The new Patent Rules (the “Rules”) are going to simplify the filing requirements for patent applications. Patentees should however remain wary of the effect of the new provisions.
The filing requirements to establish a filing date will be simplified under the new Rules:
Current regime Requirements
New Patent Rules Requirements
1. An indication in English or French that the granting of a Canadian patent is sought;
2. The applicant’s name;
3. The applicant’s address or their patent agent’s address;
4. The document, in English or French, which on its face appears to describe an invention; and
5. The prescribed application fee.
1. An indication that a Canadian patent is sought;
2. A means of identifying and contacting the applicant; and
3. A document that appears to describe the invention, in any language.
The filing date will be the date which the Canadian Intellectual Property Office (“CIPO”) acknowledges as when the patent was applied for, which is important under the “first to file” system. The application fee is no longer required to establish a filing date, but will be required within a prescribed period, expected to be three months.
In order to align Canadian patent law with the Patent Law Treaty (“PLT”), the new Rules will now allow the applicant to substitute a reference to an earlier patent application that contains the same information in place of the specification for the purpose of obtaining a filing date. Applicants will have to provide a statement indicating the name of the country or Office in which it was filed, at the earlier of:
- The later of two months from receipt of the earliest document or information required for establishing a filing date and, if a notice is sent, two months after the date of the notice; and
- The filing date.
Another PLT requirement that will be added in the new Rules is the addition of missing parts. Applicants will be able to add the missing part of the specification or drawing to their application, either from their own initiative or on notification from the Office, within a prescribed time period. Applicants will have the later of two months from the date of a notification from the Office, or two months from the earliest date on which the Commissioner receives any document or information required for establishing a filing date to add the missing part to the application. If the missing part and drawing are completely contained in a prior application on which priority has been requested, the missing information may be submitted without affecting the filing date. If the added parts are not contained in a prior application on which priority has been requested and the request is not withdrawn before the prescribed date, the filing date will be the later of:
- The date on which the addition is received; and
- The filing date (where other filing requirements have not been met before the addition of the missing part is requested).
Patentees should be aware that the simplified filing requirements come with caveats. First, patentees should be aware that while an application fee is not required to establish a filing date, the failure to pay the fee will come with an additional late fee of $150. Moreover, while the document describing the invention can be filed in a language other than English or French, the applicant will have to submit a translation within a prescribed period (expected to be two months) after receiving a notice from the Commissioner, failing which the application will be deemed abandoned. Patentees should consult a PCK IP professional to establish the best possible strategy in order to protect their patent rights and financial interests. For more information, please contact Stephen Perry.
Click here to obtain more general information on the new Rules expected to come into force later in 2019.