H Samuel Frost

H Samuel Frost

Introduction
The Canadian Intellectual Property Office (CIPO) is conducting a public consultation on proposed amendments to the Patent Rules.

The Patent Rules are being amended to enable the implementation of various outstanding amendments to the Patent Act. Together, the amendments to both the act and the rules ensure Canada’s compliance with the Patent Law Treaty. Generally speaking, these amendments introduce user-friendly provisions for patent applicants and their representatives. The following report summarises some of the highlights of the proposed changes, which are expected to come into force sometime in 2019.

Filing requirements
Requirements to secure a filing date are being simplified. For example, a filing fee will no longer be needed to establish a filing date. To obtain a filing date, an application need only include:

  • applicant information;
  • a description; and
  • an indication that the elements are intended to be a patent application.

The description may be in a language other than English or French, but a translation must be filed later. Further, it will be possible to refer to a previously filed application by number in order to incorporate subject matter from that application.

Missing parts
Applicants will be able to submit missing parts of an application after filing (eg, drawings). Where the missing parts are contained in the previous application from which priority is claimed, the missing parts can be added to the application and the filing date maintained; otherwise, the filing date will be the date on which the missing parts are received.

Claiming priority
Certified copies or priority documents are not currently required. Under the new Patent Rules, it will be mandatory to submit a certified copy or make one available through a digital library. Patent Cooperation Treaty national phase entry applications will not be required to resubmit the priority document. Following existing practice, translations of priority documents will be required only in response to an examiner’s notice requesting the same.

Restoration of priority
It will now be possible to make a late priority claim up to 16 months from the priority date and correct various details of a priority claim. The CIPO will apply the unintentional standard for the restoration of a priority claim.

Patent Cooperation Treat national phase entry
The current option of late entry up to 42 months from the priority date simply by paying a late fee will be removed. Under the amended Patent Rules, if the standard 30-month deadline is missed, it may still be possible to file the application within 42 months from the priority date, but it will be necessary to show that the delay was unintentional and provide a statement of reasons for the failure to meet the initial deadline.

Examination
The timeframe for requesting examination will be reduced from five to three years. The timeframe for responding to office actions will also be reduced to four months.

Abandonment and reinstatement
For numerous actions, the whole scheme for reinstatement following abandonment has been revised. To comply with the Patent Law Treaty, a notice must be sent before abandonment occurs. In most cases the notice will set a two-month period, or six months from the original due date (whichever is later) to cure a default, failing which the application will become abandoned. Following abandonment, reinstatement may be possible and a due care standard will apply. In order to protect third parties, intervening rights are provided in some circumstances.

Electronic filing
Existing practice only permits the filing of an application and allocation of a filing date to days when the patent office is open. There may be cases where it is necessary to secure a date that falls on a weekend or holiday when the patent office is closed (eg, to benefit from a grace period). Electronic filing is currently permitted, but filing dates are assigned only to a day when the patent office is open. Under the proposed Patent Rules, for an electronically filed application the assigned filing date will be the actual date that the application is filed, even if this falls on a day when the patent office is closed.

Completion
If the application is not complete, a notice will be sent which gives the applicant up to three months to comply with the completion requirements with no fee requirements.

Representation
There are extensive changes to the rules governing the representation and appointment of a patent agent, which includes a definition of ‘common representative’. The proposed amendments will enable more individuals to represent the applicant for certain actions. For example, a person authorised by an applicant may pay a maintenance fee and record a transfer.

Amendment after allowance
The proposed Patent Rules will permit an applicant to withdraw an application from allowance so that further examination and amendments will be possible. This will replace the only option under existing Canadian practice, which requires the application to be abandoned by not paying the final fee and then reinstated, so the proposed amendment can be submitted for consideration by the examiner.

Corrections
In contrast to the existing limited provisions governing the correction of clerical errors, the new rules will make it possible to request corrections to the application, including corrections to the identification of names of applicants and inventors.

Small entities
The definition of a small entity is included to clarify that a contingent obligation (eg, a loan from a non-small entity for which patent rights are collateral) is not a transfer or licence that affects small entity status. This has been unclear to and a source of concern for Canadian applicants and patent practitioners.

For further information please contact:

H Samuel Frost
Bereskin & Parr LLP
www.bereskinparr.com
Email: sfrost@bereskinparr.com
Tel: +1 905 812 3600