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Amendments published recently will bring Canadian Patent Rules into conformity with the Patent Law Treaty and thus into line with the majority of patent laws in force around the world.
The full text of the revised rules can be found here. A summary of the main revisions, and what they mean, is below.
The amendments come into effect on the 30 October 2019.
Currently the patent law in Canada allows for an abandoned patent to be revived within 12 months of the date of lapse by requesting reinstatement, paying the associated fee, and completing the action that led to abandonment. The patent proprietor does not have to provide any reason for the missed deadline.
This quite relaxed approach to reinstatement is changing.
Under the new rules, if the deadline for paying a renewal fee or requesting examination is missed, the patent proprietor must meet a “due care standard”. The reason for the failure to take the action that led to the lapse must be stated and the Commissioner must determine that “the failure occurred in spite of the due care required by the circumstances having been taken”. There will be a period of time after the deadline has been missed in which it will be possible to revive rights without having to prove due care but this period will depend on the nature of the deadline missed.
Accordingly, it is recommended that the action required to request reinstatement is taken as soon as possible to potentially avoid having to prove due care. At present it is unclear how the courts will interpret the “due care” provision should validity of the patent be challenged because, as with all new rules, no precedent or case law has yet been established.
This is reducing from five years from the filing date to four years from the filing date.
Responding to an examination report
This is reducing from six months from the date of mailing to four months from the date of mailing.
Paying the fee in response to the Notice of Allowance
This is also reducing from six months to four months from the Notice of Allowance
National phase entry
Currently an applicant can validly file a national phase application up to 42 months after the priority date of a PCT application. The requirement is merely that they request late entry, pay a late fee, and pay any maintenance fees that were due during that time.
Under the amended rules the applicant will still be able to file up to 42 months after priority, but with the late fee they will be required to submit a statement that failure to meet the 30 month deadline was unintentional. Again, there is no clear guidance as to how “unintentional” will be interpreted at this stage and so it is highly recommended to not miss the 30 month deadline.
Amending a granted patent
At the moment when the Notice of Allowance has been received the prosecution is closed and only minor changes to a patent application (i.e. those that do not necessitate a further search) can be made. In order to re-open prosecution the application must be intentionally abandoned by failing to pay the final fee, and then reinstated by requesting reinstatement. This somewhat contrived method enables an application to be amended in the regular manner.
The new rules close this perceived loop-hole in that the Notice of Allowance will be able to be withdrawn and prosecution re-opened upon payment of a fee within a certain time limit after the mailing date of the Notice of Allowance. The application will then be returned to examination.
PCT applications filed before the 30 October 2019 (i.e. the date the rule changes come into effect) will be prosecuted under what will become the “old rules”, i.e. the applicant will have up to 42 months after the priority of the PCT application to file the Canadian national phase application with a late fee. No “unintentional” requirement will have to be met. Similarly, applications with a filing date before the 30 October 2019 will still have five years from the filing date of the application to request examination.
The new rules regarding amendment of the specification after allowance are applicable only if the notice of allowance is sent on or after the 30 October 2019.
This is a brief overview of some of the changes coming into effect in Canada on 30 October 2019. If you have any questions about any of the above, or would like to know more detail, then please contact the writer, or another of our team.
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