2019 has been a very busy year from an intellectual property perspective in Canada. Amendments to the Patent Act have enabled Canada to ratify the Patent Law Treaty and to harmonize Canadian practice with the practices of intellectual property offices in other jurisdictions. These changes came into force on October 30, 2019. Generally speaking, the changes are intended to shorten the time period for the prosecution of new applications and to simplify the administrative procedures involved in obtaining and maintaining patents in Canada. Critically, applicants no longer have the automatic right to reinstate abandoned applications.
The minimum patent application filing requirements to obtain a filing date have been streamlined. All that is initially required is:
- a document in any language that appears to describe an invention, or a reference to a description previously filed as part of another patent application;
- an indication that a patent is being sought;
- information identifying the applicant; and,
- contact information for the applicant.
When an applicant attempts to file a patent application he/she will receive either a filing receipt if all elements of the patent application were filed initially or a notice identifying any further information, documents or fees which are needed to complete the filing, such as application fees, a small entity declaration, a copy of a priority application if a priority claim is being made, an English or French translation of the description of the invention and setting a 2 month deadline to complete the filing. The new rules also provide greater flexibility to correct errors in application filings, such as missing pages, incorrect inventor or applicant details, etc.
The examination process for applications is also being streamlined. Canada still has a system of deferred patent examination, but the deferral period to request examination has been shortened from 5 years to 4 years. Likewise, the deadlines for responding to examination requisitions has been shortened from 6 months to 4 months with only one extension of time being available on request.
The system of setting deadlines for an applicant to complete actions relating to a patent application and the consequences of missing a deadline have been significantly altered. The new system allows the applicant much less flexibility, but does require the Patent Office to assume responsibility to issue a notice to the applicant whenever the applicant has failed to meet a deadline. A brief comparison of the old and new systems follows.
The Old System:
Historically, if an applicant failed to pay a maintenance fee by the annual deadline, or failed to complete a required action like requesting examination of the application or responding to a requisition by an examiner, the patent application was deemed to be abandoned. The applicant then had 1 year from the date of the missed deadline to request reinstatement of the application, pay a reinstatement fee and complete the action which should have been taken by the original deadline. The ability to reinstate the application was as of right: it was not necessary to indicate that the applicant’s failure was unintentional. Having the right to reinstate an application meant that an applicant could, for strategic reasons miss a deadline and then reinstate the application within the following 1-year period. This practice allowed the applicant greater control over the speed at which the application advanced and the timing of financial outlays for the payment of examination or maintenance fees. Even national entry of Patent Cooperation Treaty (PCT) applications in Canada could be delayed by 1 year from the generally accepted 30 month filing deadline.
Although the previous system provided great flexibility, the consequences of missing a reinstatement deadline were dire. If applicant did not take steps to reinstate the application prior to the 1-year deadline, the application was considered dead (or in the case of an issued patent, lapsed), and the applicant’s rights were lost irretrievably. The Patent Office did issue abandonment notices as a courtesy, but was not required to do so. If the applicant did not receive an abandonment notice from the Patent Office, there would be no external backstop prior to the absolute loss of rights. If an applicant (or the patent agent of record) did not have the correct reinstatement deadline on file in a diary system, the reinstatement opportunity could come and go without any notice from the Patent Office.
The New System:
Under the new system applicants no longer have the right to reinstate abandoned applications. Instead, when a deadline is missed, a notice is issued by the Patent Office to the applicant advising of the missed deadline and warning that the application will be deemed abandoned if the applicant does not complete the missed action and pay a late fee prior to a specified date. Usually this date will be the later of 6 months from the original missed date or 2 months from the issuance date of the notice. The mandatory notice to the applicant provides an external backstop to alert the applicant that an action needs to be taken.If the applicant takes no action, the application will be deemed abandoned.
Once deemed abandoned, an application can only be reinstated if the Patent Office determines that the failure occurred in spite of due care required under the circumstances having been taken. The requirement of due care means that an applicant seeking to reinstate an abandoned application would have to provide evidence of the circumstances that led to the failure, the measures that were taken to avoid the failure (including any remedial or alternative steps taken to avoid the failure) and any other extenuating circumstances or justifications. Only if the Patent Office finds that the patentee and all other parties involved (patent agent or common representative) took all measures that a reasonably prudent person would have taken in the circumstances to avoid the failure would reinstatement be permitted. For granted patents, generally the same time lines and considerations would apply with respect to the deadlines to pay maintenance fees.
Reinstatement of an abandoned application has now become a remedy of dire last resort, not a strategic alternative. Patent applicants and patent agents will need to act promptly to meet deadlines and exercise care in tracking time periods as we become accustomed to the operation of these new rules.