A Proposal: Will you be my……Patent Rules?

After much anticipation, the Canadian Intellectual Property Office (CIPO) released a draft proposal of the new Patent Rules August 1st, 2017.  With these proposed rules, the Government of Canada seeks to modernize its intellectual property (IP) framework, which will allow Canada to join five international IP treaties, including the Patent Law Treaty (PLT).

With this release of the proposed Patent Rules, CIPO has kicked off a five-week consultation period during which it will receive feedback from stakeholders regarding these proposed changes to the Patent Rules. The released draft of the Patent Rules is therefore for consultation purposes and is subject to change before implementation.

CIPO has taken this opportunity to completely reorganize the Patent Rules, renumbering the vast majority of its sections and making a number of changes which will have a significant impact on Canadian patent practice, both for Applicants and Canadian patent practitioners.

With these new Patent Rules, CIPO seeks, among other things, to reduce the time required to obtain a Canadian patent and to bring Canadian administrative requirements more in line with those of other jurisdictions.

Among the many changes made in the new Patent Rules, some of the more significant ones propose to:

  • effectively eliminate late national phase entry after 30 months from PCT filing;

  • reduce the time period for requesting examination from five years to three years from the filing date;

  • reduce the time period for responding to office actions and paying the final fee from six to four months;

  • reduce the time period for late payment of maintenance fees;

  • introduce a new late period after the expiry of certain deadlines during which the overdue action can be undertaken with the payment of a late fee, to avoid abandonment;

  • introduce a new abandonment period (following expiry of the late period) during which the abandoned application/patent can be reinstated, however, in some cases, the requirements for reinstatement are stringent and require a higher burden of proof than was previously required; and

  • codify third party intervening rights during the above-noted abandonment periods.

More details with respect to these changes are outlined here. You will find more information and the complete set of newly proposed Patent Rules at the following websites:

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr04277.html

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04281.html


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