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Canada’s New Patent Term Adjustment System

Amendments to the Canadian Patent Act and Patent Rules in force as of January 1, 2025 implement a patent term adjustment (PTA) system. This is in accordance with the requirement under the Canada-United States-Mexico Agreement (CUSMA) that Canada provide an additional term to compensate patent owners for unreasonable delays in the issuance of their patents.

The PTA system applies to patents that issue from applications filed on or after December 1, 2020. To be eligible for a term adjustment, a patent has to be issued after the later of

  • Five years from (1) the filing date, (2) the national entry date (for PCT national phase applications), or (3) the presentation date (for divisional applications); and
  • Three years from the date of requesting examination.

Based on these requirements, the earliest that a Canadian patent will be eligible is December 2, 2025.

The duration of the additional term is the number of days between the issue date and the later of the five-year or three-year dates referred to above minus the number of days to be subtracted under the Patent Rules. There are 38 categories of days to subtract. Some examples of the days to be subtracted include:

  1. the number of days taken by the applicant to respond to an office action;
  1. the number of days taken by the applicant to pay the final fee (issue fee) after the Commissioner sends a notice of allowance;
  1. the number of days that the applicant defers requesting examination;
  1. the number of days between filing a request for continued examination (which is required where there have been three office actions) and paying the final fee;
  1. the number of days during which the applicant is late in paying maintenance fees; and
  1. the number of days during which the application is deemed to be abandoned due to failure to request examination, respond to an office action; or pay a maintenance fee.

Note that even where the applicant takes the required action by the deadline set by CIPO, for example the deadline set in an office action to file a response, or the deadline set in a notice of allowance to pay the final fee, or within the permitted deferral period for requesting examination, the number of days to take the action is subtracted in the determination of the term extension.

Patents will not automatically be granted an additional term. The patentee must apply for the additional term within three months of the issue date and pay a fee of $2,500 ($1,000  for small entities). If the term is extended, the patentee is required to pay maintenance fees on the 20th anniversary and each subsequent anniversary in which the additional term is in effect.  This annual maintenance fee is currently set at $1,000 ($400 for small entities).

If the calculated term extension is zero days or is negative, an additional term will not be granted.  The Commissioner is required to provide notice of the preliminary determination of the duration, following which the patentee has two months in which to make and provide observations regarding the preliminary determination to CIPO. After this period, the Commissioner either dismisses the application or issues a certificate of additional term. In either case, the Commissioner must provide reasons for the dismissal or for the duration of the additional term.

The Commissioner may reconsider the duration of an additional term either on the Commissioner’s own initiative or upon application by any person. Following reconsideration, the Commissioner will either shorten the duration of the additional term or dismiss the reconsideration. That is, an additional term may not be extended by reconsideration.

In view of CIPO’s current processing times, and the subtraction when calculating the PTA period of each day for responding to CIPO notices or taking certain actions, it appears that the great majority of patents will not qualify for PTA. It is unlikely that the PTA regime will be of much practical value to patentees.

We invite you to reach out to a member of our team if you have any questions about eligibility or applying for an additional term.

NOT LEGAL ADVICE.
Information made available on this website in any form is for information purposes only. It is not, and should not be taken as legal advice. You should not rely on, or take or fail to take any action, based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Oyen Wiggs Green & Mutala LLP professionals will be pleased to discuss resolutions to specific legal concerns you may have.

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