Today on IPcopy we have a guest post from Wendy Lamson of Perley-Robertson, Hill & McDougal LLP on the subject of national phase entry in Canada. This post has been reproduced with the permission of the author.

The new Patent Rules were published on 10 July 2019 in Canada Gazette, Part II.  The amendments will bring the Canadian Patent Rules into conformity with the Patent Law Treaty and will come into effect on October 30, 2019.

Highlights of some of the more important changes are discussed below.  Notably, certain deadlines will be shortened and the ability to reinstate an abandoned patent application or revive a lapsed patent will become more difficult in certain circumstances.

Details can be found at the following link: Canada Gazette, Part II

Reinstatement of abandoned applications and lapsed patents

Current – Canadian Patent Law is now quite permissive with respect to the revival of rights.  An abandoned patent application or lapsed patent can be revived within 12 months of the date of abandonment/lapse by simply paying a reinstatement fee, taking the action that led to the abandonment and making a request for reinstatement.  No reasons for the missed deadline need to be provided.

Future – Under the proposed changes, a “due care standard” will apply for reviving an “expired” patent or “abandoned” patent application after certain timelines for failure to pay a maintenance fee or to request examination.  To revive such a patent or application, the applicant must state the reasons for the failure to take the action that led to abandonment or lapse, and the Commissioner must determine that “the failure occurred in spite of the due care required by the circumstances having been taken.”  After failure to meet an applicable deadline, there will be a period of time in which it is possible to revive rights without having to prove due care, although caution should be exercised since this timeline depends on the nature of the deadline that was missed.  We recommend reviving rights as soon as possible after a missed deadline to avoid having to prove due care was taken since the standard that needs to be met is unclear at present and it is also unclear how the courts will interpret this provision (should the validity of a patent later be challenged on this basis).

Shortened deadlines for certain actions

Current – The deadline for requesting examination is currently five years from the filing date (typically the international filing date).  A response to an Examiner’s Report is due six months from the date of mailing.  There is currently a six-month period from the Notice of Allowance to pay the final fee.

Future – The term for requesting examination will be four years from the filing date.  Examiner’s Reports will have a shortened term for response of four months.  The final fee will be due four months from the Notice of Allowance.

Deadline for national phase entry

Current – Canadian law allows for late Canadian national phase entry at up to 42 months after the priority date of an international PCT application, simply by requesting late entry together with payment of a late fee and payment of any maintenance fees that fell due during that period.

Future – The ability to enter national phase up to 42 months from priority will continue, but in addition to paying a late fee, an applicant will have to submit a statement that the failure to meet the thirty month deadline was unintentional.  There is uncertainty as to how “unintentional” will be interpreted by the courts and so we highly recommend entering national phase before 30 months from the priority date.

Amendments after allowance

Current – After receiving a Notice of Allowance, prosecution on the merits is closed – essentially only minor changes can be made to a patent application that do not necessitate a further search of the prior art.  In order to re-open prosecution, it is necessary to intentionally abandon the application by failing to pay the final fee, followed by reinstating the application.  An application that is abandoned and reinstated in this way can be amended in the regular manner.

Future – These procedures will be simplified.  The Notice of Allowance can be withdrawn and prosecution re-opened upon payment of a fee within a certain timeline after the date of the Notice of Allowance.  The application will then be returned to examination.

Kindly note that the above discussion is general in nature and cannot replace legal advice in relation to specific matters.  In addition, the above is a brief overview of only some of the changes and is not in any way comprehensive.  It is also important to note that there may be serious consequences for failure to adhere to certain time limits and, as noted above, it will not be possible in many circumstances to remedy such failure merely by payment of a reinstatement or late fee.

Wendy Lamson 18 July 2019