Coming Soon: Pre-Consultation Draft of Canadian Patent Rules

Public consultation for the long-awaited amendments to the Canadian Patent Rules is expected to begin this summer.¹ These amendments are intended to bring Canada into compliance with the Patent Law Treaty and will result in significant changes to the Canadian patent system.

What You Need To Know

• The Canadian Intellectual Property Office (CIPO) plans to release a pre-consultation draft of the proposed revisions to the Patent Rules on the CIPO website in late June, followed by a 2-month pre-consultation period.² Amendments to the Canadian Patent Act set forth in Bill C-43 received royal assent on December 16, 2014.³ Due to delays in preparing the draft Patent Rules, the target coming-into-force date for the amendments to the Patent Act and Patent Rules has been delayed until early 2019.⁴
• While the upcoming amendments to the Patent Act have already been published, the details of the proposed Patent Rules are not yet known. According to the Forward Regulatory Plan,⁵ the new Patent Rules will reduce overly restrictive procedural requirements, eliminate unnecessary fees, and lower the time limit for requesting examination from five years to three years.
• The amendments to the Patent Act include a number of key changes to the Canadian patent system. Most notably, the reinstatement-as-of-right regime will be replaced with a "due care" regime. This amendment requires the applicant to set out the reasons for the failure to take action that would have avoided abandonment, and the Commissioner to determine that the failure occurred despite "due care required by the circumstances." The proposed amendments to the Patent Rules are significant because they are expected to provide further clarity regarding the details of the reinstatement procedure.
• Other notable amendments to the Patent Act include:
• Restoration of priority. The applicant will have the right to restore priority if an application is filed within two months of the missed priority deadline and if the deadline was missed unintentionally and certain other conditions are met.
• Notification of unpaid fees. The Commissioner will be required to send a notice regarding certain unpaid fees to give the applicant an opportunity to prevent the loss of rights.
• More flexible filing requirements. Filing fees and English or French translations may be supplied after the filing date.
• Ability to submit missing parts. The applicant may be able to submit a part of the specification or drawings omitted at filing if they were contained in a priority application and certain prescribed requirements are met.

What's Next

Stakeholders will be consulted during the regulatory amendment process in the summer of 2017 and will have the opportunity to provide comments on the proposed amendments to the Patent Rules. After considering stakeholder feedback, a revised draft of the Patent Rules will be published in the Canada Gazette, Part 1 (likely in late 2017 or early 2018), for a further consultation period. The target coming-into-force date has been pushed back to early 2019, but it remains to be seen whether there will be further delays.

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¹ Canadian Intellectual Property Office, personal communication.

² Ibid.

³ Online: http://www.parl.gc.ca/HousePublications/Publication.aspx?DocId=6836481

⁴ Supra, note 1.

⁵ Online: https://www.ic.gc.ca/eic/site/020.nsf/eng/h_00589.html#CIPO_4

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