Note: Bill C-43 has received royal assent as of December 16, 2014.
Patent Agents
New sections of the Act concerning representation by patent agents demand attention:
Rules and regulations
12. (1) The Governor in Council may make rules or regulations
…
(j.01) respecting the circumstances in which an applicant, patentee or other person may or must be represented by a patent agent or other person in business before the Patent Office
…
And,
Representation by patent agents
15.1 In the prescribed circumstances, an applicant, patentee or other person shall be represented by a patent agent in all business before the Patent Office.
Divisional Applications
Section 36 of the current Act states:
Patent for one invention only
36. (1) A patent shall be granted for one invention only but in an action or other proceeding a patent shall not be deemed to be invalid by reason only that it has been granted for more than one invention.
In section 12 there are changes that suggest that the rule in section 36 may be supplemented by regulations to address voluntary divisional and obviousness-type double patenting:
Rules and regulations
12. (1) The Governor in Council may make rules or regulations
…
(j.5) for the purposes of section 36,
(i) defining “one invention”, and
(ii) respecting requirements for divisional applications;
Filing in a Foreign Language
It will be possible to file a patent application with a specification that is not in English or French, as per a change to section 12:
Rules and regulations
12. (1) The Governor in Council may make rules or regulations
…
(j.72) respecting the replacement of all or part of the text matter of a specification or drawing contained in an application for a patent that is in a language other than English or French with a translation into English or French, for the purposes of paragraph 38.2(3)(b);
This change has been accounted for in section 38.2(2) and (3):
Restriction on amendments to specifications
(2) The specification and drawings may not be amended to add matter not reasonably to be inferred from the specification or drawings contained in the application on its filing date.
Restriction on amendments to drawings Language other than English or French
(3) However, if all or part of the text matter of the specification or drawings contained in the application on its filing date is in a language other than English or French, the specification and drawings may not be amended to add matter not reasonably to be inferred from both
(a) the specification or drawings contained in the application on its filing date, and
(b) the specification or drawings contained in the application immediately after the text matter is replaced by an English or French translation, in accordance with the regulations.
However, reasonable compensation runs only from the time that the English or French specification became open to public inspection:
Liability damage before patent is granted
55. (2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the specification contained in the application for the patent became open to public inspection, in English or French, under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the specification became open to public inspection, in English or French, under that section.
Filing Fee
CIPO will send a notice where an application is filed without payment of the filing fee:
Commissioner may grant patents
27. (1) The Commissioner shall grant a patent for an invention to the inventor or the inventor’s legal representative if an application for the patent in Canada is filed in accordance with this Act and all other requirements for the issuance of a patent under this Act are met.
…
Application fee not paid
(7) If, on the filing date of the application, the application fee is not paid, the Commissioner shall, by notice, require the applicant to pay the application fee and the prescribed late fee on or before the prescribed date.
Incorporation by Reference
A new section will make it possible to file a statement that incorporates missing specification or drawings by reference to a previously filed application:
Reference to previously filed application
27.01 (1) Subject to the prescribed requirements and within the prescribed period, an applicant may submit to the Commissioner a statement to the effect that a reference to a specified previously filed application for a patent is being submitted instead of all or part of the specification contained in or a drawing that is required to be contained in the application. The prescribed period shall not end later than six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1).
[N.B. Subsection 28(1) establishes “filing date” as the date on which the Commissioner receives the prescribed documents and information]
Specification or drawing deemed in application
(2) If the applicant submits the statement within the prescribed period and meets the prescribed requirements, the specification or drawing in the previously filed application is deemed to have been contained in the application on the date on which the Commissioner receives the statement.
The onus is on the Commissioner to notify an applicant of any missing documents:
Outstanding documents and information
28. (2) The Commissioner shall notify an applicant whose application does not contain all of the documents and information referred to in subsection (1) of the documents and information that are outstanding and require that the applicant submit them within two months after the date of the notice.
The missing documents can be filed within 2 months:
Application deemed never filed
28. (3) If the Commissioner does not receive the outstanding documents and information within that two-month period, the application is deemed never to have been filed. However, any fees paid in respect of the application shall not be refunded to the applicant.
Adding Subject Matter
The new section 28.01 allows subject matter to be added to an application within 6 months of the filing date, in which case the filing date will be the date that the subject matter was added unless the subject matter was contained in a priority application, in which case the original filing date will be granted:
Addition to specification or addition of drawing to application
28.01 (1) Subject to the regulations, an applicant may, within the prescribed period, add to the specification that is contained in their application or add a drawing to their application for a patent by submitting the addition to the Commissioner along with a statement by the applicant indicating that the addition is being made under this section. The prescribed period shall not end later than six months after the earliest date on which the Commissioner receives any document or information under subsection 28(1).
Filing date
(2) If an applicant submits an addition to the Commissioner under subsection (1) and the addition is not withdrawn within the prescribed period, the filing date of the application is the later of the date on which the Commissioner receives the addition and the filing date referred to in subsection 28(1), unless
(a) the applicant has, on the earliest date on which the Commissioner receives any document or information under subsection 28(1), made a request for priority in respect of the application under section 28.4;
(b) the addition is completely contained in a previously regularly filed application on which the request for priority is based;
(c) the applicant requests, in accordance with the regulations, that the filing date be the filing date referred to in subsection 28(1); and
(d) the applicant complies with any prescribed requirements.
Application deemed in application
(3) In the circumstances set out in paragraphs (2)(a) to (d), the addition is deemed to have been contained in the application on its filing date for the purposes of subsections 38.2(2) and (3).
Maintenance Fees
If a maintenance fee on a patent application is not paid on time, the application is not immediately abandoned. CIPO will send a notice requiring payment of the maintenance fee and a late fee that are due within the later of 6 months after the maintenance fee due date or 2 months from the notice.
Maintenance fees
27.1 (1) To maintain an application for a patent in effect, the prescribed fees shall be paid on or before the prescribed dates.
Late fee and notice
(2) If a prescribed fee is not paid on or before the applicable prescribed date,
(a) the prescribed late fee shall be paid, in addition to the prescribed fee; and
(b) the Commissioner shall send a notice to the applicant stating that the application will be deemed to be abandoned if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.
Prescribed fee deemed paid on prescribed date
(3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent, the prescribed fee and late fee are paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the prescribed fee shall be deemed to have been paid on the applicable prescribed date.
A new provision clarifies, perhaps overcautiously, that late payment of a maintenance fee is not grounds for invalidity:
Patent not invalid
27.1 (4) A patent shall not be declared invalid by reason only that the application on the basis of which the patent was granted was not maintained in effect.
If a maintenance fee on a registered patent is not paid on time, a similar result occurs. CIPO will send a notice requiring payment of the maintenance fee and a late fee that are due within the later of 6 months after the maintenance fee due date or 2 months from the notice. Failure to do so will result in the term of the patent being deemed to have expired as of the maintenance fee due date.
Maintenance fees
46. (1) To maintain the rights accorded by a patent issued under this Act in effect, the prescribed fees shall be paid on or before the prescribed dates.
(2) If a prescribed fee is not paid on or before the applicable prescribed date,
(a) the prescribed late fee shall be paid, in addition to the prescribed fee; and
(b) the Commissioner shall send a notice to the patentee stating that the term limited for the duration of the patent will be deemed to have expired if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.
(3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent, the prescribed fee and late fee are paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the prescribed fee shall be deemed to have been paid on the applicable prescribed date.
(4) If the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the term limited for the duration of the patent shall be deemed to have expired on the applicable prescribed date.
However, there will be a period of time during which the patentee can request that the expired term be restored upon satisfying CIPO “that the failure occurred in spite of the due care required by the circumstances having been taken”:
Subsection (4) deemed never to have produced its effects
46. (5) Subject to the regulations, if the term limited for the duration of a patent is deemed to have expired under subsection (4), that subsection is deemed never to have produced its effects if
(a) the patentee, within the prescribed time,
(i) makes a request to the Commissioner for the term limited for the duration of the patent to never have been deemed to have expired,
(ii) states, in the request, the reasons for the failure to pay the prescribed fee and late fee before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, and
(iii) pays the prescribed fee, the late fee and any additional prescribed fee; and
(b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the patentee of this determination.
However, the following provision makes the entire mechanism open to litigation:
Powers of the Federal Court
46. (6) If subsection (5) applies, the Federal Court may, by order, declare the term limited for the duration of the patent to have expired on the applicable prescribed date if the Federal Court determines either
(a) that the statement of the reasons referred to in subparagraph (5)(a)(ii) contains a material allegation that is untrue, or
(b) that, if paragraph (5)(b) applies, the failure referred to in subparagraph (5)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.
Novelty and Obviousness Grace Period
The grace period is extended to the claim date where the claim date is earlier than one year before the Canadian filing date:
Subject-matter of claim must not be previously disclosed
28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the “pending application”) must not have been disclosed
(a) before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;
And for obviousness:
Invention must not be obvious
28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to
(a) information disclosed before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere;
Convention Priority
The 12-month priority period can be extended by 2 months on the basis that the failure to file within 12 months was unintentional:
Filing date deemed to be within 12 months
28.4 (6) Subject to the regulations, for the purposes of paragraph 28.1(1)(b) and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii), the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if
(a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application but within two months after the end of those 12 months; and
(b) the applicant, within the prescribed time,
(i) makes a request to the Commissioner for this subsection to apply,
(ii) states, in the request, that the failure to file the pending application or the co-pending application, as the case may be, within 12 months after the filing date of the previously regularly filed application was unintentional, and
(iii) complies with any prescribed requirements.
However, the issue of whether or not the failure to file within 12 months was unintentional can be challenged:
Powers of the Federal Court
(7) If subsection (6) applies, the Federal Court may, by order, declare that subsection never to have produced its effects if the Federal Court determines that the failure referred to in subparagraph (6)(b)(ii) was intentional.
Representative for Service
Applicants will no longer require a Canadian representative for service. Section 29 of the Act is repealed.
Request for Examination
If a request for examination is not made on time, the application is not immediately abandoned. CIPO will send a notice requiring a request for examination and payment of a late fee within 2 months from the notice:
Prescribed time
35. (2) The request shall be made within the prescribed time and the prescribed fee shall be paid within that time.
Late fee and notice
(3) If the request is not made or the prescribed fee is not paid within the prescribed time,
(a) the prescribed late fee shall be paid, in addition to the prescribed fee; and
(b) the Commissioner shall send a notice to the applicant stating that the application will be deemed to be abandoned if the request is not made and the prescribed fee and late fee are not paid before the end of two months after the date of the notice.
Request deemed made and prescribed fee deemed paid within prescribed time
(4) If the request is made and the prescribed fee and late fee are paid before a notice is sent or, if a notice has been sent, the request is made and the prescribed fee and late fee are paid before the end of two months after the date of the notice, the request shall be deemed to have been made and the prescribed fee shall be deemed to have been paid within the prescribed time.
[N.B. There is a rumour the regulations will reduce the deadline for requesting examination to 3 years from 5 years after the filing date.]
Assignments
Section 51 regarding when assignments are void has been replaced by the new section 49(4):
When assignment void
51. Every assignment affecting a patent for invention, whether it is one referred to in section 49 or 50, is void against any subsequent assignee, unless the assignment is registered as prescribed by those sections, before the registration of the instrument under which the subsequent assignee claims.
Is replaced with:
Transfer void
49. (4) A transfer of a patent that has not been recorded is void against a subsequent transferee if the transfer to the subsequent transferee has been recorded.
The new section 49(4) applies only to issued patents. For applications, section 49(5) seems to provide a remedy:
Removal of recording
(5) The Commissioner shall remove the recording of the transfer of an application for a patent or the transfer of a patent on receipt of evidence satisfactory to the Commissioner that the transfer should not have been recorded.
However, the assignment of a patent cannot be reversed for the reason only that the transfer had been previously registered to another person:
Limitation
(6) The Commissioner is not authorized to remove the recording of a transfer of a patent for the reason only that the transferor had previously transferred the patent to another person.
Innocent Infringement
There is no action for infringement of a patent if the patent was issued from an application that was abandoned for failure to pay a maintenance fee, examination fee, or final fee, or if the patent was issued from a divisional application, provided the alleged infringing act was committed in good faith during a period established by the regulations:
Act committed during period
55.11 (2) No action for infringement of a patent lies against a person in respect of an act that would otherwise constitute an infringement of the patent if that act is committed in good faith by the person during a period that is established by regulations made under paragraph 12(1)(j.74).
[N.B. s. 12(1)(j.74) merely authorizes a regulation to set the term: (j.74) establishing a period for the purposes of subsection 55.11(2)]
There are similar provisions for successors-in-title in the new sections 55.11(3) and (4).
Abandonment
The term for response to an office action is moving to the regulations. Abandonment for failure to pay maintenance fees, examination fees and their respective late fees within the grace periods discussed above is provided for in the amended section 73.
Deemed abandonment of applications
73. (1) An application for a patent in Canada shall be deemed to be abandoned if
(a) the applicant does not reply in good faith, within the prescribed time, to any requisition made by an examiner in connection with an examination;
(b) the applicant does not comply with a notice given under subsection 27(6);
(c) the prescribed fee and late fee referred to in a notice sent under paragraph 27.1(2)(b) are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice;
(d) the request referred to in a notice sent under paragraph 35(3)(b) is not made and the prescribed fee and late fee referred to in that notice are not paid before the end of two months after the date of the notice;
(e) the request referred to in a notice sent under subsection 35(5) is not made and the prescribed fee referred to in that notice is not paid within the prescribed time; or
(f) the applicant does not pay the prescribed fees stated to be payable in a notice of allowance of patent within six months after the date of the notice.
Reinstatement Only for Just Cause
Reinstatement of abandoned applications will only be granted if the Commissioner is satisfied that the failure to take action “occurred in spite of the due care required by the circumstances having been taken”:
Reinstatement
73. (3) Subject to the regulations, an application that is deemed to be abandoned is reinstated if
(a) the applicant, within the prescribed time,
(i) makes a request for reinstatement to the Commissioner,
(ii) states, in the request, the reasons for the failure to take the action that should have been taken in order to avoid the abandonment,
(iii) takes the action that should have been taken in order to avoid the abandonment, and
(iv) pays the prescribed fee; and
(b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the applicant of this determination.
However, similar to section 46(6) regarding maintenance fees, the following provision makes the entire reinstatement mechanism open to litigation:
Powers of the Federal Court
(3.1) The Federal Court may, by order, declare an application that is reinstated under subsection (3) to never have been reinstated if the Federal Court determines either
(a) that the statement of the reasons referred to in subparagraph (3)(a)(ii) contains a material allegation that is untrue, or
(b) that, if paragraph (3)(b) applies, the failure referred to in subparagraph (3)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.
By virtue of the new section 73.1(2), section 73(3.1) amounts to a new invalidity attack:
Patent not invalid
73.1 (1) A patent shall not be declared invalid by reason only that the application on the basis of which the patent was granted was deemed to be abandoned and was not reinstated.
(2) Subsection (1) does not apply if the Federal Court makes an order under subsection 73(3.1) in respect of the application on the basis of which the patent was granted.
[N.B. This analysis does not include the transitional provisions.]