Canada’s new patent rules are final

The Government of Canada has published finalized amendments to the Patent Rules (final rules) in the Canada Gazette, Part II on July 10. The final rules introduce a number of changes to Canada’s patent regime.

What you need to know

• The final rules come into force on October 30, 2019 along with the long-anticipated amendments to the Patent Act.¹
• The final rules are substantially the same as the draft version published for public consultation in December 2018 (read our take on the top 10 changes); however, some amendments were made for clarity or in response to stakeholder feedback.
• Key changes include:
  • Doubling the length of time to correct certain errors in an issued patent from six months to 12 months. Since this is still a limited timeframe, patents should be carefully reviewed upon issue. Other deadlines for correction were not extended.
  • Limiting the third-party rights regime to apply only to missed maintenance fees or requests for examination. For applications, third-party rights begin to accrue six months after the missed due date to request examination or to pay a maintenance fee, even if the Commissioner is late in notifying the applicant of the deficiency. For an issued patent, third-party rights begin to apply six months after a missed due date to pay a maintenance fee. The third-party rights provision relating to other acts of abandonment was removed based on stakeholder feedback.
• The Government declined to make certain other amendments that were requested by some stakeholders. In particular:
  • Stakeholders requested the final rules not remove the current option to request a refund of the final fee. The Government refused to make this change but did introduce a provision allowing refunds of final fees paid before the coming-into-force date when certain conditions are met. Given this lack of flexibility, extra diligence should be taken before a final fee is paid.
  • Stakeholders raised concerns about the requirement that a request to record a transfer of an application be made before the final fee is paid. However, the Regulatory Impact Analysis Statement (RIAS) indicates that for logistical reasons, the Commissioner is unable to grant a patent in the name of an applicant if a request to record the transfer is received after the final fee is paid. Accordingly, chain of title documents should be submitted on or before payment of the final fee.
  • Stakeholders requested advanced examination still be available when an extension of time is requested for filing a response. However, the RIAS states that this change was not made “to better ensure efficient prosecution from all parties”. Accordingly, no request for an extension of time should be made if the applicant wishes to preserve the ability to request advanced examination.

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¹ Economic Action Plan 2015 Act, No. 1, S.C. 2015, chapter 36, section 53.