October 3, 2019
On October 30, 2019, Canada will be implementing significant changes to its patent law that will affect patent prosecution. Some of the new rules will only apply to new applications filed after the October 30 date and not to currently pending applications.
Some of the more notable changes include these:
The standard for PCT national phase entry after 30 months will change. Currently, Canada allows an applicant to enter the national phase in a PCT application at any time up to 42 months from the earlier priority date. The new rules, however, will apply an “unintentional” standard to PCT applicants seeking to enter the national phase after 30 months from the earlier priority date. Applicant will be required to submit a statement that the failure to enter the national phase by the 30-month due date was “unintentional.” This rule change will only apply to PCT applications filed on or after October 30, 2019. For PCT applications that are filed and pending prior to October 30, 2019, the old rule will continue to apply. While the effect of this rule change might not be evident right away, applicants should reconsider any approach that routinely delays national phase decisions past the 30-month date.
The standard for reinstatement of certain types of abandoned applications and expired patents will also change. Currently, an applicant may automatically reinstate an application within one year of abandonment upon payment of a fee. Some applicants have used this one-year period, in effect, as an automatic extension during which to make decisions. Under the new rules, an applicant must make a showing of “due care” for certain types of reinstatements. These types of reinstatements include applications abandoned due to failure to pay a maintenance fee, patents expired due to failure to pay a maintenance fee, and applications abandoned due to failure to request examination. In addition, intervening rights may apply to third parties during periods of abandonment or lapse such that actions taken in good faith during those periods may not constitute infringement. In light of this rule change, applicants should reconsider any approach that relies on automatic reinstatement in these circumstances.
The new rules allow for the restoration of priority claims in certain circumstances. The period for claiming priority to an earlier application will remain 12 months. For non-PCT applications, however, an applicant will have an additional two-month period (after the expiration of 12 months) to restore the priority claim. The applicant must state that the failure to satisfy the 12-month period was “unintentional.” For PCT national phase applications, the applicant may be able to restore a priority claim if restoration is requested within one month of national phase entry.
The new rules change the requirements for filing a non-PCT application. Currently, an application must be filed in English or French in order to receive a filing date. Going forward, the description of an application may be filed in any language, and a translation may then be submitted at a later date. For PCT national phase applications, however, applicants will still need to provide a translation at the time of entry.
The new rules also shorten some of the time periods during prosecution. For example, the time for requesting examination will be reduced from five years to four years after filing (for applications filed after October 30, 2019), the time to respond to an Office Action will be reduced from six months to four months, and the due date for payment of the final fee will be reduced from six months to four months from the Notice of Allowance. These changes may result in more-compact prosecution.
Fitch Even does not itself have Canadian offices, and any actions involving Canadian patent practice should be undertaken in conjunction with a Canadian attorney. We believe, though, that the general guidelines above will be of interest to our patent prosecution clients who intend to file counterpart applications in Canada.
For more information, please contact Fitch Even partner Rudy I. Kratz, the head of Fitch Even’s international practice group and author of this alert.
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