Canadian patent law has changed in significant respects as of October 30, 2019. These changes will be of most interest to our foreign associates, and to those of our clients who are responsible for managing deadlines associated with their patent portfolio. Please read on for further details, and contact us if you have any questions. We will continue to keep you apprised of all relevant changes affecting specific matters that we are already handling on your behalf.
Key changes under the new legislative regime include the following:
Late national phase entry as of right will not be available for PCT applications filed on or after 30 October 2019. Applications that are subject to the new law must enter the Canadian national phase by thirty months from the earliest priority date, including provision of an English or French translation if required. An exception is where the failure to enter the Canadian national phase was unintentional: such an application can still enter the Canadian national phase up to 42 months from the earliest priority date, provided the applicant requests reinstatement of its rights in Canada, pays the applicable reinstatement fee (currently CA$200), and provides a statement that the failure to timely enter the Canadian national phase was unintentional. Since this change only affects PCT applications with a filing date of 30 October 2019 or later, there will be a considerable grace period during which late Canadian national phase entry will continue to be available as of right.
A certified copy of the priority application must be filed. While common in other jurisdictions, Canada did not previously require the filing of a certified copy of the priority application. Going forward, a certified copy will be required by the later of sixteen months from the earliest priority date or four months from the Canadian filing date. Further, if the applicant of the Canadian application and the priority application are not the same, CIPO will require evidence that the priority rights have been transferred to the Canadian applicant. For PCT applications entering the national phase in Canada, a certified copy need not be provided if filed in the international phase. However, in any PCT case where the certified copy was not filed in the international phase, it will be due at the time of national phase entry in Canada.
A Canadian filing date can be secured with a specification in a foreign language or by a reference filing. Previously, a Canadian application had to be filed in English or French to receive a filing date. Going forward a filing date can be secured by filing a specification in any language, although an English or French translation must be provided within two months of a Commissioner’s notice requiring such translation. Filing by reference to a previously filed application is also possible, although a copy of such application must be filed within two months, and any translation must similarly be filed within two months of a Commissioner’s notice. Note that there is no additional period beyond the thirty month national phase entry deadline to file an English or French translation of a PCT application, which places Canada in line with the United States in this regard.
Reinstatement as of right for failure to request examination or pay maintenance fees is curtailed or eliminated, although a late payment period is introduced. Canadian practice has traditionally benefitted from the ability to abandon an application for any reason and reinstate the application as of right within one year of the date of abandonment. For most actions during prosecution that ability to reinstate the application as of right for a one-year period has been preserved. The exceptions are reinstatements in respect of a failure to request examination or pay maintenance fees. While there are many complexities to the new regime, in most cases after a six-month period has passed from the original deadline, it will not be possible to reinstate an abandoned application or reverse the expiration of a patent unless the applicant or patentee can demonstrate that the deadline was missed despite all due care required by the circumstances having been taken. Third party intervening rights have also been introduced, and are generally available while an application or patent is abandoned during a period in which due care must be demonstrated to reinstate the application.
Some deadlines during prosecution are shortened. In an effort to decrease pendency, deadlines for responding to examiner’s requisitions or to pay the final fee when the application is in condition for allowance are shortened to four months. A two-month extension of time is available if requested prior to expiration of the initial deadline, and the official fee for requesting such an extension is CA$200. The deadline for responding to an examiner’s requisition for a case that has been accelerated via a request for special order status is increased to four months, for consistency across all types of cases. Extensions of time of up to two months are also available for such cases, but they will lose their special order status if an extension of time is requested.
New procedural safeguards are introduced. To implement the Patent Law Treaty, a number of new safeguards are introduced, including in appropriate circumstances restoration of the right of priority and the ability to incorporate missing parts from a priority application without losing the original Canadian filing date. While filing a complete and correct application on time is always the best approach, in circumstances where something has gone wrong, there is now more opportunity to retain protection for Canadian rights.
File wrapper estoppel has been introduced into Canadian law. While this change came into force late last year, we are only beginning to see the interpretation of the extent of file wrapper estoppel in Canadian law. While the statute states that a written communication between the applicant or patentee and the Commissioner or an officer or employee of the CIPO may be admitted into evidence to rebut any representation made by the patentee as to the construction of a claim in the patent, in one recent case, the Federal Court considered the file wrapper of the corresponding US application, finding that the patentee had made the foreign prosecution history part of the Canadian file wrapper by stating that the claims had been amended to substantially correspond to the US claims. This case is currently under appeal.
We anticipate that there will be many issues of interpretation to be worked through by the Canadian Intellectual Property Office as the new law is implemented, and that the application of certain provisions by the office will be clarified over time. We remain active in keeping abreast of changes in office practice as they may occur.
We invite you to contact us with any questions about the new legislative regime in Canada, either generally or with respect to specific cases that we are handling on your behalf.