The due care standard

Recent amendments made to the Patent Act (Act) and the proposed amendments to the Patent Rules (Rules) to implement the Patent Law Treaty (PLT) will introduce a due care standard that must be met by an applicant or patentee before rights can be restored after the following has occurred:

Subject to transitional provisions, when the new legislative provisions come into force, the Commissioner will be required to make a positive determination that a failure has occurred in spite of the due care required by the circumstances having been taken, before rights can be successfully restored following failure to take any action described above.

Transitionals

An applicant requesting reinstatement of an application or reversal of the deemed expiry of a patent following a failure to pay a maintenance fee or a failure to request examination that occurred prior to the coming into force of the amended Patent Act and Rules is not subject to the due care standard. If the failure occurred prior to the coming into force of the amended Patent Act and Rules, sections 46 and 73 of the Act as they read immediately before the coming into force of the amended Patent Act and Rules apply with respect to the restoration of rights.

In order for the Commissioner to make a determination, the applicant or patentee will be required to provide the reasons for the failure to take the action that should have been taken to avoid abandonment of the application or the deemed expiry of the term limited for the duration of the patent. The application will be reinstated or the term limited for the duration of the patent will be reversed if the requirements set out in 73(3)(a) of the Act or paragraphs 46(5)(a), respectively, and are met and if the Commissioner determines, based on the reasons provided by the applicant or patentee, that the failure occurred in spite of the due care required by the circumstances having been taken and informs the applicant of this determination.

Due care standard

When determining whether the failure occurred in spite of the due care required by the circumstances having been taken by applicant or patentee, the Commissioner will assess whether the applicant took all measures that a reasonably prudent applicant / patentee would have taken - given the particular set of circumstances related to the failure- to avoid the failure, and despite taking those measures, the failure occurred. Measures taken by the applicant or patentee after the failure occurred will not be taken into consideration in making the determination. This approach is generally consistent with the approach that is currently used by the Canadian Intellectual Property Office (Office) when acting as a Receiving Office in the context of a request for restoration of priority under the Patent Cooperation Treaty, when that request for restoration of the right of priority is made on the basis that due care required by the circumstances was taken.

Contents of the request

Reinstatement of a Patent Application that is abandonment due to a failure to pay a maintenance fee and a late fee

The applicant must, within 12 months after the date the application was deemed abandoned, meet the following requirements set out in paragraph 73(3)(a) of the Act to reinstate the application:

  1. make a request for reinstatement to the Commissioner,
  2. state the reasons for the failure to pay the prescribed application maintenance fee and the late fee referred to in the notice sent under paragraph 27.1(2)(b) of the Act before the later of the end of six months after the maintenance fee due date and the end of two months after the date of the notice;
  3. take the action that should have been taken in order to avoid the abandonment; and
  4. pay the prescribed fee of $200.00 for reinstatement.

Reinstatement of a Patent Application that is abandoned due to a failure to request examination and failure to pay a late fee

If the request for reinstatement is submitted after 6 months after the prescribed time to request examination, the applicant must meet the following requirements set out in paragraph 73(3)(a) of the Act to reinstate the application before the end of 12 months after the application is deemed abandoned:

  1. make a request for reinstatement to the Commissioner,
  2. state the reasons for the failure to request examination and pay the examination fee and the late fee referred to in the notice sent under paragraph 35(3)(b) of the Act within two months of the date of the notice,
  3. take the action that should have been taken in order to avoid the abandonment; and
  4. pay the prescribed fee of $200.00 for reinstatement.

Reversal of deemed expiry of the term limited for the duration of the patent

The patentee must, within 12 months after the end of six months after maintenance fee due date, meet the following requirements set out in paragraph 46(5)(a) to reverse the deemed expiry of the term limited for the duration of the patent:

  1. make a request to the Commissioner for the term limited for the duration of the patent to never have been deemed to have expired,
  2. state the reasons for the failure to pay the prescribed maintenance fee and late fee before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice; and
  3. pay the prescribed maintenance fee, the late fee of $200 and the additional prescribed fee of $200.

Recommended information to include with the request

In order to make a determination of whether the failure occurred in spite of due care required by the circumstances having been taken, the Commissioner will consider the reasons for the failure to act that are provided by the applicant or patentee. In order to assist the Commissioner in making a determination, the Office recommends that the applicant or patentee include, as part of the required reasons for the failure, the following elements in the request for reinstatement or the request for reversal of the deemed expiry of the term limited for the duration of the patent:

The applicant or patentee may also include evidence of the circumstances and reasons for failure such as a medical note, or other relevant affidavits.

A note on sensitive personal information

All documents relating to a patent or patent application submitted by applicants and/or agents are open to public inspection under section 10 of the Act after the confidentiality period is expired and most information is made available online on the Canadian Patents Database. However, the Office will endeavour to prevent making available sensitive personal information on the Canadian Patents Database if a document is expressly identified by the applicant as containing sensitive personal information. Therefore, it is recommended that any sensitive personal information, such as a medical certificate, provided in the content of the request be provided in a separate document than the request and marked as sensitive. For more information on protecting your privacy on the Canadian Patents Database, please visit this webpage.

Office procedure

Determination

The Commissioner will review the reasons for the failure to pay the maintenance fee and the late fee, or the reasons for the failure to request examination in time and pay the late fee to determine whether the failure occurred in spite of due care required by the circumstances having been taken. In making a determination of whether the failure occurred in spite of due care required by the circumstances having been taken, the Commissioner will consider whether anything else could have been reasonably expected to have been done to avoid the failure while taking into consideration the particular set of circumstances surrounding the failure to take the required action. Measures taken by the applicant or patentee after the failure occurred will not be taken into consideration in making the determination. In making this determination, the Commissioner will consider the customary diligence that a prudent party would have exercised in the circumstances.

In making this determination, the Office will have regard to considerations that are taken into account by the International Bureau and Receiving Offices as described in paragraph 166M of the Receiving Office Guidelines (PDF: 6.86 MB; 104 pages) while keeping in mind that no two sets of facts or circumstances will be identical.

In general, in the following circumstances, a determination that a failure occurred in spite of due care required by the circumstances having been taken by the applicant or agent may be made where the agent or applicant demonstrates the due care of a reasonably prudent person that would be required by the circumstances was taken:

In general, the following circumstances may favour a determined that due care required by the circumstances was not taken by the applicant or agent:

Observations

Before any determination is made by the Commissioner under paragraph 46(5)(b) or 73(3)(b) of the Act to the effect that due care required by the circumstances was not taken, the Office will send a letter to the applicant or patentee informing them of the Commissioner's intended determination and providing the applicant or patentee with the opportunity to make observations before the end of one month after the date of the letter.

Proposed service standard

Unless the applicant is informed that the Commissioner intends to determine that due care required by the circumstances was not taken, applicants and patentees can expect a response to a request for reinstatement, including the Commissioner's determination with respect to the due care standard, within two months of receipt of the request in the Office, or two months days from receipt of the last correspondence relating to the request.

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