPO. If the examination fee and late fee are not paid within the time limit set by the notice, the application will become abandoned and reinstatement is more complex including a requirement for a showing of “due care”. Note: Examination fees paid more than 6 months after initial deadline trigger 3rd party intervening rights.
Deadlines to respond to Examiner Reports will be 4 months from the date of the Examiner’s Report. This deadline can be extended by 2 months (with the payment of a fee and if the request is made prior to the 4 month deadline). Reinstatement after failure to submit a response to the Examiner’s Report may still be done “as of right” within 12 months of the date of deemed abandonment.
Final Fees will be due 4 months from the date of the notice from CIPO. Applicants can now withdraw an application from allowance (with the payment of a fee) in order to make amendments and re-enter examination. Applicants no longer need to abandon the application in order to make amendments after applications have been allowed.
Maintenance Fees – changes will come into force with respect to who can pay maintenance fees for pending applications when a Canadian patent agent has been appointed. After the new Patent Rules come into force, anyone can pay a maintenance fee for pending applications. If maintenance fees are not paid by the deadline, a late payment fee window will be available (with an additional late government fee of $150) 2 months from the CIPO late fee notice or 6 months from the original deadline (for patents, the deadline is 2 months from the late payment fee notice or 6 months from the initial deadline, whichever is later) after which time the case will be deemed abandoned and the process for reinstatement is more complex including a requirement for a showing of “due care”. The new Patent Rules specify that the request to reinstate an abandoned patent application can be made only by the Canadian patent agent of record. Note: Maintenance fees paid more than 6 months after initial deadline trigger 3rd party intervening rights; failure to pay the maintenance fee and late payment fee for patents result in retroactive expiry as of the anniversary date.
These are just some of the changes that will come into force on October 30, 2019. If you have any questions regarding the new rules, please contact one of our patent professionals, Katie Wang at kwang@aventum.law or Mark Weir at mweir@aventum.law and they will be pleased to assist you.
