30 is the New 42! Proposed Canadian Patent Rule Overhaul

The Intellectual Property Institute of Canada have proposed a significant update to the patent rules, due to be implemented at a yet-undefined date in 2019.

The aim of the update is to bring Canadian patent prosecution into greater conformity with the Patent Law Treaty – a multilateral treaty which harmonises various nations’ patent prosecution procedures

Presently, Canadian patent prosecution is comparatively slow, and considerably permissive with respect to missed deadlines. It is not uncommon for Canadian prosecution to commence after most other corresponding patents in the family to have already granted; this simplifies prosecution as the standards of novelty and inventive step are significantly harmonised between national patent offices.

As a result of these proposed changes, patent prosecution in Canada will be more concurrent with other patent offices, and significantly more restrictive with respect to missed deadlines. The key changes are as follows:

Late National Phase Entry Deadline

Currently, the 30 month deadline for PCT national phase entry into Canada may be extended up to 42 months by filing a request and paying a $200 CAD official fee. No reason need be provided for missing the 30 month deadline.

The proposed rules update would keep the 42 month extended deadline, but would add the requirement for a statement from the Applicant that missing the 30 month deadline was unintentional. What constitutes “unintentional” has yet to be specified, and a Patent Commissioner must approve the statement for the application to be permitted. As such, there is a real risk that late national filing may not be granted and patent protection cannot be gained in Canada. As a result, if protection in Canada is sought, it may be sensible to no longer rely on the extension to 42 months and commence Canadian national phase entry by the 30 month deadline.

Reinstatement of Abandoned Applications and Lapsed Patents

The present rules for reinstatement in Canada are particularly permissive: abandoned applications and lapsed patents may be reinstated within 12 months of the date of abandonment/lapse by payment of a reinstatement fee and completing the action that caused abandonment/lapse. No reason need be supplied for this to be permitted.

Under the proposed rules, if the request is made more than 6 months after the original deadline, the Applicant must submit a statement that the abandonment or lapse occurred in spite of the due care required by the circumstances being applied. Again, a Patent Commissioner must approve of the statement for the request to be permitted.

Amendment after Allowance

Presently, following provision of a Notice of Allowance, Applicants can only make minor changes to the patent application that don’t require a further search of the prior art. If further changes are required, the Applicant must permit the application to lapse by non-payment of the grant fee. The application may then be reinstated, which permits further examination to take place.

The proposed process is simplified: the Applicant may request a withdrawal of the Notice of Allowance, and prosecution restarted by payment of a fee (within 4 months of postage of the Notice of Allowance).

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