Changes to Patent Rules on October 30, 2019

From: Canadian Intellectual Property Office

Here's what you can expect from the Patent Office over the next few months now that the new Patent Rules have been published:

Monthly publication of the PLT newsletter – All Eyes on the PLT to continue throughout this time.

Changes to patent timelines on October 30, 2019

Meet filing date requirements
  • Before October 30, 2019 – Not applicable
  • After October 30, 2019 - 2 months to submit outstanding information and/or documents – s28(2) of post-CIF Act
Pay application fee, including late fee if fee is not paid on filing date
  • Before October 30, 2019 – Not applicable
  • After October 30, 2019 - 3 months from filing date – s66(1) of post-CIF Rules
Respond to completion/ compliance notice
  • Before October 30, 2019 – Later of 3 months from date of notice OR 12 months after filing date – s94(1) of pre-CIF Rules
  • After October 30, 2019 – 3 months from date of notice – s65 of post-CIF Rules
Respond to notice requiring translation of description
  • Before October 30, 2019 – Not applicable
  • After October 30, 2019 – 2 months from date of notice – s15(4) of post-CIF Rules
Make a request for priority
  • Before October 30, 2019 – 16 months from the earliest filing date of priority applications – s88(1) of pre-CIF Rules
  • After October 30, 2019 – Later of 16 months from the earliest filing date of priority applications OR 4 months after filing date of application (provided that application is not yet open to public inspection)Footnote 1 – s73(1) of post-CIF Rules
Submit copy of priority application, where applicable
  • Before October 30, 2019 – Not applicable
  • After October 30, 2019 – Latest of:
    • 16 months from the earliest filing date of priority applications
    • 4 months from filing date of application
    • national phase entry date, if applicable
    • s74(2) of post- CIF Rules
Respond to notice to submit copy of priority application, where applicable
  • Before October 30, 2019 – 6 monthsFootnote 2 from examiner's requisition, where applicable – s89 of pre-CIF Rules
  • After October 30, 2019 – 2 months from date of notice – s74(4) of post-CIF Rules
Respond to notice of disregarded communication
  • Before October 30, 2019 – Not applicable
  • After October 30, 2019 – 3 months from date of notice – s40(1) and s41(1) of post-CIF Rules
Request examination
  • Before October 30, 2019 – 5 years from filing date – s96(1) of pre-CIF Rules
  • After October 30, 2019 – 4 years from filing date – s81(1)(a) of post-CIF Rules
Request examination – divisional applications
  • Before October 30, 2019 – Later of 5 years from filing date of original application OR 6 months from date divisional application is actually filed – s96(2) of pre-CIF Rules
  • After October 30, 2019 – Later of 4 years from the filing date of the original application OR 3 months from presentation date of divisional application – s81(1)(b) of post-CIF Rules
Respond to Examiner's requisition
  • Before October 30, 2019 – 6 monthsFootnote 3 from requisition – s30(2) of pre-CIF Rules
  • After October 30, 2019 – 4 months from requisition- s86(2) of post-CIF Rules
Return application to examination phase
  • Before October 30, 2019 – Not applicable
  • After October 30, 2019 – 4 months from notice of allowance– s86(17) of post-CIF Rules
Pay application maintenance fee, together with late fee in case of late maintenance fee payment
  • Before October 30, 2019 – Not applicable
  • After October 30, 2019 – Later of 2 months from notice or 6 months after due date – s27.1(2)(b) of post-CIF Act
Submit late request for examination, together with late fee in case of late request for examination
  • Before October 30, 2019 – not applicable
  • After October 30, 2019 – 2 months from date of notice – s35(3) of post-CIF Act
Pay final fee
  • Before October 30, 2019 – 6 months from notice of allowance – s30(1) of pre-CIF Rules
  • After October 30, 2019 – 4 months from notice of allowance – s86(1) of post-CIF Rules
Correct error in identity of applicant
  • Before October 30, 2019 – Unspecified – s8 of pre-CIF Actcan be used in certain cases
  • After October 30, 2019 –
    • Non-PCT: Earlier of laid open date OR day that Commissioner receives request to record transfer – s104 of post-CIF Rules
    • PCT: Earlier of:
      • the day that Commissioner receives request to record transfer OR
      • later of 3 months from national phase entry or 3 months of notice under s154(7) if that notice is sent within 3 months of national phase entry date – s154(6) of post-CIF Rules
Correct error in identity of inventor
  • Before October 30, 2019 – Unspecified – s8 of pre-CIF Act may be used in certain cases
  • After October 30, 2019 – Before the day that notice of allowance is sent – s105 of post-CIF Rules
Correct error in name of applicant or inventor
  • Before October 30, 2019 – Unspecified – s8 of pre-CIF Act may be used in certain cases
  • After October 30, 2019 – On or before the day that the final fee is paid – s73(5) of post-CIF Rules
Correct priority date
  • Before October 30, 2019 – Unspecified – s8 of pre-CIF Act may be used in certain cases
  • After October 30, 2019 – See Annex A – s73(1) and s73(4) of post-CIF Rules
Correct priority number and/or country/office
  • Before October 30, 2019 – Unspecified – s8 of pre-CIF Act may be used in certain cases
  • After October 30, 2019 – On or before the day that the final fee is paid – s73(5) of post-CIF Rules
Pay patent maintenance fees, together with late fee in case of late maintenance fee payment
  • Before October 30, 2019 – One year from due date of missed maintenance fee payment – s100 and Schedule II, item 31 of pre-CIF Rules
  • After October 30, 2019 – Later of 2 months from notice or 6 months after due date – s46(2)(b) of post-CIF Act
Make a correction to granted patent
  • Before October 30, 2019 – Unspecified – s8 of pre-CIF Act may be used in certain cases
  • After October 30, 2019 – 12 months from issue date – s107 and s109 of post-CIF Rules

List of Amendments since CG1 publication

Since the publication of the Patent Rules in the Canada Gazette on December 1, 2018, the Rules have been amended to account for oversights, stakeholder feedback, and minor editorial errors. Other changes were made to improve readability and clarity.

The following is a non-exhaustive list of provisions that were amended, added or removed following publication of the Patent Rules in the Canada Gazette, Part I as well as a brief description of the type of change that was made. These changed have been incorporated in the new final Patent Rules published on July 10, 2019.

The numbering of many provisions has changed. In these cases, the provision number in Canada Gazette, Part I is referred to first, followed by the new numbering of the provision in parentheses. Revised provision numbers will be referred to as "current".

Section 1(3)

A reference to current 160(2) was added.

Sections 7, 11, 66(2), 74, 76(3), 84, 92, 96(2), 107(2) (current 108(2)), 108(2) (current 109(2)), 110(5) (current 109(5)), 155(3) (current154(3)), 155(8) (current 154(8)), 156(1) (current 155(1)), 158 (current 157), 163, 172(3), 181, 184(3), 196, 199(3), 201, 210(4), 224, 230

The term "deemed" was replaced with the term "considered".

Subsection 63(4), 155(4) (current 154(4)), 155(5) (current 154(5)), 155(3) (current 156(3), 210(2), 232 (current 233)- French only

The term "reputé(e)" was changed to "considéré(e) comme".

Subsections 11(1), (2) and (3)

Paragraph (b) was added.

Paragraphs and subsection 15(1)(b), 15(3) and 155(1)(b) (current 154(1)(b)) - English Only

The reference a description or application that is "not entirely in English or not entirely in French" is replaced with "is partly or entirely in a language other than English or French".

Subsection 15(3)

The reference to "that document" is deleted and in place "any part of the specification and drawings that, on the filing date, is not entirely in English or not entirely in French" is added. Additionally the concept of "to replace" is added to subsection 15(3) and subsection 15(6). A reference to subsection 15(4) is added to subsection 15(7) (current subsection 15(6)).

Subsection 15(4)

Reference to the specific deadline to provide a translation was removed.

Current subsection 26(6)

This provision was added.

Subsection 26(9)

This provision was added.

Subsection 26(10)

This new provision added to reorganize content that already exists in section 26.

Paragraphs 44(2)(a) and (b) and 112(2)(a)(b)

The wording "the applicant originally identified in the petition is, on the filing date of the application" was changed to "the applicant of the application on the filing date is, on that date".

Section 46, 144, paragraph 155(1)(b) (current 154(1)(b))

The phrase "other than any text matter contained in a sequence listing" was added to these provisions.

Paragraph 74(6)(a)

The time limit to make a request to the patent office where a previously regularly application was filed for a copy of that application was amended.

Subsection 74(8)

The time limit to provide the Office with a copy of the previously filed application and the certificate was amended.

Subsections 74(8), 181(2)(a), 181(4), 196(2)(a), 196(4)

These subsections were amended to remove the explicit reference to the foreign patent office providing a document to the applicant or the applicant requesting the document, as the case may be.

Subsection 77(1)

The language describing the time limit to request restoration of the right of priority was changed from "two months after the filing date…" and "one month after the national phase entry date" to "not later than two months after the filing date" and "not later than one month after the national phase entry date.." respectively.

The time limit to comply with the requirements in 28.4(6)(b)(iii) of the Act, set out in subsection 77(2) of the Rules, was amended to distinguish that the time limit for a regular Canadian application is different than the time limit for a PCT national phase application.

Subsection 84(11)

The text "within three months after the date of the notice" was replaced with "not later than three months after the date of the notice. Note to Translation: In French, the wording was changed from "de trois mois après la date de l'avis» to « au plus tard trois mois après la date de l'avis»

Current paragraph 89(1)(b)

New paragraph 89(1)(b) was added

Paragraphs 90(c) and (d)

The time limits to file a divisional when the original application is refused were adjusted.

Section 91

The limitations recited in paragraphs (a) and (b) were amended.

Section 107

This section was deleted.

Subsections 109(1) and 109(3)

This subsection was amended to extend the six-month time limit for corrections to a twelve-month time limit and to reflect the change in subsection 190(3).

Paragraph 129(c) (relating to current section 128)

This paragraph was deleted

Subsection 134(1) (current 133(1))

The time to reinstate was changed from "begins on the day on which the application for a patent is deemed, as a result of that failure, to be abandoned and ends 12 months after that day" to "12 months after the day on which the application for a patent is deemed, as a result of that failure to be abandoned"

Paragraph 140(1)(h) (current paragraph 139(1)(h))

The refund of "any amount paid in excess of a prescribed fee" was amended to read "any overpayment of a fee".

Subsection 142(2)

Reference to Article 24(2) of the Patent Cooperation Treaty (PCT) was added.

Paragraph 155(3)(b) (current 154(3)(b))

The wording in paragraph 155(3)(b) was amended.

Current section 160

This new section was added.

Paragraphs 162(c), 181(2)(b) and 196(2)(b)

In French text the words "restitution" and "rétablissement" are replaced with "restauration".

Current section 204

This new section was added.

Subsections 214(1) and (2)

The wording "on the coming-into-force date" was added.

Section 218

This section was amended.

Patent Law Treaty implementation and legislative modernization

Description of figure 1

The following line says that the Coming into force is due on October 30th, 2019, for the amended Patent Act (Bills C-43 and C-59) and for the New Patent Rules.

The figure itself contains a horizontal line with all the main steps of the PLT. They are divided in two phases. Here are the steps for the first phase, which is the Preparation and drafting of the New Patent Legislation Regime Changes: In December 2014, royal assent of Bill C-43. In June 2015, royal assent of Bill C-59. In the beginning of 2016, drafting instructions for the new Patent Rules. In June 2017, technical review of the draft Rules. In the Summer of 2017, public consultation of the draft Rules. In November 2017, technical review on transitional provisions. On December 1st 2018, pre-publication of the proposed Patent Rules in the Canada Gazette, Part I. End of first phase. Here are the steps for the second phase, which is Finalizing the New Patent Legislation Regime Changes. From March to May 2019, consultation on the draft topics in the Manual of Patent Office Practice (MOPOP). On July 10, 2019, publication of the Patent Rules in the Canada Gazette, Part II. In October 2019, publication of the new MOPOP. Fall of 2019, information Sessions will be held. Finally, on October 30th 2019, coming into force of the new Patent Legislation.

Annex A: Correction to priority date under section 73 of the post-CIF Patent Rules

Description of figure 2

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 requested corrected 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 requested corrected priority date. The user then repeats all of the above calculations for the originally submitted 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.

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