Changes We Can Expect with The New Patent Rules

Changes We Can Expect with The New Patent Rules

Proposed amendments to the Patent Rules (the “Rules”) have been published in Part I of the Canada Gazette on December 1, 2018. The public has until December 31, 2018 to submit their comments, which will be considered before finalizing the Rules. It is anticipated that the Rules will be published in Part II of the Canada Gazette sometime in 2019 and implemented at the end of 2019.

Canada is making changes in its IP law in order to join several international intellectual property (“IP”) treaties, including the Patent Law Treaty (“PLT”). There are currently 40 countries that are party to the PLT. Canada signed the treaty in 2001 but has not yet ratified it.

The objectives of the proposed Rules are to reflect amendments that were made to the Patent Act (the “Act”) to allow for Canada to ratify the PLT, as well as modernizing the Canadian patent regime. The proposed Rules would repeal and replace the existing Patent Rules. The changes in the Rules can be categorized in the following themes: 1) Filing requirements; 2) Priority; 3) Presentation of documents and applications; 4) Compliant patent applications; 5) Representation, agent register and exams; 6) Communicating with the Office; 7) Confidentiality and publication; 8) Examination process and amendments to applications; 9) Corrections; 10) Abandonment and reinstatement; 11) Third-party rights and due care; 12) Transfers, change of name; 13) Fees; 14) Divisional applications; 15) Patent Cooperation Treaty provisions; 16) Transitional provisions. Here is an overview of the proposed changes:

1) Filing requirements

The filing requirements will be simplified. The filing date will be the date that the Canadian Intellectual Property Office (“CIPO” or the “Office”) acknowledges as when the patent was applied for, which is important under the “first to file” system. The application fee will not be required to establish a filing date but will still be required within a prescribed period (expected to be 3 months). The applicant will be able to substitute a reference to an earlier patent application and will also be able to add missing parts to its application, either on its own initiative or on notification from the Office, within a prescribed time period.

2) Priority

The time limit to request priority will be the later of: 16 months after the date of filing of the earlier filed application; or 4 months after the filing date of the pending application. The applicant will now have to submit a copy of the earlier application (or “priority document”) within a prescribed time period, except if the priority claim is based on an earlier filed Canadian application. If a priority document is not submitted, the application will not be deemed to have been abandoned, but the priority request will be deemed to have been withdrawn.

There will also be a restoration of the right of priority, where a subsequent application is filed within 2 months after the expiration of the priority period (therefore between 12 and 14 months from the filing of the earlier filed application). The request for restoration must be made no later than 2 months after the filing date of the pending application. See Figure 1 of CIPO’s Priority Consultation document.

3) Presentation of documents and applications

Existing requirements would remain largely the same. The new Rules would make it explicit that the Commissioner of Patent (“Commissioner”) would take into account documents that are written in a language other than English or French only in specific instances. Any translation submitted must not introduce new matter.

4) Compliant patent applications

The following elements are required for a compliant patent application: 1) a petition; 2) an abstract; 3) a sequence listing (if applicable); 4) a claim or claims; 5) drawings (if applicable); 6) a statement of entitlement; and 7) inventor names and addresses. If these elements are not provided on the filing date, the Commissioner will send a notice to the applicant, requiring the missing parts of the application. The applicant will have 3 months from the date of the notice to comply. There will no longer be a fee to meet the compliance requirement, however, if the applicant does not respond in good faith, the application will be deemed abandoned.

5) Representation, agent register and exams

The proposed rules would prescribe circumstances when an applicant may or must be represented by a patent agent and set out the procedures for appointing and revoking an appointment of a patent agent. The proposed Rules would introduce the concept of a “common representative”: where there is more than one applicant or patentee, the Rules will allow one person to be appointed by the others to represent them, therefore affording greater flexibility to applicants during the application stage to undertake certain actions themselves.

The current Rules for qualifying examinations would remain largely unchanged.

6) Communicating with the Office

The new proposed Rules would aim to simplify communications with the Office. Electronic communications would be considered received on the date that the Office receives the communication. Notices sent by the Commissioner or the Office sent by email would be considered sent on the date indicated in the notice. New exceptions would be added to the rule that written communications to the Commissioner must relate to only one application or patent, and notices and updates from CIPO would be published on CIPO’s website instead of the Canadian Patent Office Record.

7) Confidentiality and publication

The new Rules would change the deadline to withdraw a request for priority and introduce a new limitation providing that once an applicant approves early publication, they can no longer prevent the publication by withdrawing the application.

8) Examination process and amendments to applications

The time limit for requesting examination will be shortened from 5 years to 4 years after the filing date of the application. If the request for examination is not done within this time limit, a notice will be sent, and compliance will be required within 2 months, and a late fee will be required. Failure to comply will result in the deemed abandonment of the application.

The time limit to respond to a notice of allowance will be reduced from 6 months to 4 months. Applicants will have the opportunity to make a request that the notice of allowance be deemed never to have been sent, after which amendments to the application will be possible.

An application may be filed in a language other than English or French. However, the applicant will be required to provide a translation of the application into English or French before amendments to the application will be allowed.

9) Corrections

The proposed Rules would allow for the correction of errors in identity or name of the inventor or applicant within a prescribed time limit at no fee. The Rules would also make it possible to correct an error in the filing date, name of country or office and/or number in a priority claim at no fee.

Once the patent is issued, it will be possible to correct three types of errors, for a limited period of time: 1) Patent Office errors; 2) Errors in the name of the patentee or inventor; and 3) Obvious errors. To request a correction of error(s), the following information must be in the request: an indication to the effect that a correction of an error is requested; the patent number; the correction to be made; new pages if required; and the fee in the amount of $200.

10) Abandonment and reinstatement

The time limit to respond to the examiner’s report will be reduced from 6 months to 4 months failing which the application will be deemed abandoned. The applicant may receive an extension of 2 months to respond.

Reinstatement requests will still be required within 12 months of the abandonment. To avoid market uncertainty, demonstrating due care will be an additional requirement for reinstating an application deemed abandoned for the failure to pay a maintenance fee, as well as for applications deemed abandoned for failure to request examination. The Patent Office will be required to notify the patentee that they failed to pay the maintenance fee by the due date. The patentee will have to pay both the maintenance fee and late fee. If both fees are not paid within the prescribed period, the patent will be deemed to have expired retroactively on the due date of the fee. In order to reverse this, the patentee must, within the 12 month period after the six-month late period: request that the term limited for the duration of the patent to never have been deemed expired; pay the prescribed maintenance fee, the late fee ($150) and any additional fee ($200); state the reasons for failure to pay the prescribed fee and late fee within the prescribed time period (this allows the Commissioner to determine whether due care was taken)

11) Third-party rights and due care

There are currently no third-party rights in Canada. Rights will be afforded to third parties who, while the patent rights are uncertain, take actions in good faith which would otherwise constitute an infringement.

The due care requirement will need to be met in certain circumstances in order to reinstate an application or reverse the deemed expiry of a patent. According to CIPO, “[w]hen due care is required the Commissioner will make a determination, based on the facts of the case, as to if the applicant or patentee failed to take an action that should have been taken in order to avoid abandonment or deemed expiry despite all due care required by the circumstance.”

12) Transfers, change of name

There will be a change in the terminology of the proposed Rules to reflect the changes in the Act. Changes in the ownership will be referred as “transfers” rather than “assignments”, and the request will only require the name and postal address of the transferee, as well as the existing $100 fee. The requirements to request a name change will also be simplified: evidence of the name change and supporting documentation will no longer be required.

13) Fees

The proposed Rules would set the levels of new late fees, applicable in 3 cases: 1) payment of the application fee after the filing date; 2) late payment of an annual maintenance fee for an application or a patent that has been granted; and 3) requests for examination that are made after the deadline.

New provisions would allow for the Commissioner to waive fees in certain instances if the circumstances justify it, and the fee refund provisions will be updated to allow refund of a fee for correction of an error or for reissuing a patent if the error or insufficiency is the Commissioner’s fault.

14) Divisional applications

The proposed Rules will prescribe requirements, conditions and time limits to file a divisional application. Divisional applications will not be able to include material that was not included or be inferred from the parent application. The period during which third party rights apply to the parent application before a divisional application is filed would also apply to the divisional application.

15) Patent Cooperation Treaty provisions

Provisions in the Rules concerning the Patent Cooperation Treaty (“PCT”) would remain largely the same. Some of the few changes include the following: explicit references will be added to the Administrative Instructions under the PCT; a translation of an international application that is in a foreign language is submitted at national entry will replace the test of the PCT national phase application and amendments and will not be permitted to add matter not reasonably to be inferred from the translation; late entry will require the applicant to provide a statement that the late entry was unintentional; errors in the identity of an applicant of a PCT national phase application could be corrected upon request up to 3 months after national entry; the notice and late fee regime would not apply to PCT national phase applications; and once a patent has been granted on the basis of a PCT application, it could not be invalidated for failure to have paid a fee required in respect of that PCT application for entry into the national phase.

16) Transitional provisions

CIPO explains: “On or after the coming into force date of the new Patent Act and Rules, for applications and patents filed before the coming into force date, in order to determine whether a particular provision in the new Patent Act or Rules apply, one needs to refer to the transitional provisions.” The transitional provisions will be organized in 6 divisions, as follows:

  • Division 1: Rules that apply to interpretation
  • Division 2: Rules that apply to Category 1 patent applications (those applications filed before October 1, 1989.)
  • Division 3: Rules that apply to Category 2 patent applications (those applications filed on or after October 1, 1989 but before October 1, 1996.)
  • Division 4: Rules that apply to Category 3 patent applications (those applications filed on or after October 1, 1996 but before the coming into force date of the new Rules.)
  • Division 5: Rules that apply to certain patents (mostly patents granted on the basis of Category 1 and Category 2 patent applications.)
  • Division 6: Other Rules

Commentary

The Canadian Intellectual Property Office (“CIPO”) forecasts that these changes will bring $2.4 million in savings, with annualized savings of $210,187. The proposed Rules would reduce administrative costs to both large and small businesses and simplify administrative requirements for patent applications, reducing the risk of error and loss.

One of the notable proposed amendments to the Rules concerns representation before the Patent Office. Currently, the only person who can take action on the file is the authorized correspondent (i.e. a Canadian patent agent that has been appointed or the inventor who is also the applicant). With some exceptions, the proposed Rules will allow more individuals to represent the applicant for certain actions “related to prosecution and maintenance of patent applications, whether or not a patent agent has been appointed” in the following cases: 1) Submitting a patent application to obtain a filing date (a person authorized by any of the applicants will be able to make representations); 2) Submitting a request for PCT national entry (a person authorized by any of the applicants will be able to make representations); 3) Paying a maintenance fee for a patent application or a patent (a person authorized by any of the applicants will be able to make representations); and 4) Most actions for an issued patent, with exceptions such as reissue, disclaimers, re-examinations (a person authorized by the sole patentee or by the common representative, as applicable, will be able to make representations).

If you have any concerns with the proposed changes, remember to send your comments to CIPO before December 31, 2018.

Due care