CIPO proposes significant changes to the Patent Rules

Aug 23 2017

The Canadian Patent Office has proposed amendments to the Patent Rules which could substantively change patent application procedures in Canada. A public consultation period ends Sept. 30, 2017, following which a further version will be published. The amendments are primarily intended to implement changes to the Patent Act passed on December 16, 2014, as well as to align Canada’s patent procedures with other countries. The rules are also intended to comply with the Patent Law Treaty, which Canada recently adopted.

Notable proposed amendments include:

  • Office Action deadlines are reduced. Presently, most office actions have a 6 month deadline for response. The new rules set the deadline at 4 months, plus a 2 month extension provided the extension is justified.
  • Abandonment and reinstatement procedures are revised. Presently, an application automatically becomes abandoned if a deadline is missed, and may then be reinstated within 12 months of the abandonment date.  The proposed rules will revise these procedures, providing new deadlines for numerous actions and instituting a new procedure whereby abandonment will only occur after the patent office issues a notice which specifically informs the applicant of the abandonment date. This provides a “safety net” for applicants in certain cases.  However, once an application has become abandoned, it can only be reinstated if the applicant establishes that the failure to meet the deadline “occurred in spite of the due care required by the circumstances”. The applicant’s “due care” can be subsequently reviewed by a court. For this reason, applicants should make every effort to meet deadlines and not rely on the reinstatement provisions.
  • Third party rights. The proposed rules (and related amendments to the Patent Act) establish a new regime that excludes patent infringement proceedings against a person who in good faith commits an act that would otherwise infringe a patent, if that act is committed while a patent or patent application is temporarily abandoned. These provisions provide an additional incentive to meet deadlines.
  • New procedures for further prosecution after allowance. A new procedure is implemented for placing an application back into prosecution after the notice of allowance is issued.  This can be useful for making substantive amendments that are not possible under the limited “amendment after allowance” procedure. The request must be made before the issue fee is paid and within four months of the notice of allowance. This procedure replaced the existing procedure which requires the applicant to intentionally abandon the allowed application, before the application can be placed back into prosecution.
  • Correction of errors.  The rules make substantial changes to the provisions for correcting errors in the application or the identity of the applicant or the inventor, including new deadlines for such steps.
  • Ability to submit missing parts. If a patent application has omitted material from the priority application, the applicant has two months to add this material into the application.
  • Restoration of Convention priority. Convention priority can be “restored” for up to two months if the 12 month deadline is missed for claiming priority from a previous application.  If the Canadian application is filed within the restoration period and other steps are taken, the Canadian application is then deemed to have been filed within the 12 month Convention period.  The applicant must request priority restoration within 2 months of filing the Canadian application and must state that the failure to meet the Convention deadline was unintentional.
  • Certified copy of priority document. If priority is claimed under the Paris Convention, the applicant must submit a certified copy of the priority application or make it available in a digital library.  This requirement does not apply to PCT national phase applications, provided the applicant has met the requirements for submitting a priority document in during the International Stage.
  • Examination deadline shortened. Examination must be requested within 3 years of the filing date, rather than the present 5 years.

For further details about the new rules and their potential impact, contact one of our professionals.

Author: Giselle Chin

This article is for information purposes only and does not constitute legal or professional advice.

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Tags: Changes to Patent Rules, CIPO, Giselle Chin, Patent Law Treaty