Amendments to the Patent Act: Questions and Answers

Table of contents

General

Q1. What are patents and why are they important?

A1. Patents provide a legally-protected exclusive right to an invention. In this way, patents serve as a reward for ingenuity. Patent protection applies in the country that issues the patent. In Canada, it extends for up to 20 years from date of filing. Patents can be sold, licensed or used as an asset to negotiate funding.

Q2. Why is the Patent Act being amended?

A2. Following a commitment made in its Economic Action Plan 2014, the Canadian government tabled, on October 23, 2014, amendments to the Patent Act in the Budget Implementation Act II that allow Canada to ratify the Patent Law Treaty. The Budget Implementation Act II received royal assent on December 16, 2014. Ratification of this international IP treaty will provide Canadian businesses with access to a patent regime that is aligned with international best practices, that reduces costs and administrative burden, and facilitates their expansion in foreign markets, and encourages foreign investment to Canada.

Patent Law Treaty

Q3. What is the Patent Law Treaty?

A3. The Patent Law Treaty (PLT) aims to simplify and harmonize administrative practices among national intellectual property offices with respect to the patent application process. The PLT addresses issues such as the grace periods to avoid loss of rights, representation before the intellectual property office and red-tape reduction. It does not seek to harmonize substantive patent law (e.g., what is patentable).

The majority of the standards and rules in the PLT relate to the procedures of national patent offices, and, in particular, make clear what national patent offices can and cannot require from applicants. From the viewpoint of inventors and businesses, the result is a reduction of red tape, standardization and simplification of administrative requirements that ultimately lead to a simpler way of filing, reduced risk of errors and loss of rights as well as lower costs.

Q4. Why does the PLT require changes to Canada's patent legislation?

A4. Canada signed the PLT in 2001, with the support of stakeholders, but has yet to ratify it. Amendments to the Patent Act will allow Canada to ratify the Treaty. So far, 36 countries are members of the PLT, including Australia, France, the Russian Federation, the UK and the United States.

The Canadian patent regime is already compliant with many aspects of the PLT; however, to ratify the PLT, some changes are required to the Patent Act, for example, with respect to filing date requirements, claiming date priority, assignment and representation.

Ratifying the PLT would also allow Canada to join the PLT Assembly. As a member of the Assembly, Canada will participate to future discussions on the evolution of the PLT and will be in a position to influence potential changes to the Treaty in a way that better serves Canadians. This action will also strengthen Canada's international reputation and assist Canada in any future patent-related international discussions.

Q5. What is changing in the Patent Act?

A5. While the stated objective of the proposed changes is to allow Canada to ratify the Patent Law Treaty, businesses seeking patents will also notice a decreased administrative burden once these changes are implemented.

Here are some of the most significant proposed changes to Canada's patent regime:

  • Changes to the filing date requirements
  • Amendments to the abandonment/reinstatement regime, including the introduction of notifications prior to abandonment
  • Allowing anyone to pay maintenance fees by lifting certain requirements on representation;
  • Allowing for the restoration of priority
  • Preventing the revocation of granted patents on the basis of an administrative defect during the application stage
  • Introducing measures for the protection of third parties

More details are available on the Patent Law Treaty - Changes Required to Canadian Law & Practice page.

Implementation

Q6. When will the amendments come into force?

A6. The amendments to the Patent Act introduced in Bill C-43 will come into force on a day fixed by order of the Governor in Council. That date will be established after the relevant amendments to the Patent Rules have been prepared and after the Canadian Intellectual Property Office's IT systems have been updated appropriately.

Q7. What are the next steps?

A7. CIPO is committed to working with stakeholders to ensure effective implementation of this treaty. Over the coming months, CIPO will consult on the proposed related changes to the Regulations.

Q8. How will Canada compare internationally when the changes come into force?

A8. By implementing the treaties of the World Intellectual Property Organization, this bill will bring Canada in line with its trading partners and most of the major economies of the Organisation for Economic Co-operation and Development. Overall, the measures in this bill will help Canadian creators and innovators to compete globally and contribute to attracting foreign investment to Canada.

In order for Canada to be competitive on the international stage, it needs to stay current with international practices. The changes outlined in the previous paragraphs are likely to have a greater impact on foreign applicants who generally tend to first apply abroad and in a foreign language. However, these changes will equally benefit Canadian businesses who also choose to first file abroad, and possibly in a foreign language, and who will now be able to take full advantage of the simplified application requirements. The changes will make Canada a more attractive destination for patent applicants.

Prosecution

Q9. How will the changes affect the filing date requirements?

A9. The establishment of the filing date is of the utmost importance for a patent applicant: it plays a decisive role in defining the term and scope of protection, and in the ability to benefit from advantages conferred under certain international treaties (such as priority rights under the Paris Convention).

Under the proposed changes, applicants will be able to secure a filing date while having to comply with fewer administrative requirements at the onset. Specifically, they will no longer be required to pay a filing fee for the purposes of establishing a filing date. Applicants will also be allowed, for the purposes of establishing a filing date, to submit their application in a foreign language (thereby avoiding translation costs) or to substitute a reference to another previously filed application for part of their application. All of these changes will enable applicants to secure a filing date more efficiently.

Q10. How will the proposed changes affect the right to claim priority?

A10. A valid priority claim virtually provides an application with the benefits of an earlier filing date and is decisive in the application process. However, applicants must avail themselves of this priority claim within 12 months of the earlier filing date. The proposed changes to the Patent Act provide a safeguard for applicants who have missed the time limit. This new remedy will allow applicants to apply for the restoration of a priority claim. Further supporting applicants, the new provisions will also allow the correction of priority requests.

Q11. How will my maintenance fees be affected?

A11. The PLT also sets a business-friendly international standard for the payment of maintenance fees. With the proposed changes, limitations currently found in section 15 of the Patent Act will be lifted to ensure that any person (i.e. not necessarily the agent appointed by the applicant) can perform the simple clerical act of paying maintenance fees with respect to a patent application. This will reduce the compliance cost for businesses who may decide to forgo using the services of an agent and pay their maintenance fees directly to the patent office.

Q12. Will the reinstatement of abandoned applications always require that due care be shown?

A12. The due care requirement is being introduced in the amended legislation as a new requirement for reinstatement but will only apply in certain circumstances, which will be specified in the regulations. Stakeholders will be consulted during the regulatory amendment process and will be provided with an opportunity to provide comments on the proposed amendments.

Q13. How will the new amendments to the Patent Act affect the reinstatement of applications that are already deemed abandoned on the date the new amendments come into force?

A13. Amended section 78.51 provides that:

"If an application for a patent was deemed to be abandoned under section 73 as it read immediately before the coming-into-force date, that section 73 applies in respect of that abandonment."

Accordingly, the new provisions regarding the reinstatement of abandoned applications will only apply with respect to abandonments that occur on or after the date these new provisions come into force.

Q14. How do these changes affect the need for representation?

A14. Additional proposed changes will explicitly define requirements regarding the representation of patent owners in post-grant procedures before the patent office (including corrections, disclaimers, reissues, and re-examinations). Currently, there are no statutory provisions explicitly requiring patent owners to be represented during those proceedings. Because the outcome of these complex proceedings determines the scope of protection and ultimately the value of a patent, requiring the presence of a qualified agent ensures that patent owners have access to professional advice and support.

Q15. How do these changes affect the abandonment/reinstatement process?

A15. Applicants will now be notified before sanctions are applied in respect of their patent application. With the proposed changes to the Act, no application will be deemed abandoned without the applicant first being notified and being provided with additional time to take action to avoid abandonment. Under the current regime, applicants who do not pay their maintenance fee by the due date or fail to request examination before the prescribed time limit are not notified and failure to act in these cases causes the immediate abandonment of an application. With the proposed amendments, applicants will be notified before an application is deemed abandoned under such grounds.

As a consequence of the new notification system, applicants will be provided with a longer period to address a missed maintenance fee payment. The time limit to reinstate an abandoned application will be established in the Patent Rules but, for compliance with the PLT, cannot be earlier than 12 months from the date of abandonment or, in the case of the payment of a maintenance fee, 18 months from the prescribed due date for the payment of a maintenance fee.

In order to encourage the prompt reinstatement of applications and curb attempts to unduly prolong the uncertainty associated with abandonment, applicants requesting reinstatement past a period defined in the Patent Rules will be required to show that the abandonment occurred in spite of due care having been applied.

Q16. How will these changes discourage abuse of the patent system and protect third parties?

A16. As explained above, with the proposed changes to the Act, the period of abandonment and reinstatement of an application will be tied to the sending of a notice by the patent office. Compared with the current patent regime, this measure, and its associated timelines, will potentially increase the market uncertainty period for third parties. For example, a third party monitoring the payment of maintenance fees for a given application may not be able to determine with certainty when that application is irrevocably abandoned when they note that one or several maintenance fee payments were missed. Similarly, the proposed provision that will eliminate the possibility of having a patent invalidated because of administrative lapses could also have a potentially negative impact on third parties.

As a result, new provisions will be introduced to mitigate the impact of potentially longer periods of market uncertainty and to discourage uncompetitive behaviour. These planned provisions, in very specific circumstances, will provide protection against infringement proceeding for those third parties who start using, or make serious preparations to use, a patented invention. This protection will only begin after a defined period of time has elapsed after IP rights have become uncertain (e.g. after a time period when an applicant or patentee has not yet taken an action that should have been taken in accordance with the Patent Act and Patent Rules).

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