The long-anticipated amendments to Canada's Patent Act and Patent Rules come into force today.
What you need to know
- Key changes to Canada's patent regime include, among other things: shortened prosecution deadlines; the removal of late national phase entry as of right for Patent Cooperation Treaty (PCT) applications; the introduction of a new "due care" standard in specific circumstances; and the introduction of third party rights.
- Corresponding updates to the Manual of Patent Office Practice (MOPOP) also come into force today. Of particular interest is that these updates provide insights into how the Patent Office will apply the new "due care" standard.
Determination of due care by the Patent Office
To reinstate an application that was deemed abandoned for failure to pay a maintenance fee or for failure to request examination, and to reverse the expiry of a patent that was deemed to be expired for failure to pay a maintenance fee, the applicable applicant or patentee will need to show that the failure occurred in spite of the due care required under the circumstances having been taken.
When seeking a restoration of rights in these circumstances, the applicant/patentee must state the reason(s) for the failure to act. In the revised MOPOP, the Canadian Intellectual Property Office (CIPO) recommends that the required reasons include the circumstances that led to the failure (which may include evidence such as a medical note or an affidavit) and the measures the applicant/patentee took to avoid the failure. CIPO will not take into consideration any actions taken by the applicant/patentee after the failure occurred. CIPO will also consider the customary diligence a prudent party would have exercised in the circumstances.
Recognizing that each scenario is unique, MOPOP states that the following circumstances may favour a determination that due care was not taken:
- Lack of financing by the applicant/patentee.
- Human error by the applicant/patentee or patent agent resulting from an increase in workload, a lost file or other lack of organization or diligence when dealing with files.
- Lack of knowledge of the Patent Act or Patent Rules by the applicant/patentee.
- Absence from the office, such as for a planned vacation or medical appointment.
MOPOP also provides examples of circumstances that may favour a determination that due care was taken, such as:
- Force majeure.
- Unexpected illness of the applicant/patentee or patent agent that prohibits all communication with other persons.
- Facsimile or software submission failure that is beyond the control of the applicant/patentee and patent agent.
- Docketing system error.
- Isolated human error by an assistant.
The approach described above is generally consistent with the approach taken by a receiving Office in the context of a request for restoration of priority under the PCT, when the request is made on the basis that due care was required1.
If CIPO makes a preliminary decision that due care was not taken, the applicant/patentee will have an opportunity to submit further representations to CIPO before a final determination is made.
1See, for example, paragraph 166M of the PCT Receiving Office Guidelines.
To discuss these issues, please contact the author(s).
This publication is a general discussion of certain legal and related developments and should not be relied upon as legal advice. If you require legal advice, we would be pleased to discuss the issues in this publication with you, in the context of your particular circumstances.
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