Consultation Document
Proposed Patent Rules

Disclaimer: The following consultation documents regarding proposed amendments to the Patent Rules have been prepared to explain to all stakeholders the proposed changes to the current regulatory regime. The Patent Rules and the proposed amendments are complex and for that reason, not all exceptions and details are explained in the consultation documents. For a complete understanding of the proposed amendments please consult the legislative amendments not in force to the Patent Act (Bill C-43 and Bill C-59) as well as the public consultation draft of the proposed amendments to the Patent Rules available on our website.

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Filing Requirements

The Patent Act and Rules contain requirements for establishing a filing date for an application for a patent. In order for Canada to comply with the Patent Law Treaty, change must be made to the Patent Act and Rules. These changes result in a reduction in the filing requirements and have the effect of reducing the administrative burden on applicants.

Current State

To establish a filing date, an application for the grant of a patent must contain an indication, in English or French, that the granting of a Canadian patent is sought, the applicant's name, the applicant's address or that of their patent agent and a document, in English or French, which on its face appears to describe an invention. The applicant must also pay the prescribed application fee.

Proposed New State

In order to establish a filing date, the applicant must provide an indication that the elements submitted are intended to be an application for a patent, information which allows the applicant to be identified and contacted and a document that on the face of it appears to be a description. The application fee is no longer a requirement for establishing a filing date and the document which on its face appears to be a description may be in a language other than English or French. The filing date for an application for a patent is the date on which the Commissioner receives the required documents and information or, if they are received on different dates, the latest of those dates.

If any of the required documents and information are not contained in the application, the applicant will be notified and will be required to submit the outstanding documents or information within two months after the date of the notice. If the applicant does not submit the missing documents and information within that two-month period, the application will be deemed to never have been filed.

If an applicant does not pay the application fee on the filing date of the application, the Commissioner will notify the applicant that the application fee and a late payment fee of $150 are required to be paid within two months of the date of the notice. If the applicant does not pay the application fee and the late payment fee within the two month period, their application will be deemed to have been withdrawn.

Although the document describing the invention does not need to be in English or French for establishing a filing date, the applicant is required to submit a translation into English or French of any part of the specification or the drawings that, on the filing date, was not entirely in English or French. If the required translation is not submitted, the Commissioner will send the applicant a notice requiring the submission of the translated document within two months of the date of the notice. If the applicant submits the translation within the two-month period after the notice is sent, the translation will replace the original document. If a translation is not submitted within the required time the application will be deemed to be abandoned.

Reference filing

Reference filings are not permitted in the current Patent system.

In the new system an applicant may submit a statement to the effect that a reference to a specified previously filed application for a patent is being submitted instead of all or part of the specification or a drawing required to be contained in the application. The statement must identify the previously filed application by number and indicate the name of the country or office in which it was filed. It is proposed that this statement must be supplied at the earlier of:

  1. the later of two months from receipt of the earliest document or information required for establishing a filing date and, if a notice is sent, two months after the date of the notice; and,
  2. the filing date.

It is also proposed that the applicant must, within two months from the submission of the statement, submit a copy of the previously filed application to the office. If the previously filed application is in a language other than English or French a translation into English or French must be provided. If the required translation is not submitted, the Commissioner will send the applicant a notice requiring the submission of the translated document within two months of the date of the notice. If the applicant meets all the requirements, the specification or drawing in the previously filed application are deemed to have been contained in the application on the date on which the statement is received.

Addition of Missing Parts

The addition of missing parts is not permitted in the current Patent system.

Where an application is missing a part of the specification or a drawing referred to in the application, the applicant may add the missing part to their application by submitting the addition along with a statement indicating that the addition is made under section 28.01 of the amended Patent Act. Within specific time periods the Commissioner may also notify the applicant that part of the description or drawings appears to be missing. Applicants have two months from the date of a notification from the patent office or, in the absence of a notification, two months from the earliest date on which the Commissioner receives any document or information required for establishing a filing date to add the missing part to the application.

Where the missing part and drawing are completely contained in a prior application on which priority has been requested, the applicant may submit the missing information without affecting the filing date. Where the parts being added are not contained in a prior application on which priority has been requested, and the request is not withdrawn before the prescribed date, the missing parts will be added to the application and the filing date will be the later of the date on which the addition is received and the filing date (where other filing requirements have not been met before the addition of the missing part is requested).

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-43:
Application for Patents - Section 27 of the Patent Act (not yet in force)
Reference to previously filed application - Section 27.01 of the Patent Act (not yet in force)
Addition to specification or addition of drawing to application - Section 28.01 of the Patent Act (not yet in force)
Proposed Patent Rules:
Documents not in English or French - Section 21
Filing Date - Section 72
Addition to Specification or Addition of Drawing - Section 73
Reference to Previously Filed Application for a Patent - Section 70

Priority

Canada is a contracting party to the Paris Convention for the Protection of Industrial Property, a treaty that allows an applicant for a patent to request what is called "convention priority." Requesting convention priority is typically referred to as claiming priority. When a priority claim is made the filing date of a patent application filed in one member country will be recognized by other member countries provided patent applications are filed in those other countries within one year of the filing date. It is also possible to claim priority in a Canadian application based on an earlier filed Canadian application. For example, if you filed a patent application in Canada on January 2, 2017, you could file up to one year later in most countries (January 2, 2018), including Canada, and still be given the same rights as if you had filed the application on January 2, 2017 when you claim priority.

In ratifying the Patent Law Treaty (PLT), Canada has already amended the Patent Act and is proposing certain amendments to the Patent Rules in respect to claiming priority. An explanation of some of the notable proposed amendments follows.

Time Limit - Open to public inspection

Current State

A request for priority must be made before the expiry of the sixteen-month period after the date of filing of the earlier filed application.

Proposed New State

It is proposed that the time limit for requesting priority is the later of:

  1. sixteen months after the date of filing of the earlier filed application; and,
  2. four months after the filing date of the pending application.

A further limitation is that the priority claim must be made before the date on which the application is open to public inspection. This limitation will only impact applications for which early publication is requested.

Corrections to information submitted in a priority request

Current State

Information contained in a priority request may be corrected by submitting a request to correct a clerical error under Section 8 of the Patent Act. In limited circumstances and within time limits the priority request containing incorrect information may be able to be withdrawn and the correct priority request be made.

Proposed New State

In amendments to the Patent Act (not yet in force) Section 8 has been repealed. New regulations are proposed which relate to correcting information in priority claims. These corrections are subject to specific deadlines, dependent upon the particular correction in information being requested. For more information on correcting errors in priority claims please see the Consultation Paper on Corrections.

Submission of Priority Document

Current State

The examiner can requisition a copy of the priority document(s) when considered necessary, and this could be requisitioned any time during the examination of an application. Where a priority document is not provided in response to a requisition the application will be deemed to be abandoned.

Proposed New State

It is proposed to be mandatory for applicants to submit or make available copies of all priority documents on which a request for priority is based, and to do so within an established time limit. There is an exception in the case of Canadian applications forming the basis of a priority request which will, in effect, be considered to have been made available at the time of the request. Foreign priority documents may, at the option of the applicant, be made available by informing the office of the acceptable digital library where the priority document is available. The Patent Office will publish a list of acceptable digital libraries on our website.

Where a priority document is not submitted, nor made available to the office through a digital library, within the allotted time, the application will no longer become abandoned, but rather the priority claim will be disregarded. A remedy exists where the priority document was requested from a foreign patent office but is not yet available to the applicant. In such cases the applicant must inform CIPO of the date the request was made to the foreign patent office and submit the priority document when it becomes available. Priority documents submitted in respect of a PCT application are not required to be resubmitted for national phase PCT applications.

The proposed Patent Rules change the process for translating the content of a foreign language priority document. Notably, where an applicant has failed to respond to an examiner's request for a translation of the whole or part of a foreign language priority document, the application will no longer become abandoned, but rather the priority claim will be disregarded.

Restoration of the Right of Priority

Restoration of the right of priority is not available in the current Patent system. Approved changes to the Patent Act (not yet in force) provide for the restoration of the priority right where a subsequent application is filed within two months after the expiration of the priority period, i.e. between months 12 and 14 from the filing date of the earlier filed application. In a request to restore the right of priority applicants must state the failure to file the application before the expiration of the priority period was unintentional.

A request for restoration of priority must be made no later than two months after the filing date of the pending application. Therefore the time limit for successfully requesting restoration of priority can be up to 16 months from the filing date of the earlier filed application.

There is no proposed fee for making a request for restoration of the right of priority.

The graphic below illustrates timelines for when a request for priority is possible and time limits for requesting the restoration of the right of priority.

Timelines for when a request for priority is possible and time limits for requesting the restoration of the right of priority - See description below
Detailed description

The figure contains a time-line illustrating both the current timeline for when a request for priority is possible and the proposed new timelines when a request for priority is possible. The time-line begins on the left at 0 months and extends to the right to an indefinite point in time. Noted on the time-line are important dates at 0, 12, 14 and 16 months. An arrow pointing to 0 months represents the filing date of a previously filed application, abbreviated PRI. A green arrow above the timeline illustrates the current state.

The green arrow extends from 0 months to 12 months. At 12 months an indicator arrow notes the time limit for filing a pending application within which it is possible to claim priority to the PRI. The time limit is 12 months after the filing date of the PRI. There is no restoration of the right of priority in the current state. A red arrow immediately following the green arrow and extending to the right indicates that priority based on a particular PRI would not be available if the pending application is filed more than 12 months after the PRI. A second green arrow above the time-line illustrates the proposed new state.

The green arrow extends from 0 months to 12 months and is drawn solid. At 12 months an indicator arrow notes the time limit for filing a pending application within which it is possible to claim priority to the PRI. The time limit is 12 months after the filing date of the PRI. A dashed green line immediately follows the green arrow and extends from 12 months to 16 months. An indicator arrow at 14 months indicates the time-limit for filing a pending application within which it is possible to claim restoration of the right of priority to the PRI. An application filed more than 14 months after a particular PRI would not be able to claim restoration of the right of priority based on that particular PRI.

An indicator arrow at 16 months indicates that the applicant must request the restoration of priority before the end of 2 months after the filing date of the pending application. A red arrow immediately following the dashed green line and extending to the right indicates that priority based on a particular PRI would not be available if the request for restoration of the right of priority is not made before the end of 2 months after the filing date of the pending application.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

Bill C-43:
Reference to previously filed application - Section 27.01 of the Patent Act (not yet in force)
Claim date - Section 28.1 of the Patent Act (not yet in force)
Request for priority - Section 28.4 of the Patent Act (not yet in force)
Proposed Patent Rules:
Requests for Priority - Sections 74-77
Restoration of Priority - Sections 78 and 79

Completing a Patent Application

A patent application consists of many parts, only a few of which are required to obtain a filing date (see Consultation Paper on Minimum Filing Requirements). However, all of the parts of the patent application must be submitted to complete the patent application within a short time after the filing date. The parts required for a complete patent application will not change under the amended patent legislative regime though there will be some proposed changes regarding how and when an application is to be completed.

Current State

The current patent legislative regime requires a sum of parts for a complete patent application. A description is required at filing whereas the rest of the parts are not required to obtain a filing date. If the remaining parts (listed below) are not provided at the time of filing, then the Patent Rules require them to be submitted within 15 months of the filing date or the earliest priority date requested. If the application does not meet the completion requirements within that time, the Commissioner sends a notice requiring the applicant to comply with the requirements before the later of 3 months from the date of the notice and 12 months after the filing date as well as a completion fee of $200. If the applicant doesn't respond to the notice, the application becomes abandoned.

The parts presently required for a complete patent application are:

Separate from the filing and completion requirements is the requirement for a declaration of entitlement when the application is not filed by the inventor. If it is required and it is not submitted when the patent application is filed, the Commissioner sends a notice requiring it to be submitted within 3 months otherwise the application will be abandoned.

Proposed New State

The recent changes to the Patent Act, which are not yet in force, and the proposed amendments to the Patent Rules maintain the same list of parts and requirements, though some would no longer be required to complete a patent application to make it compliant.

The parts required for a complete patent application would be:

Under the new proposed legislative regime, if the application is not complete on the filing date, the Commissioner will send a notice requiring it to be completed. Once the notice is sent, the applicant will have three months from the date of the notice to comply with the completion requirements. There will no longer be an additional fee to complete the application after a notice is sent. However, if the notice is not complied with, then the application will be deemed abandoned with the possibility to be reinstated.

Applicants will be required to provide drawings showing the parts of the invention, if appropriate. Where they have not been provided, the Commissioner can require that an applicant provide further drawings or the Commissioner can dispense with the requirement to furnish drawings. If the request to provide more drawings is not complied with, within 3 months of the notice, the application will be abandoned.

The appointment of a patent agent and/or an associate patent agent, if applicable, will no longer be a completion requirement. If a patent agent is required, the Commissioner will send a notice requiring the applicant to appoint an agent within three months of the notice. (Please see the Consultation Paper - Representation for more information).

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-43:
Application for Patents - Subsection 27(6) (not yet into force)
Application for Patents - Subsection 27(5.2)(not yet into force)
Proposed Patent Rules:
Application by sole inventor or sole inventors - Section 57
Inclusion of abstract - Subsection 58(1)
PCT sequence listing standard - Subsection 61(1)
Non-compliant Application for a Patent - Section 67, 68
Notice of missing parts of application - Section 73(1)

Representation

The current Patent Rules imposes limits on who the Patent Office can communicate with during the patent application stage. The Patent Office can only communicate with the authorized correspondent, which is typically the appointed patent agent. Proposed amendments to the Patent Rules will allow more flexibility with respect to who can represent the applicant and communicate with the Patent Office regarding certain actions to prosecute and maintain a patent application. The proposed amendments will also introduce the concept of a common representative.

Appointment of a Common Representative

There is no common representative under the current Patent Rules. The proposed amendments define which applicant is the common representative when there is more than one applicant. A common representative is one of multiple applicants or patentees and allows him/her to represent them jointly. This concept, similar to the existing one in the Patent Cooperation Treaty, is intended to address situations where joint applicants cannot all sign the same document in a time-sensitive procedure, such as the appointment of a patent agent. The proposed amendments also contain default provisions for identifying the common representative when none has been appointed or when they are no longer an applicant or patentee.

Appointment of Patent Agents

The proposed amendments maintain the mandatory requirement under the current Rules to appoint a patent agent if:

If the applicant is required to appoint a patent agent, the Patent Office will send a notice requiring the appointment within three months after the date of the notice. The applicant will be able to appoint an agent who resides in Canada or a non-Canadian resident agent, who in turn will be required to appoint an associate patent agent who resides in Canada within the same three months of the notice. Failure to do so will cause the patent application to be deemed abandoned. Please see the Consultation Paper on Abandonment & Reinstatement for more information.

A patent agent can be appointed:

Appointing an Associate Patent Agent

The proposed amendments maintain the regulatory regime for associated patent agents. Only an appointed patent agent can appoint an associate patent agent. A foreign patent agent must appoint a Canadian associate patent agent. If the appointment is made at the time of filing an application for a patent, it can be made:

If the agent is required to appoint an associate patent agent, the Patent Office will send them a notice requiring them to do so within three months after the date of the notice. Failure to do so will cause your patent application to go abandoned. Please see the Consultation Paper on Abandonment & Reinstatement and Notice Regime for more information.

Representation - Who Can Take Action with the Patent Office?

Current State

During the application stage, the Patent Rules impose a limit so that the only person who can take action on the file, whether it is to communicate with the Patent Office, submit documents or pay fees, is the authorized correspondent. If a patent agent has been appointed, they are the authorized correspondent; otherwise, it will be the inventor who is also the applicant. Once the patent has been granted, the Patent Office will accept maintenance fee payments from persons authorized by the patentee.

Proposed New State

The proposed amendments will permit more individuals to represent the applicant for certain actions related to prosecution and maintenance of patent applications. In general, the following individual will always be allowed to take action with the Patent Office:

However, there are exceptions where other individuals will be able to perform some actions related to the prosecution and maintenance of patent applications, whether or not a patent agent has been appointed:

  1. Submitting a patent application to obtain a filing date:
    • Who may act?
      1. The appointed patent agent /associate patent agent
      2. Any of the applicants
      3. A person authorized by any of the applicants
  2. Submitting a request for PCT national entry:
    • Who may act?
      1. The appointed patent agent /associate patent agent
      2. Any of the applicants
      3. A person authorized by any of the applicants
  3. Paying a maintenance fee for a patent application or a patent:
    • Who may act?
      1. The appointed patent agent /associate patent agent
      2. Any of the applicants
      3. A person authorized by any of the applicants
  4. Submitting a request to record a transfer:
    • Who may act?
      1. The appointed patent agent /associate patent agent
      2. Any of the applicants
      3. A person authorized by any of the applicants
      4. The transferee with satisfactory evidence
  5. Reinstate a patent application that is abandoned due to an unpaid maintenance fee
    • Who may act?
      1. The appointed patent agent /associate patent agent
      2. The sole applicant or the common representative, as applicable
  6. Any action for an issued patent (with some exceptions reissue, disclaimers and re-examination)
    • Who may act?
      1. The appointed patent agent /associate patent agent
      2. The sole applicant or the common representative, as applicable

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-43:
Transfers - Section 49 (not yet into force)
Proposed Patent Rules:
Appointment of Common Representative - Section 33
Representation - Sections 40 to 47

Examination Process and Amendments to Applications

Amendments to the examination process and to when applications may be amended are being proposed to streamline patent prosecution and to allow for more efficiency and certainty in the market place with regards to patents. Within the context of the examination process important amendments are proposed to various time limits, the examination process and when amendments to applications can be made. An explanation of some of the notable proposed changes to the examination process and to when amendments to applications can be made follows.

Time Limit for Requesting Examination

Current State

The time limit for requesting examination is currently 5 years after the filing date of the application. Currently, where examination has not been requested before the expiry of the five year time limit, the application is abandoned and a courtesy letter is sent notifying the applicant of such. Applicants have 12 months from the date of abandonment to request examination, pay the prescribed fee and to reinstate the application.

Proposed New State

The time limit for requesting examination is being shortened from 5 years to 3 years after the filing date of the application. Where examination has not been requested before the expiry of this new time limit, a notice will be sent to the applicant informing them of the non-compliance and requiring compliance within 2 months from the date of the notice. Where this notice is sent, an additional late fee of $150 will be required. Failure to comply with the notice will result in the deemed abandonment of the application.

The reduction in the time-limit to request examination reduces overall application pendency before a decision is rendered on the patentability of an invention thus reducing the period of uncertainty for third parties.

Time Limit to Respond

Current State

The time limit to respond to a notice of allowance and the time limit to respond to an examiner's report are currently 6 months. Shorter time periods for responding to examiner reports are established for applications that are undergoing certain forms of accelerated examination.

Proposed New State

It is proposed to reduce the time limits to respond to a notice of allowance and the time limit to respond to an examiner's report from 6 months to 4 months. The 4 month time-limit would apply to all applications irrespective of if they are undergoing accelerated examination.

A uniform time limit to respond to examiner's reports will reduce the administrative burden on applicants to keep track of due-dates. The reduction in the time-limit to respond to a notice of allowance or an examiner's report reduces overall application pendency before a decision is rendered on the patentability of an invention thus reducing the period of uncertainty for third parties.

Amending Applications after a Notice of Allowance

Current State

There are restrictions on the types of amendments to an application which are permitted after a notice of allowance is sent to the applicant. An amendment will be accepted after a notice of allowance is sent only if a prescribed fee of $400 is paid and if the amendment would not require a further search by the examiner nor make the application not comply with the Patent Act or Rules.

Where the applicant desires to make amendments which require a further search by the examiner or which would make the application not comply with the Patent Act or Rules they would need to go through a process of not paying the final fee resulting in the application being abandoned and then subsequently reinstating the application to bring it back into examination before the patent examiner.

Amendments to correct obvious clerical errors can be made free of charge after the notice of allowance.

Proposed New State

The proposed Patent Rules streamline the process for amendments after allowance. It is proposed to afford applicants the opportunity to make a request that the notice of allowance be deemed never to have been sent, after which amendments to the application will be possible. Upon payment of a fee of $400 and the filing of the aforementioned request, the application will be subject to further examination and amendments will be possible. Applicants will no longer need to resort to the abandonment and reinstatement process to make certain desired amendments.

For more information on correcting errors in applications and patents please see the Consultation Paper titled “Corrections”.

Amending an Application before Translating the Application into English or French

Current State

The Patent Rules do not currently allow applications to be filed in a language other than English or French. Therefore, there are currently no restrictions on amendments in this regard.

Proposed New State

If an application is filed in a language other than English or French the applicant will be required to provide a translation of the application into English or French before amendments to the application will be permitted.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-43:
Examination - Section 35 of the Patent Act (not yet in force)
Proposed Patent Rules:
Requests for Examination - Section 80-81
Documents not in English or French - Section 21
Examination - Section 82
Amendments of Specification and Drawings - Sections 98-102

Abandonment & Reinstatement and Notice Regime

In the current Canadian patent system an application for a patent can enter a state of abandonment when an applicant fails to take certain actions that are required for the continued prosecution of the application. An example of this is when a request for examination is not made or when a maintenance fee is not paid by their respective due dates. An applicant may choose to not take certain required actions because they no longer wish to pursue patent protection and desire the application to be abandoned, or they may fail to take a required action inadvertently. In both cases an applicant has 12 months from the date of abandonment within which to take the action(s) that should have been taken to avoid abandonment and to reinstate the application. The reinstatement function in effect acts as a safety net. If an application is not reinstated within 12 months of the date of abandonment it is irreversibly abandoned and the application is considered dead.

Failing to take an action by a required due date, such as failing to pay a required fee or to provide certain documents, is a common challenge for applicants. Such a failure may lead to the dramatic consequence of an inadvertent loss of rights if the applicant fails to avail themselves of the existing safety net, reinstatement, to rectify their failure. The Patent Law Treaty (PLT) requirements incorporated into Canadian provisions will further minimize the risk of an applicant losing potential patent rights when the new legislation comes into force.

With respect to abandonment and reinstatement the proposed amendments to the Patent Rules relate to prescribed times, circumstances, fees and other procedural matters.

Abandonment and New Notice Regime

Current State

Canadian legislation provides that when certain actions are not taken within the prescribed time limit the application for patent is deemed to be abandoned. The Patent Office notifies the applicant of the abandonment; however, the notice is merely a courtesy and the abandonment occurs by operation of law. An applicant may remedy the failure which caused the abandonment by reinstating the application; but must do so within twelve months of the date of the abandonment. Failure to reinstate an application will result in the application being irreversibly abandoned.

Proposed New State

The notice requirements in the PLT obligate patent offices to notify applicants of a non-compliance with procedural requirements before any sanction, such as abandonment, can take effect. Currently in some instances the Patent Office already complies with the PLT notice requirements. For example, when the application does not comply with certain formalities or is defective in a substantive way (e.g. lacking novelty) the Patent Office requisitions the applicant, in a notice (Examiner's Report), to comply within a specified time limit. Failure to respond to such a notice before the expiry of the time limit causes the application to be deemed abandoned. In these instances where CIPO already complies with the PLT notice requirements, no changes to notifications are envisioned other than to shorten the time limits for the applicant to comply.

In the current system there are instances where abandonment of an application may occur without notification. Where the Patent Office does not currently notify the applicant that an action must be performed, such as when a maintenance fee is due, to comply with the PLT the Patent Office will be required to notify the applicant and provide additional time within which the applicant must take the action. In the new regime abandonment can only occur if the applicant fails to comply with the requirements of the notice before the expiry of the time period stated in the notice. Thus after the coming in force of the new legislation, the Patent Office will provide new notifications and additional time to comply in those instances where currently abandonment may occur without notification.

When, for example, a maintenance fee for an application is not submitted in a timely manner, the Patent Office will notify the applicant of the non-compliance. The time limit to rectify the non-compliance in this case will be the later of: two months from the date of the notification or six months from the original due date to comply with the requirement. Similarly, if an applicant fails to request examination in a timely manner, the Patent Office will notify the applicant of the failure and require compliance within 2 months of the date of the notice. Failure to comply with the notice before the expiry of the time limit will cause the application to be deemed abandoned. Thus the abandonment will no longer be an operation of law, but will be linked to the notice informing the applicant of the non-compliance. The remedy to rectify the abandonment of an application is reinstatement of the application, similar to the current system.

The new notice regime will cause applications to be abandoned later than they would in the present system, and therefore will increase legal uncertainty for third parties. Because the abandonment and reinstatement regime should be used as a safety net, and in order to reduce the amount of legal uncertainty for third parties, there is a provision allowing for third party rights that provides a disincentive to abandoning applications. Importantly, third parties who take certain actions during specific time periods could be exempted from actions for infringement of any resulting patent. For a more complete explanation of the third party rights provision see the consultation paper titled - Third Party Rights and Due Care.

Examples of common causes of abandonment for an application for patent

Current State Proposed New State

Failure to reply to an examiner's report.

Abandoned if no reply received before time specified in the report (typically 6 months).

Abandoned if no reply received before 4 months after the date of the examiner's report.*

Failure to comply with a notice with respect to completion requirements for filing an application for patent.

Abandoned if applicant does not comply with the notice before 3 months after the date of the notice.

Abandoned if applicant does not comply with the notice before 3 months after the date of the notice.

Failure to pay a maintenance fee on time.

Abandoned immediately if fee is not paid on or before the due date.Footnote 2

Abandoned on the later of 2 months from the date of a notice requiring payment or 6 months from the due date.

Failure to request examination and pay the prescribed fee on time.

Abandoned if actions are not taken before the expiry of 5 years after the filing date.

 Abandoned If actions are not taken before 2 months after the date of a notice which will be sent after the 3 year time limit to request examination.

Failure to provide a required translation of a reference filing or an application filed in a language other than English or French.

Reference filings and the ability to file in a language other than English or French does not exist in current state

Abandoned if applicant does not comply with the notice before 2 months after the date of the notice.

Failure to comply with a notice requiring appointment of a patent agent.

Abandoned if applicant does not comply with the notice before 3 months after the date of the notice.

Abandoned if applicant does not comply with the notice before 3 months after the date of the notice.

*The Commissioner may authorize an extension of time of 2 months to reply, resulting in a reply to the examiner's report being required before 6 months after the date of the examiner's report.

Reinstatement

Current State

Reinstatement of an abandoned application currently requires the applicant to request the reinstatement within 12 months of the abandonment, pay the reinstatement fee, and take the action that should have been taken to avoid the abandonment.

Proposed New State

The current reinstatement requirements will remain in the proposed new state. However, the new linkage between the notice of non-compliance and the abandonment of an application, while enhancing the safety net for applicants, does also create some additional market uncertainty for third parties as a result of increased time limits. In order to balance these opposing tensions, additional requirements for reinstatement of an abandoned application will further help ensure that the extended periods of uncertainty (the additional time provided by the notice and the time provided to remedy the failure) remain a safety net only used where necessary, rather than a default approach that may otherwise be used strategically in the prosecution of an application for a patent.

Demonstrating Due Care will be an additional requirement for the reinstatement of an application when an application is deemed to be abandoned for failure to pay a maintenance fee. Where an application is abandoned for failure to request examination, demonstrating Due Care will be an additional requirement when the applicant reinstates the application at a date that is more than 6 months from the date the request for examination should have been made.

If demonstrating due care is a condition to reinstate an application the applicant will be required to provide the reasons for failing to pay their maintenance fee or failing to request examination in time. The Commissioner will reinstate the application if all the requirements are met and if the Commissioner determines that the failure occurred in spite of the due care required by the circumstances.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-43:
Abandonment and Reinstatement - Section 73 of the Patent Act (not yet in force)
Bill C-59:
Abandonment and Reinstatement - Section 73 of the Patent Act (not yet in force)
Proposed Patent Rules:
Abandonment and Reinstatement - Sections 128-132

Third Party Rights and Due Care

Amendments to the Patent Act and Rules required for compliance with the Patent Law Treaty (PLT) will introduce a series of new safety nets for applicants and patentees. These safety nets include increased time limits to remedy certain deficiencies such as, for example, a missed maintenance fee payment. Increases in these time limits are likely to cause increased uncertainty for third parties; therefore, new balancing provisions are being introduced to mitigate the impact of potentially longer periods of market uncertainty. These balancing provisions will both encourage timely actions and responses by applicants and patentees and will incentivize an early reversal of an abandonment of an application or deemed expiry of a patent. These balancing measures are third party rights and the due care requirement for reversing abandonment or deemed expiry.

Third Party Rights

Rights are afforded to third parties who, while the patent rights are uncertain, take actions in good faith which would otherwise constitute an infringement. In specific circumstances, third parties will be protected against infringement proceedings when they start using or make serious and effective preparations to use a patented invention after a prescribed period of time has elapsed after IP rights appear uncertain. IP rights may appear uncertain when an applicant or patentee did not take an action that should have been taken during the course of prosecuting an application or maintaining a patent.

The availability of third party rights is a significant departure from the current Canadian patent system in which there are no third party rights. While the framework for third party rights is established in the Patent Act the precise parameters surrounding their application are primarily provided in the Patent Rules.

Failure to pay a maintenance fee on a patent application or a granted patent, failure to request examination of a patent application and provide the prescribed fee, and failure to take any action that results in an abandonment of an application could give rise to third party rights as described and illustrated in the Appendix: Proposed application of due care and third party rights.

Due Care

The due care requirement is one that will need to be met in certain circumstances in order to reinstate an application or to reverse the deemed expiry of a patent. Whether or not due care will be required is proposed to be dependent on both the type of failure that led to the abandonment or deemed expiry and the point in time when the failure was rectified. Only when due care is required to be shown, a request to reinstate an application or reverse the deemed expiry of a patent must include the reasons for the failure to take an action and should describe the circumstances that the applicant/patentee was faced with which led to the failure that resulted in abandonment or deemed expiry.

When due care is required the Commissioner will make a determination, based on the facts of the case, as to if the applicant or patentee failed to take an action that should have been taken in order to avoid abandonment or deemed expiry despite all due care required by the circumstance. The Commissioner may ask the client for additional documentation or information if deemed necessary to make a determination. Additional documentation could include supplementary details, medical notes or other evidence of the facts (e.g. affidavit).

Applicants may need to demonstrate due care to reinstate an application that is abandoned for a failure to pay a maintenance fee and the late fee on time or a failure to request examination and pay the prescribed fee and the late fee on time as described and illustrated below in the Appendix. Due care will not be required to reinstate applications that have been abandoned for failure to take any other action.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-43:
Abandonment and Reinstatement - Section 73 of the Patent Act (not yet in force)
Third Party Rights - Section 55.11 of the Patent Act (not yet in force)
Maintenance Fees for Patents - Section 46 of the Patent Act (not yet in force)
Maintenance Fees for Patents - Section 27.1 of the Patent Act (not yet in force)
Bill C-59:
Abandonment and Reinstatement - Section 73 of the Patent Act (not yet in force)
Proposed Patent Rules:
Third Party Rights - Section 125
Non-application of parts of subsection 73 (3) of Act - Section 132

Appendix: Proposed application of due care and third party rights

Applications for a Patent

A. Maintenance Fee

In the current regime an application will go abandoned immediately after a maintenance fee is not paid by the due date. Applicants have 12 months from this date to pay the fee that should have been paid and to request reinstatement before the application is dead.

Current State

Applications maintenance fee current state - See description below

Detailed description

The figure contains a time-line illustrating the current abandonment and reinstatement regime for non-payment of a maintenance fee for a patent application. The time line begins at 0 months and an arrow at 0 months represents a maintenance fee due date. An arrow pointing to 0 months indicates abandonment occurs at this date when the maintenance fee is not paid. An illustration on the time-line after 0 months indicates that a courtesy notice is provided when there is a failure to pay a maintenance fee on-time. An arrow at 12 months indicates the deadline to reinstate the application which is 12 months from the date of abandonment.

In the new regime when a maintenance fee is not paid on time a notice will be sent to the applicant requiring the payment of the fee and a late fee. If these fees are not paid before the later of 6 months from the maintenance fee due date and 2 months from the date of the notice, the application will be abandoned. It is proposed that if a maintenance fee due for an application is not paid on time:

  1. Third party rights will apply starting from 6 months after the maintenance fee due date.
  2. Due Care will be required to reinstate the application in the time period beginning immediately after abandonment.
Proposed New State

Applications maintenance fee proposed state - See description below

Detailed description

The figure contains a time-line illustrating the proposed new state for when third party rights and due care will apply when maintenance fee for a patent application is not paid on or before the due date. The time line begins at 0 months and an arrow at 0 months represents a maintenance fee due date. An illustration on the time-line after 0 months indicates that a notice is provided when there is a failure to pay a maintenance fee on-time. An arrow at 6 months indicates the date when the patent application will typically be deemed abandoned for a failure to pay a maintenance fee on time. Abandonment occurs on the date that is the later of 6 months after the maintenance fee due date and 2 months from the date of the notice. An arrow at 18 months indicates the deadline to reinstate the application. The deadline to reinstate the application is 12 months after the end of 6 months after the maintenance fee due date. While this is illustrated at 18 months on the time-line it may be a different date where deadlines become extended. Under the time-line is a red arrow beginning at 6 months and extending indefinitely to the right. This arrow indicates that third party rights may apply 6 months after maintenance fee due date. In most cases, third party rights will apply until the earlier of reinstatement of the application of the granting of the patent. Also under the time-line is a red arrow beginning at 6 months and extending indefinitely to the right. This arrow indicates that due care will apply to reinstate the patent application.

B. Request for Examination

In the current regime an application will go abandoned if an applicant does not request examination and pay the prescribed fee before the 5 year period after from the filing date of an application. Applicants have 12 months from the date of abandonment to request examination, pay the prescribed fee and request reinstatement before the application is dead.

Current State

Applications request for examination current state - See description below

Detailed description

The figure contains a time-line illustrating the current abandonment and reinstatement regime for failure to request examination of an application before the time limit to request examination. The time line begins at 0 months and an arrow at 0 months represents the time limit to request examination. An arrow pointing to 0 months indicates abandonment occurs at this date when an applicant has not successfully requested examination before the time limit to request examination. An illustration on the time-line after 0 months indicates that a courtesy notice is provided when there is a failure to request examination of an application before the time limit to request examination. An arrow at 12 months indicates the deadline to reinstate the application which is 12 months from the date of abandonment.

Proposed New State

In the new regime applicants must request examination before the expiry of the 3 year period after the filing date. This time period is extended in limited circumstances for PCT applications and divisional applications. If the applicant fails to request examination and pay the prescribed fee before the prescribed date a notice will be sent to the applicant requiring this action be taken. If the action is not taken before 2 months from the date of the notice, the application will be abandoned. It is proposed that if an applicant fails to request examination and pay the prescribed fee before the prescribed date:

  1. Third party rights will apply starting from 6 months after the prescribed time.
  2. Due Care will be required to reinstate the application in the time period beginning 6 months after the prescribed date.

Applications request for examination proposed state - See description below

Detailed description

The figure contains a time-line illustrating the proposed new state for when third party rights and due care will apply when there is a failure to request examination of an application before the time limit to request examination. The time-line begins at 0 months and an arrow at 0 months represents the time limit to request examination. An illustration on the time-line after 0 months indicates that a notice is provided when there is a failure to request examination of an application before the time limit to request examination. An arrow at just after 2 months indicates the date when the patent application will typically be deemed abandoned for a failure to request examination of an application before the time limit to request examination. Abandonment occurs on the date 2 months after the date of the notice. An arrow at just past 14 months indicates the deadline that is 12 months from the date of abandonment. This is the deadline to reinstate the application. Under the time-line is a red arrow beginning at 6 months and extending indefinitely to the right. This arrow indicates that third party rights may apply 6 months after the time limit to request examination. In most cases, third party rights will apply until the earlier of reinstatement of the application of the granting of the patent. Also under the time-line is a red arrow beginning at 6 months and extending indefinitely to the right. This arrow indicates that due care will apply to reinstate the patent application in the period starting 6 months after the time limit to request examination.

Patents

A. Maintenance Fee is unpaid

In the current regime a patent is deemed to expire if the maintenance fee is not paid within a 12 month period of grace after the fee is due. In the current regime there is no requirement to show due care after having missed payment of a maintenance fee and there are no third party rights.

Current State

Patents maintenance fee unpaid current state - See description below

Detailed description

The figure contains a time-line illustrating the current grace period regime for non-payment of a maintenance fee for a patent. The time line begins at 0 months and an arrow at 0 months represents a maintenance fee due date. An dashed horizontal arrow starting at 0 months and extending to 12 months indicates there is a 12 month period of grace in which to pay the maintenance fee after missing payment on or before the maintenance fee due date. An illustration on the time-line after 0 months indicates that a courtesy notice is provided when there is a failure to pay a maintenance fee on-time. An arrow at 12 months indicates the deadline to pay the missed maintenance fee before the term limited for the duration of the patent is deemed expired.

In the new regime when a maintenance fee is not paid on time a notice will be sent to the applicant requiring the payment of the fee and a late fee. If these fees are not paid before the later of 6 months from the maintenance fee due date and 2 months from the date of the notice, the patent will be deemed to expire retroactively as of the maintenance fee due date. It is proposed that if a maintenance fee on a patent is not paid on time:

  1. Third party rights may apply 6 months after the maintenance fee due date; and,
  2. Due Care will be required to reverse the deemed expiry in the time period beginning 6 months after the deemed expiry.
Proposed New State

Patents maintenance fee unpaid proposed state - See description below

Detailed description

The figure contains a time-line illustrating the proposed new state for when third party rights and due care will apply when maintenance fee for a patent is not paid on or before the due date. The time line begins at 0 months and an arrow at 0 months represents a maintenance fee due date. An illustration on the time-line after 0 months indicates that a notice is provided when there is a failure to pay a maintenance fee on-time. An arrow at 6 months indicates the date when the term of the patent will typically be deemed expired retroactively for a failure to pay a maintenance fee on time. The date the patent is deemed expired retroactively is the later of 6 months after the maintenance fee due date and 2 months from the date of the notice. An arrow pointing from 6 months back to 0 months indicates that the term is deemed expired retroactively as of the maintenance fee due date. An arrow at 18 months indicates the deadline to reverse the deemed expiry of the patent. The deadline to reverse the deemed expiry of the patent is 12 months after the end of 6 months after the maintenance fee due date. While this is illustrated at 18 months on the time-line it may be a different date where deadlines become extended. Under the time-line is a red arrow beginning at 6 months and extending indefinitely to the right. This arrow indicates that third party rights may apply 6 months after maintenance fee due date. In most cases, third party rights will apply until deemed expiry is reversed. Also under the time-line is a red arrow beginning at 6 months and extending indefinitely to the right. This arrow indicates that due care will apply to reverse the deemed expiry of the patent.

Corrections

From time to time a patent application or a patent can contain errors due to an oversight by the applicant/patentee or the Patent Office. The most common errors in patent applications are the identification of applicants and inventors, and information regarding the priority claims.

Recent amendments to the Patent Act, which are not yet in force, have repealed the provision for correction of clerical errors and replaced it with regulations providing authority to correct obvious errors.

Current State

Under the Patent Act, clerical errors in any document at the Patent Office may be corrected at the discretion of the Commissioner. A clerical error is narrowly defined by the courts as an error that has arisen out of the mechanical process of writing or transcribing. Errors that fall outside of this definition cannot be corrected by the Commissioner.

The correction of clerical errors originating from the patentee or applicant requires payment of a fee while no fee is levied for clerical errors originating from the Patent Office.

Proposed New State

Correction of Error in a Patent Application

It will be possible to request the correction of certain errors in the identification and names of applicants and inventors if the corrections are made within the time limits outlined in the proposed Patent Rules. There will be no fee associated with these types of corrections.

Applicant Identity: The person who submitted the application will be able to request correction of the identity of the applicant, as long as the error arose from inadvertence or mistake without any deceptive intention and the person who submitted the application provides a statement to that effect. The request will have to be made before the application becomes open to public inspection and before the Commissioner records a transfer.

Inventor Identity: It will be possible to request the correction of the identity of an inventor, provided that the request for correction is made before a notice of allowance is sent.

Applicant/Inventor Name: It will be possible to request the correction of the name of the applicant or inventor, if that change does not change their identity and the change is requested before payment of the final fee.

Specification or Drawings: Any error in the specification or drawings during the application phase may be corrected through the amendment provisions. Obvious errors in the specification or drawings may be corrected after the notice of allowance is sent until the final fee is paid.

Corrections to the Priority Claim

It will be possible to correct an error in the filing date, name of country or office and/or number in a priority claim during the application phase. However, certain time limits will narrow the availability of the correction mechanism depending on the information in the priority claim being corrected. There will be no fee associated with corrections to the priority claims.

Priority Filing Date: If the patent application has not yet been opened to public inspection and the applicant has not requested that it be opened to public inspection early, then it may be possible to request the correction of an error in the filing date of the priority application, if that request is made before the earlier of the uncorrected date and the corrected date on which the application would be open to public inspection.

Patents maintenance fee unpaid proposed state - See description below

Detailed description

The figure contains a decision tree to determine the deadline to submit a correction to the priority filing date. There are 2 boxes where the user determines the later of 16 months from the originally submitted priority date or 4 months from the application filing date. Then the user takes the result of the previous box and combined with another calculation box determines the earlier of that date and the open to public inspection date as per the originally submitted priority date. The user then repeats all of the above calculations for the requested corrected priority date. The final 2 boxes asks the user to determine the earlier of the time limit using the originally submitted priority date and the time limit using the requested corrected priority date. The time limit to make the correction to the priority date is the earlier of the 2 results.

Priority Filing Country/Office: Upon request, it will be possible to correct an error in the name of a country or office of filing. The request must be made before the pending application is open to public inspection. It will also be possible to make the correction after the pending application is open to public inspection and before the final fee is paid, if it would have been obvious from documents in the Patent Office that the name of another country or office of filing was intended.

Priority Application Number: It will be possible to request the correction of an error in the application number before payment of the final fee.

Correction of Errors in an Issued Patent

For a limited time after a patent is issued, it will be possible to correct three types of errors:

  1. Patent Office errors - errors made by the Patent Office in the patent, or in the specification or drawings referenced in the patent
  2. Errors in the name of the patentee or inventor
  3. Obvious errors in the specification and drawings

1. Office Errors: The Patent Office may correct errors, made by the Commissioner, in the patent, specification or drawings referenced in the patent within six months after the issue of the patent. In order for the Patent Office to make the correction, it must be obvious based on the documents on file that something else was intended and nothing else could have been intended. This section is intended for the Office to correct errors it has made in issued patents for a limited period of time following the patent's issue. No fee is required for obvious errors made by the Commissioner.

These corrections may only be made within six months after issue, therefore patentees will be encouraged to identify and communicate any Office errors in their issued patent as soon as possible after grant to allow sufficient time for the Patent Office to make the correction.

2. Errors - Name of Patentee or Inventor: Patentees will be able, within four months of the patent's issue, to request correction of errors in the name of patentee or the inventor. The actual correction may be made after the four month period, so long as the request is made before the time limit. The correction in the patentee or inventor name must not change the identity of the patentee or inventor.

3. Obvious Errors - Specification or Drawings: Patentees will be able, within four months of the patent's issue, to request correction of obvious errors in the specification or drawings if it would have been obvious to a person skilled in the art that something else was intended than what appears AND nothing else could have been intended other than the correction. The actual correction may be made after the four month period, so long as the request is made before the time limit.

Content of Requests to Correct Errors

The proposed amendments specify the content for a request to correct errors. No content is specified for requests to correct Office errors, though patentees will be encouraged to identify the patent, the error and any other pertinent details in their request.

The correction request for errors must contain:

If the patentee does not comply with the formal requirements and/or pay the fee, the Commissioner will send a notice requesting that the patentee submit the required information and/or fee within three months of the notice. If the required information and/or fee are not received within that time, the request for correction will be considered never to have been made.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Proposed Patent Rules:
Corrections - Sections 103-110
Corrections - error in name of country or office - Subsections 74(5) and (6)
Correction in number of application - Subsection 74(7)

Transfers, Change of Name and Related Documents

Patent applications and patents are intellectual property that can be sold, licensed or used to negotiate funding, venture capital or other forms of financing. Registering or recording these transactions, as well as changes to the names of applicants or patentees, in a timely manner allows the Patent Office to issue patents to the correct owners and maintain accurate records.

While it is not mandatory for applicants or patentees to register an assignment, a transfer or a change of name with the Patent Office, there are benefits to doing so in a timely manner. Registering an assignment or a change of nameFootnote 3 on a patent application ensures that the patent is granted to the correct person. Registering an assignment, a transfer or a change of name after a patent has been issued ensures that the Patent Office's records are up to date for third parties to easily recognize who owns the rights to the invention.

Current State

The current Patent Act and Rules accounts for these transitions and provides the authority for the Patent Office to:

  1. Register an assignment
  2. Register a change of name
  3. Register any document relating to a patent or application

Under the current Patent Act and Rules the process of registering an assignment or a change of name document with the Patent Office can be onerous. In order to register an assignment, the applicant or patentee must request the registration of the assignment, provide a copy of the assignment document along with an affidavit or other proof that the assignment has been signed and executed.

Registering a change of name is also onerous. The applicant or patentee must request registration of the change of name document and provide proof in the form of an affidavit, statutory declaration or a copy of the change of name document to show that the change of name has occurred.

It is also possible to register documents relating to a patent application or a patent on a file upon request.

Each registration (assignment, change or name, or document) requires payment of the $100 fee.

Proposed New State

Recent amendments to the Patent Act, which are not yet in force, updates the term ‘assignment' to ‘transfer' as well as updating terminology for ‘registering' of transfers and changes of name to ‘recording'. The Patent Office would:

The proposed amendments to the Patent Rules will set out the specific requirements for registering documents and recording transfers and name changes.

Recording of Transfers and Name Changes and Registration of Documents

1. Recording a Transfer

Under the proposed Patent Rules, a request to record a transfer by the applicant or patentee will only require:

If a request to record a transfer is submitted by the transferee (and not the currently recognized applicant or patentee), the transferee will need to provide evidence of the transfer to the Commissioner.

2. Recording a Name Change

Changes of name that do not change the identity will be recognized on the request of the applicant or patentee under the proposed amendments to the Patent Rules. Changes of name Footnote are distinct and separate from the correction mechanisms for applicants under the Rules (see Consultation Paper on Corrections.). There will no longer be a requirement to provide evidence of the change of name by way of statutory declaration or affidavit. The document effecting the change of name will also not be required. Payment of the $100.00 fee will still be required.

3. Related documents

Clients will continue to register documents in the same way they do now (other than a transfer or change of name document). The Commissioner will register any document relating to a patent or a patent application when requested and payment of the $100 fee.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-43:
Transfers - Section 49 (not yet into force)
Proposed Patent Rules:
Registration of Documents and Recording of Transfers - Sections 121-123

Annex: Comparison of requirements for recording of transfers and changes of name and registration of documents

Request to record transfer (from applicant or patentee)

Current State

Proposed New State

Request to register an assignment/record a transfer Yes Yes
Copy of the assignment /transfer document Yes No
Affidavit of witness or other proof that the transfer was executed Yes No
Name and postal address of transferee Yes Yes
Fee ($100) Yes Yes
Request to record a transfer (from transferee)

Current State

Proposed New State

Request to register/record an assignment/transfer Yes Yes
Copy of the transfer document Yes No
Affidavit of witness or other proof that the transfer was executed Yes No
Evidence of the transfer No Yes
Name and postal address of transferee Yes Yes
Fee ($100) Yes Yes
Name Change

Current State

Proposed New State

Request to register/record an assignment/transfer Yes Yes
Copy of the transfer document Yes No
Fee ($100) Yes Yes
Registering Related Documents

Current State

Proposed New State

Request to register/record an assignment/transfer Yes Yes
Copy of the transfer document Yes Yes
Fee ($100) Yes Yes

Fees

Different fees must be paid at different times during the patent application process as well as after the patent is granted to maintain the patent rights. The Canadian Intellectual Property Office funds its operations according to the cost recovery principle for patent application services. The proposed Patent Rules do not provide for changes in the amounts of the fees. However, there is a new late fee prescribed by the Patent Act, which is not in force. There are also changes in the fee payment deadlines and the elimination of fees for completing an application and for clear but unsuccessful attempts to pay the fee.

The proposed amendments to the Patent Rules do not change the amount of fees payable. However, some fees have been eliminated and there is a new late fee when a payment is not made and/or an action is not taken in due course.

Late Fee

The current legislative regime does not contain a late fee. The proposed new regime proposes a late fee of $150. This will be applied when a payment and/or an action is not completed within the prescribed time limits.

Filling Fee

The amount of the filing fee remains the same under the new regulatory regime, at $400, or $200 for small entities. If the filing fee is not paid at the time of filing, a notice will be sent and it will be necessary to pay the filing fee and the late fee ($150) within two months of the date of the notice. Otherwise, the application will be deemed to have never been filed. (See the Consultation Document - Filing Requirements)

National Phase Application under the Patent Cooperation Treaty (PCT)

The amount of the national phase application fee remains the same under the new regulatory regime, at $400, or $200 for small entities. The fee is required to complete the national phase application. This fee will not benefit from the new notice and late fee regime.

Request for Examination Fee

The regulatory amendments propose to reduce the time limit for examination of an application from 5 years to 3 years. The amount of the fee will remain unchanged under the new regime, at $800, or $400 for small entities. If the request for examination has not yet been made when the time limit expires, a notice will be sent. The applicant then will have two months to request examination of the application and pay the $150 late fee, failing which the application will be deemed to be abandoned. To reinstate the application, the applicant, within the 12-month period after the three-month time limit of the notice, must take the actions that should have been taken in order to avoid the abandonment, i.e. request examination of the application, pay the $150 late fee and pay the $200 reinstatement fee. (See the Consultation Document - Abandonment and Reinstatement and Notice Regime).

Maintenance Fee - Patent Application

The amount of maintenance fees, whether for a standard entity or a small entity, for a patent application will remain unchanged under the new Rules. In the event of non-payment of a patent application maintenance fee, the application will no longer be deemed automatically to be abandoned. A notice then will be sent requiring payment of the maintenance fee and the $150 late fee within two months of the date of the notice or within six months after the deadline (the later of the two). If the two fees are not paid before this second time limit, the application will be abandoned and a request for reinstatement, and a $200 fee, then will be required in addition to the maintenance fee and the late fee. (See Consultation Document - Abandonment and Reinstatement and Notice Regime).

Maintenance Fee - Patent

The amount of maintenance fees for a patent, whether for a standard entity or a small entity, will remain unchanged under the new Rules. In the event of non-payment of a patent maintenance fee, the date when the patent will be deemed to have expired will change. Under the current regime, the patent is deemed to have expired after the 12-month period following the due date of the fee. Under the new regime, a notice will be sent requiring payment of the maintenance fee and the $150 late fee within two months of the date of the notice or within six months after the due date (the later of the two). If both fees are not paid before this second time limit, the patent will be deemed to have expired six months after the due date of the fee. After the patent is deemed to have expired, it will be possible to apply to the Commissioner for a ruling that the patent has never been deemed to have expired by paying an additional fee of $200, in addition to the maintenance fee and the late fee, within the 12-month period after the six-month late period. If the fees are not paid and the other regulatory requirements are not respected after the final due date, the patent will be deemed to have expired retroactive to the first late date.(See the Consultation Document - Third-Party Rights and Due Care)

Fee for Completing the Application

Current State

The current Rules require a $200 fee when the application is not completed according to the prescribed requirements. To complete the application, the applicant must provide the missing documents, fees and/or other requirements, as required, and pay the $200 fee.

Proposed New State

The $200 fee will be eliminated from the new Rules and the steps to complete an application will vary. The period to complete the patent application after its filing will be three months after a notice sent by the Commissioner (See Consultation Paper - Completing a Patent Application). There will be no additional fee for completing the application. If the application is not completed within the time limit of the notice, the application then will be abandoned. The requirements will have to be completed to reinstate the application, including paying the $200 reinstatement fee.

Late Payment Fee for Clear but Unsuccessful Attempts to Pay the Fee

Current State

Currently, if there is a clear but unsuccessful attempt to pay the fee, the Office sends a notice requiring payment of the balance of the fee and a penalty of 50% of the balance of the unpaid fee or $50, whichever is greater.

Proposed New State

This regime, which is seldom used, will be replaced by the new late payment system and the late fees determined by the Act. This variable fee will be eliminated.

Refund of Fees

The proposed regulatory amendments maintain the same regime for refunds:

It will also be possible to obtain a refund of the fee for correction of an error or the fee for reissuing a patent if the origin of the error or the insufficiency is the Commissioner's fault. The Office's intention is to refund these respective fees automatically, without a request by the patent holder, when the correction or reissue is completed.

Small Entity vs. Regular Entity Status

The new Rules propose to maintain the 50% reduction for almost all fees related to patents, for applicants who meet the definition of small entities. For example, the standard fee for filing an application is $400 and the small entity fee is $200. The definition for the condition relating to small entity status remains the same. To pay the fees at this reduced rate, it is necessary to be in compliance with the regulatory requirements and file a small entity declaration signed before or with the payment of the fee. Once the declaration is filed, all subsequent fees may be paid according to small entity status.It is important to note that the declaration is made by the current applicant regarding the applicant at the time the application is filed.Thus, if the applicant at the time of filing satisfies the small entity condition and subsequently there is a change of applicant who does not satisfy the small entity condition, the applicant nonetheless has the right to maintain the declaration and pay the reduced fees.

Certain fees are fixed, regardless of entity status. For example:

See the fee Schedule in the Rules for a complete list of fees.

For a better understanding of this subject, also see the legislative amendments proposed in Bills C-43 and C-59, which have not yet come into force in the Patent Act. You can also consult the draft public consultation documents concerning the proposed amendments to the Patent Rules, available on our website.

References

Bill C-43:
Non-payment of the regulatory fee - Section 27(7) (not yet in force)
Fees to maintain an application - Section 27.1 (not yet in force)
Request for examination - Section 35 (not yet in force)
- Fees to maintain rights - Section 46 (not yet in force)
Proposed Patent Rules:
Application fees - Section 3
Small entity status condition - Section 4
Refund of fees - Section 6
Schedule II - Tariff of Fees

Transitional Provisions

The Patent Act and Rules are undergoing changes in order to ensure compliance with the Patent Law Treaty (PLT) and in order to implement other desired revisions. When new laws and rules come into force it may not be desirable to apply them to applications and patents that are already in the system. Doing so could cause confusion, undue hardship, and administrative burdens for the Office and applicants to ensure these applications and patents comply with the new laws and rules. To ensure a smooth and logical transition from an earlier Patent Act and Rules to a new Patent Act and Rules, transitional provisions are included in the Patent Act and Rules. Where it is not desired to apply particular provisions in the new Patent Act and Rules to specific applications or patents, transitional provisions are used to inform that those particular provisions do not apply and to provide the laws and rules that will apply. In this way transitional provisions may serve to extend the application of provisions in a previous Patent Act and Rules where it makes sense to do so.

A simplistic example is where new Patent Rules contain formatting requirements for an application for patent that differ from the formatting requirements in the earlier Patent Rules. The new Patent Rules could specify, for example, a different font size, page margin or page numbering convention, than was specified in the earlier Patent Rules. Before the coming into force of the new Patent Rules, thousands of applications would have been filed according to the formatting requirements of the earlier Patent Rules. Without a transitional provision that specifies the formatting requirement in the earlier Patent Rules will apply to applications filed before the coming into force of the new Patent Rules, these applications would not comply with the new Patent Rules. Without a transitional provision the undesirable result would be that applicants would be required to submit amendments to reformat their applications so that they are in compliance.

On or after the coming into force date of the new Patent Act and Rules, for applications and patents filed before the coming into force date, in order to determine whether a particular provision in the new Patent Act or Rules apply, one needs to refer to the transitional provisions.

Table 1 provides some examples of transitional provisions in the new Patent Act and proposed transitional provisions for the Patent Rules.

Table 1: Examples of transitional provisions in the new Patent Act and proposed Patent Rules
Amendment to the Patent Act or Rules Criteria Rule or law that will apply
Deadline to request examination

If an application has a filing date before the coming into force date

The deadline to request examination will be 5 years after the filing date as was the case in the earlier Patent Act.

If an application has a filing date on or after the coming into force date

The deadline to request examination will be 3 years after the filing date as specified in the new Patent Rules.

Abandonment and reinstatement requirements

If an application is deemed to be abandoned before the coming into force date

The abandonment and reinstatement provisions in the earlier Patent Act and Rules will apply.

If an application is deemed to be abandoned after the coming into force date.

If there was a requisition or notice that was issued before the coming into force date the abandonment and reinstatement provisions in the earlier Patent Act and Rules will apply.

Otherwise, the abandonment and reinstatement provisions in the new Patent Act and Rules will apply.

Excess page fees for Sequence Listings

If a notice of allowance is sent to the applicant before the coming into force date

The final fee specified in the notice of allowance will apply, as determined by the provisions in the earlier Patent Rules and the fee schedule as it existed in the earlier Patent Act and Rules.

If a notice of allowance is sent to the applicant on or after the coming into force date

The final fee specified in the notice of allowance will apply, as determined by the provisions in the new Patent Rules and the fee schedule in the new Patent Act and Rules.

For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.

References

Bill C-59:
Abandonment and Reinstatement - Section 73 of the Patent Act (not yet in force)
Bill C-43:
Examination- Section 35 of the Patent Act (not yet in force)
Abandonment and Reinstatement- Section 73 of the Patent Act (not yet in force)
Proposed Patent Rules:
Requests for Examination - Section 80-81
Abandonment and Reinstatement - Sections 128-132
Schedule II - Tariff
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