Follow the Rules! Recent Changes to Canada’s Patent Procedures
On October 30, 2019, Canada’s Patent Rules were amended to implement changes that were made to the Patent Act. A number of these amendments require applicants to modify their approach to filing and prosecuting patent applications in Canada. Some of the more important changes are summarized here along with recommended strategies to avoid potential pitfalls.
National Entry Deadline For PCT Applications
One of the more important changes to the Rules was the elimination of the right of applicants to file a late national entry of a Patent Cooperation Treaty (PCT) application.
Under the previous Rules, an applicant enjoyed the right to file a PCT national entry application in Canada within 12 months after the prescribed 30-month national entry deadline (running from the earlier of the filing or priority date of the international application). This “late national entry” only required a further government fee of $200.
Under the new Rules, although a national entry can still be made within 12 months after the 30-month deadline, this provision is not available as a matter of right. If the 30-month deadline is missed, the applicant will need to request entry under a procedure for “reinstatement of rights”, which requires, in addition to a reinstatement fee of $200, a statement showing that the failure to meet the prescribed deadline was unintentional. The Rules do not provide any guidance as to what circumstances would meet this test. This new procedure applies to national entry filings based on international applications filed on or after October 30, 2019.
CPST recommendation: For international applications filed on or after October 30, 2019, applicants should ensure that the national phase in Canada is entered by the 30-month deadline.
Requirement For Translations Of Application
The new Rules now permit an applicant to establish a filing date for a non-PCT national Canadian application by filing a description in any language. This is a welcome change in practice as it allows a filing in Canada without any rush translation of the specification. If a foreign language text is filed, the Commissioner will requisition the applicant to furnish, within two months, a translation of the application into English or French.
Unfortunately, the same provision is not extended to PCT national entry cases, for which the new Rules still require that the application must be filed in English or French. Moreover, the new Rules stipulate that the translated national entry specification filed in Canada replaces the text of the international PCT application. Thus, in the event an amendment to the translation is deemed necessary, it is no longer possible to rely on the text of the parent foreign language application for support.
CPST recommendation: Extra care should be taken when preparing translations for filing in Canada, particularly for national entry cases.
Under the new Rules, where an application claims priority, it is now mandatory that the applicant furnish a certified copy of the priority document. This is a new requirement in Canada. The priority document can be provided in one of three ways:
- For PCT national entry cases, the filing of the priority document in the international application will be sufficient for the purposes of Canada, so no separate action is needed unless requested by the examiner.
- The applicant may allow the Canadian Intellectual Property Office (CIPO) to access the priority document through the Digital Access Service (DAS) managed by the World Intellectual Property Organization. This is possible in cases where the priority country subscribes to the DAS.
- In situations where the above two options are unavailable or not applicable, the applicant will need to submit an original certified copy of the priority document.
The requirement to furnish the priority document must be met within the later of four months from the Canadian filing date, 16 months from the priority date, and, for PCT cases, the national entry date. In some cases, obtaining a physical certified copy may involve processing and/or delivery delays resulting in the document not being available by the prescribed deadline. For such situations, the new Rules allow for a later submission of the document as long as the applicant filed a request for same with the foreign patent office before the deadline mentioned above.
Should the priority claim contain an error (such as an incorrect serial number or filing date), the new Rules stipulate that the correction must be made within a calculated period of time.
CPST recommendation: Prior to filing a Canadian application claiming priority to an earlier foreign case, care should be taken to ensure that the priority document is made accessible to the CIPO, or that a certified copy of such document is ordered well in advance.
The new Rules introduce, for the first time in Canada, a provision for an applicant to restore the right to a priority date. This provision is available for applications having a filing date after October 30, 2019. To avail itself of this option, the applicant must submit a request for priority restoration within two months of the filing date in Canada or, for PCT cases, within one month of the national entry date in Canada and must establish that the failure to claim priority by the prescribed deadline was unintentional.
CPST recommendation: While this is a welcome change, applicants should bear in mind that the deadlines to take corrective action are very short and still require an explanation that must be accepted. Applicants should carefully review all priority information prior to filing in Canada and act quickly where any restoration of priority is found to be needed.
Recordal Of Transfers
Under the new Rules, changing the ownership of an application or patent has been simplified. Such changes, now referred to “transfers”, can be recorded upon request by the applicant or the agent of record without any supporting evidence. The request for recordal must be accompanied by the appropriate recordation fee and must only identify the transferor and transferee and the respective addresses. A request for transfer filed by the transferee must, however, be accompanied by satisfactory evidence that the transfer has taken place, such as an assignment or the like.
Any document affecting title may still be made of record against an application or patent by registering such document and paying the necessary registration fee.
CPST Recommendation: The new Rules make it easier for an applicant or patentee to record any changes in ownership. However, care must be taken to ensure that the request accurately reflects the information concerning the new owner. The new Rules also stipulate that no transfers will be recorded against an application after the final fee is paid. Therefore, if a transfer has been made, it is important to have it recorded prior to payment of the final fee so as to ensure that the patent is granted in the correct owner’s name.
Corrections To Applicant Or Inventor
Under the new Rules, strict requirements are imposed for correcting errors in the naming of applicants and inventors.
Where the identity of an applicant is incorrect in the filing documents, a request to correct the error must be filed before filing a request to record a transfer (e.g. assignment) and within three months of the national entry date, for PCT applications, or before the publication date, for national applications.
Corrections to the identity of the inventor(s) can be requested at any time up to the allowance of the application. In this regard, guidance from the CIPO emphasizes that the inventorship of a pending application may need to be updated as a result of amendments to the claims during prosecution.
Corrections to the name of the applicant and/or inventor can be requested at any time up to the payment of the final fee.
CPST recommendation: In view of the strict deadlines for correcting errors in the names of the applicant and/or inventor, the accuracy of this information should be carefully reviewed prior to filing the application. A further review should be conducted when the filing receipt is issued.
It is also recommended that the recordal of any transfer be deferred until the applicant and inventor details are verified. Where a request is filed to expedite the prosecution of an application (such as under the Patent Prosecution Highway), the application may be published ahead of its normal course. Therefore, in such cases, extra care must be taken to ensure that all applicant and inventor information is correct prior to filing the request for expedited prosecution.
Finally, the inventorship of an application should be reviewed whenever any amendments are made that result in a change in the scope of the claims, or when filing any divisional application, to ensure accuracy. Similarly, all applicant and inventor details should be carefully reviewed prior to payment of the final fee.
Corrections To Patents
Under the previous Rules, corrections to clerical errors in a granted patent could be requested at any time. Under the new Rules, however, the ability to correct obvious errors in patents is restricted to requests that are filed within 12 months of grant, regardless of whether the error was made by the applicant or by the CIPO.
CPST recommendation: Given the strict timeframe for requesting corrections to patents, all patent grants be carefully reviewed as soon as possible after issuance to identify errors that may need correction.
Shortened Prosecution Timeframes
The new Rules include two features that are designed to shorten prosecution times, First, the Rules require that examination of an application must be requested within four years of the filing date (instead of five). Second, the new Rules stipulate that responses to Examiner’s Reports (or Office Actions), and payments of final fees after allowance, must be submitted within four months (instead of six). The Rules include a provision for extending the response period for Examiner’s Reports by two months with the payment of a $200 fee and by providing a statement explaining the circumstances necessitating the extension. It should be noted that this extension is not available as a matter of right and is awarded only if the Commissioner considers that the extension is justified.
It should be noted that for national entry applications originating from a parent PCT application filed before October 30, 2019, examination can still be requested within five years of the international filing date.
In its 2017–2022 business plan, the CIPO set goals for issuing a first examiner’s report within 10 months of examination being requested, and for completing prosecution of patent applications within 24 months.
CPST recommendation: Prosecution before the CIPO is now fast tracked! In view of the shortened timelines, all Examiner’s Reports and Notices of Allowance should be processed and attended to promptly. Also, due to the uncertainty surrounding the granting of extensions of time, and the fact that such extension must be requested before the respective deadline, it is recommended that all Examiner’s Reports be responded to by the prescribed four-month due date.
Abandonment And Reinstatement/Reversal Of Deemed Expiry
Under the previous Rules, an application that is abandoned for any reason may be reinstated as a matter of right within 12 months by filing a request to reinstate the application and paying a reinstatement fee of $200. This provision has often been used by applicants as an extension of time.
For applications filed after October 30, 2019, such reinstatement provision remains applicable for an abandonment resulting from a failure to respond to an Examiner’s Report. However, where a deadline for paying a maintenance fee or for requesting examination is missed, the procedure has changed. Under the new Rules, if a maintenance fee or examination request deadline for a pending application is missed, the CIPO must issue a notice advising that the application will be abandoned unless the missed action, along with the payment of a $150 late fee, is attended to within two months of the date of the notice or, in the case maintenance fees, the later of two months from the date of the notice and six months after the missed deadline. If an application is deemed to be abandoned, it may be reinstated within 12 months upon requesting reinstatement (with a reinstatement fee) and providing sufficient details to satisfy the Commissioner that the abandonment occurred despite the exercise of “due care”.
As with pending applications, if a maintenance fee for a granted patent is not paid, the CIPO will issue a notice advising the patentee of same. If the patent is to be maintained, the patentee must pay the missed fee, along with a late fee, within the later of two months from date of the notice and six months from the missed deadline. Failure to do so will result in the deemed expiry of the patent. Such deemed expiry can be reversed, however, if a request for reversal is filed within 12 months and the patentee satisfies the Commissioner that the deemed expiry occurred despite the exercise of due care.
The new Rules also introduce a provision for third parties to claim rights under the patent for activities commencing six months after a missed maintenance fee due date or six months after a missed examination request due date.
CPST recommendation: With the removal of the right to reinstate in most instances, it is critical that all maintenance fees and examination requests are submitted by the prescribed deadlines. It is also recommended that all documentation relating to the payment of maintenance fees or requests for examination be retained to evidence that due care was exercised in dealing with the respective deadline(s).
Amendments After Allowance
With the previous Rules, amendments after allowance were permitted where the proposed amendment did not necessitate a further search by the examiner. This amendment route was commonly used, for example, to enter new dependent claims and/or consistory clauses in the description. For any substantive post-allowance amendments, the applicant’s only recourse was to abandon the application by failing to pay the final fee and then requesting reinstatement. At such point, the application is returned to its pending state and the amendments may be entered by means of a Voluntary Amendment.
The new Rules provide two avenues for amending an application after allowance. First, where the amendment serves to correct obvious errors, a request for such amendment may be submitted before payment of the final fee. No additional fee is required for requesting corrections of obvious errors.
Second, in situations where amendments other than obvious error corrections are desired, a request must be filed prior to payment of the final fee (and within four months of the date of allowance) to withdraw the application from allowance and return it to examination. A $400 fee is required for this request. Once withdrawn from allowance, the desired amendment can be submitted in the usual manner, and the application will be returned to the examiner for further consideration.
CPST recommendation: While the new Rules simplify the procedure for entering substantive amendments to allowed applications, entering such amendments will require reopening of examination. It is therefore recommended to ensure that all amendments to the specification be made as early as possible so that they are entered prior to allowance.
The new Patent Rules have introduced a number of changes, some of which are welcome improvements to the previous system, and some of which may result in new pitfalls for applicants. Careful attention must therefore be taken when prosecuting patent applications in Canada. Please contact any of the CPST professionals for further information.
In a recent decision arising from an appeal of a decision of the Trademarks Opposition Board, the Federal Court commented on when a retailer can establish use of a trademark on goods when the retailer is not the “source” of the goods. Specifically, if a retailer simply affixes its own trademark to goods manufactured by a third party, does that constitute use of the retailer’s trademark in association with those goods.
Interlocutory injunctions in Canadian trademark cases are rare. The decision at first instance to grant a motion for an interlocutory injunction in a dispute related to the “Bombay Frankie” trademark therefore made headlines, at least in trademark circles, for two reasons. First, the fact that the injunction had been granted was in itself noteworthy. Second, many in the intellectual property bar were of the view that the decision misapplied certain fundamental principles of trademark law and therefore introduced uncertainty into the law.
Canada continues to make news (the wrong kind) when it comes to the slow pace of its examination of trademark applications. Despite repeated promises by the Canadian Intellectual Property Office (“CIPO”) to speed things up, the problem is only getting worse. However, there are some promising signs.