IP monitor - The amendment to the Patent Rules – Coming into Force October 30

Amendments to the Patent Act¹ received royal assent in December 2014 but the coming into force of these amendments was considerably delayed due to a significant amendment to the Patent Rules.

On July 10, 2019, the finalized wording of the new Patent Rules was published in the Canada Gazette, Part II². The coming-into-force (CIF) date for the amendments to both the Patent Act and the Patent Rules is October 30, 2019.

With the new Patent Act and Patent Rules, the Government of Canada seeks to modernize its intellectual property framework and thereby comply with five international IP treaties, including the Patent Law Treaty (PLT), that harmonize administrative patent practice worldwide.

With the new and completely reorganized Patent Rules, the Canadian Intellectual Property Office (CIPO) has introduced greater complexity to the Patent Rules, while at the same time opening representation before CIPO to a newly defined “common representative” (S1(1) new Patent Rules) and to others prescribed by the PLT.

Of the many Patent Rules amendments, some important changes will now:

• allow for the restoration of priority for applications having a filing date after the CIF (S28.4(6) new Patent Act and S77(1) new Patent Rules);
• effectively eliminate late National Entry after 30 months for applications having an international filing date on or after the CIF (S154(3) new Patent Rules). PCT applications having an international filing date prior to the CIF, will still be allowed to enter Canada up to 42 months from the earliest priority date (S210(3) & S234 new Patent Rules);
• require, for Canadian applications filed after the CIF, a certified copy of each priority application, or an indication that the certified copy of each priority application is available in an “accepted” electronic library (S74(1)(a) and S74(1)(b) new Patent Rules respectively));
• reduce the time period for:
  • submitting a copy of a priority document after filing an application - two months from a notice from CIPO (S74(2) new Patent Rules);
  • requesting examination from five years to four years for applications filed on or after the CIF, (S81(1) new Patent Rules);
  • responding to office actions and paying the final fee from six to four months (S86(1) and S86(6) new Patent Rules respectively); and
  • paying a missed maintenance fee from 12 months to the longer of two months from a notice from CIPO or six months from the initial due date (S133(1) new Patent Rules)), during which payment of a late fee will avoid abandonment. (This new – short duration – “late” period is established by the new Patent Rules);
• introduce a new abandonment period (following a “late” period) during which an abandoned application/patent may in some cases only be reinstated according to a more stringent standard requiring “due care”; codify third-party rights (S55.11(1)-(10) new Patent Act) during this new abandonment period; and
• provide a new amendment after allowance procedure (S86(17) of the new Patent Rules).