There be dragons ahead

The Patent Law Treaty harmonizes and streamlines procedures before patent offices in member countries. Although Canada signed the PLT on May 21, 2001, its implementation in Canada was delayed until a series of wide-ranging intellectual property reforms were begun in 2014. 

With public consultations now concluded, Canada is poised to ratify the PLT this fall, at which point various amendments to the Patent Act and Patent Rules will come into force. For applicants, these changes represent a mixed bag.

As intended under the PLT, many of these upcoming changes will simplify procedural requirements at the Canadian Intellectual Property Office. For example:

• Filing requirements will be simplified in various ways, making it easier to obtain a timely filing date in Canada;
• The filing deadline for priority claims will be extended to 14 months, if the applicant can show that its failure to meet the usual 12-month deadline was unintentional and a request for restoration is made within two months of filing;
• It will be possible to correct an “obvious error” in a patent document where something other than what appears in the patent was intended, which should provide greater latitude than the existing system for “clerical errors”;
• Supporting documentation will no longer be required for changes in name or ownership, provided the request originates from the patentee;
• Excess page fees will no longer apply to sequence listings, which will substantially reduce issue fees for biotech applications;
• Allowed applications can be returned to examination on payment of a fee, which avoids the existing (and cumbersome) practice of intentionally abandoning and reinstating applications to add additional claims; and
• Applications will no longer go abandoned without the applicant first receiving some form of notice from the Patent Office.

However, the upcoming changes are not all positive. Canada has traditionally had a very flexible examination system, and greater harmonization with international standards may create traps for the unwary.

Abandonment and reinstatement is now more risky

Currently, when a deadline is missed, the application is automatically abandoned. The application may then be reinstated as of right, provided that a fee is paid and corrective action is taken within 12 months of the date of abandonment. No intervening rights arise for third parties during abandonment. This existing regime will be entirely replaced under the new act and rules.

In most cases, the patent office will now notify applicants that a deadline has been missed before an abandonment will occur. The notice will set a deadline for taking the corrective action, failing which the application will become abandoned. The notice requirement will not apply to situations in which the applicant has already been properly informed of the deadline, such as responding to office actions. 

Once abandoned, the application must be reinstated within 12 months by paying a fee and addressing the cause of the abandonment. However, if the application was abandoned for failing to pay a maintenance fee or request exam, the applicant must also show that the abandonment occurred in spite of “due care” being taken.  It is unclear what will qualify as due care and what evidence will be necessary, but any decision regarding due care can be subsequently reviewed by a court. 

The extra notification prior to abandonment provides a “safety net” of sorts for applicants in certain situations, but it creates uncertainty about the status of applications and patents among third parties. To compensate for this, a third party who in good faith takes an action that would otherwise infringe a patent while the patent or application is abandoned may be insulated from patent infringement proceedings. 

Late PCT national phase entry will require reasons

In most countries, the deadline to enter national phase is 30 months from the earliest filing date. Currently, Canada effectively provides a one-year grace period that permits national phase entry in Canada up to 42 months on payment of a fee.

While this grace period will still be available, applicants under the amended Rules must now include a statement that their failure to meet the 30-month deadline was “unintentional.” It is unclear what the threshold will be.

Examination deadlines will be shortened

Deadlines during the examination process have been reduced in an attempt to speed up patent prosecution. For example, the deadline to request examination is reduced to four years from five years after filing. Likewise, the time to respond to an office action will be reduced to four months from six months (although a two-month extension can be obtained). The time to pay the issue fee has also been reduced to four months from six months.

Certified copies of priority documents will be required

Certified copies must now be provided for all priority documents or made available to the commissioner via a digital library. This requirement will not apply to PCT applications where priority documents have already been submitted to WIPO.

File wrapper estoppel is now in effect in Canada

Finally, although not required to satisfy the requirement of the PLT, an omnibus budget bill has brought “file wrapper estoppel” to Canada. This reverses nearly 20 years of case law and is already effective as of Dec. 13, 2018.

Under the doctrine of file wrapper estoppel, statements made about an invention during examination can influence future claim construction. For example, if the applicant argues that a claim has a certain meaning in order to avoid cited prior art, those statements can be introduced as evidence in future litigation to rebut an attempt to provide a different construction of the claim at trial. 

These changes will better harmonize Canada’s patent legislation with its trading partners. Although this will mostly be positive, care must be taken to avoid pitfalls created by the less helpful changes.