Abandonment / Reinstatement of Patent Applications and Deemed Expiry / Reversal of Deemed Expiry of Patents

1.0 Introduction

This document provides guidance on topics relating to abandonment and reinstatement of applications, as well as deemed expiry and reversal of deemed expiry of patents.

2.0 Abandonment (patent applications)

Failure by the applicant to respond or comply with any of the conditions listed below will result in separate causes of abandonment. Therefore an application could be subject to multiple concurrent or overlapping abandonments.

It is the duty of the applicant to meet the obligations under the Patent Act and Rules necessary to avoid abandonment.

2.1 Deemed abandonment of applications under 73(1) of the Patent Act

An application for patent shall be deemed abandoned under subsection 73(1) of the Patent Act if:

  1. the applicant does not reply in good faith to any requisition made by an examiner within four months of the date of the requisition;
  2. the applicant does not comply with a compliance notice under subsection 27(6) of the Patent Act within three months after the date of the notice;
  3. the maintenance fee and the late fee referred to in the notice sent under paragraph 27.1(2)(b) of the Patent Act are not paid before the later of six months after the maintenance fee due date and the end of two months after the date of the notice;
  4. the request for examination referred to in the notice sent under paragraph 35(3)(b) of the Patent Act is not made and the fee and late fee are not paid before the end of two months after the date of the notice; and
  5. the request for examination referred to in the notice sent under subsection 35(5) of the Patent Act is not made and the fee is not paid before the end of three months after the date of the notice.

2.2 Deemed abandonment of applications under 73(2) of the Patent Act

An application for patent will also be deemed abandoned under Subsection 73(2) of the Patent Act in any other circumstance provided for in section 133 of the Patent Rules. Under Section 133, the application will be deemed to be abandoned if:

  1. the applicant does not comply with notice sent under subsection 15(4) of the Patent Rules to provide a translation within two months of the date of the notice;
  2. the notice sent under section 31 of the Patent Rules to appoint a patent agent is not complied with within three months of the date of the notice;
  3. the applicant does not respond in good faith to a request of the Commissioner for further drawings under 27(5.2) of the Patent Act within three months of the date of the request;
  4. the applicant does not respond in good faith to a notice sent under section 65 of the Patent Rules requiring the applicant to modify the application in order to meet the requirements within the time limit specified in the notice; and,
  5. the applicant does not pay the final fee set out in item 13 of Schedule 2 within four months of the date of the notice requiring the payment of the final fee.

2.3 Courtesy letters of abandonment

While not required by the Patent Act or the Patent Rules, the Patent Office will endeavor to inform applicants of deemed abandonments through a courtesy letter.

3.0 Reinstatement of abandoned patent applications

Where an application is deemed to be abandoned under subsection 73(1) or 73(2) of the Patent Act, the application may be reinstated by the applicant according to subsection 73(3) of the Patent Act and sections 134, 135 and 136 of the Patent Rules within 12 months of the date the application was deemed abandoned by:

3.1 Reinstatements requiring determination of due care

Certain reinstatements also have the added requirement for a positive determination by the Commissioner that the failure occurred in spite of the due care required by the circumstances having been taken.

The following requests for reinstatement of applications deemed abandoned require a positive determination of due care:

Therefore, any request of reinstatement where a determination of due care by the Commissioner is required should be accompanied by a statement of the reasons for failure which led to the abandonment.

For more information on the due care standard and how it will be applied, please see the document entitled 'Due Care'.

3.2 Time period for reinstatement

Once a patent application is deemed abandoned, the applicant has 12 months to reinstate the application.

A few examples are listed below for illustrative purposes:

Example 1: An examiner's requisition dated January 15 requires a response within four months therefore the time limit for a response is May 15 of the same year. A response is not provided by May 15 and therefore the application is deemed abandoned on May 15. The reinstatement period ends on May 15 of the following year.

Example 2: The maintenance fee for an application is due on Aug 29, 30 or 31 and it is not paid by the due date. The Commissioner's Notice is sent on September 15 requiring the applicant to pay the fee and late fee before the later of 2 months from the date of the notice or 6 months from the maintenance fee due date. The later date is 6 months from the maintenance fee due date or February 28 (or February 29 in leap years) of the following year. The maintenance fee is not paid by February 28 (or February 29 in a leap year) and therefore the application is deemed abandoned on February 28 (or February 29 in a leap year). The reinstatement period ends on February 28 of the next year.

Example 3: A Commissioner's notice sent under section 68 of the Rules requiring the applicant to comply within three months of the notice is sent on March 31. The applicant is required to respond by June 30. A response is not provided by the applicant is not provided by June 30 and therefore the application is deemed abandoned on June 30. The reinstatement period ends on June 30 of the following year.

(subsection 134(1) of the Patent Rules)

3.3 Single request for reinstatement for multiple abandonments

If an application is deemed abandoned for multiple failures, a single request to reinstate the application may be made so long as a reinstatement fee is paid in respect of each failure and all of the actions are taken to rectify all the failures that caused the abandonments. In the case of a single request for multiple failures, the requests reinstatements must be made before the end of the first reinstatement period.

4.0 Deemed expiry (patents)

When a maintenance fee for a patent is not paid by the due date, the Commissioner will send a notice to the patentee stating at the patent will be deemed to be expired if the required maintenance fee and a late fee are not paid by the later of two months from the date of the notice or six months from the original due date. Under subsection 46(4) of the Patent Act, if both fees are not paid by the end of this period, the patent will be deemed to have expired retroactively at the original maintenance fee due date.

4.1 Courtesy letters of deemed expiry

While not required by the Patent Act or the Patent Rules, the Patent Office will endeavor to inform patentees of deemed expiry of patents through a courtesy letter.

5.0 Reversal of deemed expiry (patents)

If a patent is deemed to have expired under subsection 46(4) of the Patent Act, it is possible, under subsection 46(5) of the Patent Act and subsection 117(1) and section 118 of the Patent Rules, to make a request to the Commissioner to reverse the deemed expiry.

In order to reverse the deemed expiry, the patentee is required to, within 12 months following the six-month late period:

Demonstrating due care will always be a requirement for requesting the reversal of a deemed expiry when the patentee has failed to respond to the notice to pay the maintenance fee and the late fee.

For more information on the due care standard and how it will be applied, please see the document entitled 'Due Care'.

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