BULLETIN: January 2015Amendments to the Patent ActChanges on the Horizon

On December 16, 2014, royal assent was given to legislation amending Canada's Patent and Industrial Design Acts.  Implementation will be conditional on enabling Regulations, which we expect over the next year.  This Bulletin focusses on changes to the Patent Act.

Highlights:

- Our Novelty Grace period will be lengthened to one year from the Claim Date (the Priority Date if one is claimed) from the current Canadian Filing Date.
- Our Period of Reinstatement will no longer be limited to one year, in cases where a failure to act occurred despite due care under the circumstances.
- We will be able to rely on incorporations by reference, as provided for in PCT and US practice.
- Our Commissioner will have powers to remove the recording of a transfer.

Selected Details:

Treaty membership

The amendments will allow Canada to ratify the Patent Law Treaty and to accede to the Geneva Act of the Hague Agreement.

Reference to previously filed application 

Changes to Subsection 27.01 will enable an Applicant to submit to the Commissioner a statement to the effect that a reference to a specified previously filed application for a patent is being submitted instead of all or part of the specification contained in or a drawing that is required to be contained in the application. If the applicant submits the statement within the prescribed period and meets the prescribed requirements, the specification or drawing in the previously filed application will be deemed to have been contained in the application on the date on which the Commissioner receives the statement.

Maintenance Fees and Request for Examination

Changes to Subsection 27.1 will change how we handle the late submission of Maintenance Fees.  Under Subsections (2)(a) and (2)(b), as now changed, if the Maintenance Fee is not paid by the applicable date, the Commissioner shall send a notice indicating the application will be abandoned if the Maintenance Fee and applicable and late fee are not paid before the later of the end of six months after the applicable date and the end of two months after the date of the notice. (Similar changes have been made in relation to the deadline to Request Examination.)

Reinstatement extended beyond the prescribed period

More significantly, however, is the language in new Subsection 27.1(4), in which a "patent shall not be declared invalid by reason only that the application on the basis of which the patent was granted was not maintained in effect".  We believe this will be contingent on additional reinstatement provisions, allowing the patent owner to state, in a complying request, the reasons for the failure to pay the prescribed fee and late fee before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, and where the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the patentee of this determination.

As to pending applications, changes to  Subsection 73(3) will enable an applicant to request reinstatement, along with reasons for the failure to take the action that should have been taken in order to avoid the abandonment, and to take the action that should have been taken in order to avoid the abandonment, provided that the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the applicant of this determination.   However, new Subsection 73(3.1) will enable the Federal Court to declare an application that is reinstated under Subsection 73(3) to never have been reinstated if the Federal Court determines either that the statement of the reasons contains a material allegation that is untrue, or that the failure did not occur in spite of the due care required by the circumstances having been taken.

Outstanding Documents Missing From Original Filing

Changes to Section 28 will enable the filing date to be preserved in cases where intended information or documents are not included in an original filing, providing the Applicant requests retroactive submission of the intended information or documents, within prescribed time limits and provided they are fully contained in a previously regularly filed priority application.

Novelty- Grace Period Lengthened

Changes to Subsection 28.2(1)(a) will lengthen the Grace Period for filing in Canada for those applications which have a Priority Claim to a previously regularly filed application. With the change, the Canadian application will need to be filed before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere.

Recording Transfers

As you may be aware, the Canadian Patent Act provides for circumstances where a transfer of a patent that has not been recorded is void against a subsequent transferee if the transfer to the subsequent transferee has been recorded. Changes to Section 49 will give the Commissioner the authority to remove the recording of the transfer of an application for a patent or the transfer of a patent on receipt of evidence satisfactory to the Commissioner that the transfer should not have been recorded, but not for the reason only that the transferor had previously transferred the patent to another person.

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