by senhaonline | May 19, 2023 | Sem categoria
Changes to Late National Phase Entry
When filing a National Phase of a PCT application in Canada, you need to be aware of the following changes to the Patent Regulations for late entry:
- If the International Filing Date is before October 30, 2019, the deadline for national entry is 30 months from the earliest priority date – or 42 months from the earliest priority date with payment of a $200 late entry fee (no change from current practice).
- If the International Filing Date is after October 30, 2019, the deadline is still 30 months from the earliest priority date. However, there are new restrictions for late entry after the 30-month deadline and up to 42 months from the earliest priority date. The applicant must now:
- explicitly request reinstatement of rights
- provide a statement that the reason for failure to enter the national phase by the 30-month deadline was unintentional
- pay the $200 late fee
Our understanding is that the Canadian Patent Office will not require anything more than a statement that the failure to meet the 30-month deadline was unintentional – that is – no detailed reasons will be required. Nevertheless, we recommend that if you have clients that wish to enter the national phase in Canada, you inform them that the 42-month late entry deadline should NOT be relied on or used to purposely extend the 30-month deadline.
Restoration of Priority
With the changes that came into effect on October 30, 2019 applicants may now restore the right of priority within 2 months of the filing date in Canada. However, if the right of priority is restored during the International Phase, it will not be deemed restored in Canada unless the international filing date is on or after October 30, 2019.
by senhaonline | May 19, 2023 | Sem categoria
Canadian Patent Law – Adjusting to New Practice.
Janice G. Kelland explains recent developments in Canadian Patent Law.
The 30th of October 2019 was a red-letter day for Canadian patent law. Amendments made to the Canadian Patent Act in 2014 and 2015, and the completely re-drafted Canadian Patent Rules registered in July 2019, came into force on that day, bringing substantial change to Canadian patent practice …
You can download the article by clicking HERE. Janice’s article has been published on pages 16-18 of The Patent Lawyer Annual 2020. The full publication can be accessed at this LINK.
by senhaonline | May 19, 2023 | Sem categoria
New Patent Rules came into force in Canada effective October 30, 2019. Their purpose by and large is to more closely harmonize Canadian practice with international norms. Existing government fees remain unchanged, but some new ones have been added. There will continue to be no excess claims fees. Many of the changes will have a delayed effect, but others will be more immediate. Existing deadlines are not affected. Here are some of the more notable changes for you to consider:
1) Some Deadlines are now shorter
Requests for examination will now be due 4 years after the Canadian or international filing date instead of the current 5 years.
Responses to Office Actions will now be due 4 months after the Action date rather than the current 6 months. A 2-month extension will be available upon payment of a $200.00 fee. If no extension is requested, or if requested but no response is filed by the extended deadline, the current 12-month reinstatement period remains available as of right upon payment of a $200.00 fee. It is expected that most applicants wanting more time will elect to use the reinstatement period following the initial 4-month response deadline.
The Final Fee will be due 4 months from the date of the Notice of Allowance instead of the current 6 months. If the Final Fee is not paid by the due date, the 12-month period to reinstate as of right remains available on payment of a $200.00 reinstatement fee, but reinstatement will no longer return the application to examination.
2) Some Deadlines are now stricter
Under previous practice, maintenance and examination fees could be late paid within a 12-month reinstatement period as of right on payment of an additional reinstatement fee.
If a maintenance fee for a patent application is not paid by the due date, CIPO will now issue a notice requiring payment of the maintenance fee and a late fee before the later of 2 months from the date of the notice or 6 months from the missed due date. Importantly however, the application will not be deemed abandoned until the notice issues and the 2-month late period lapses, even if that occurs after the 6-month period has lapsed. Once an application is deemed abandoned, the applicant will have 12 months to petition for reinstatement on a showing that the circumstances leading to abandonment were unavoidable and clearly documented. It is expected that most petitions will fail.
In the case of an issued patent, if a maintenance fee is not paid by the due date, CIPO will issue a notice requiring payment of the maintenance fee and a late fee before the later of 2 months from the date of the notice or 6 months from the due date. If the fees are not paid, the patent will be deemed expired as of the missed due date. The patent owner will have 18 months from the missed due date to petition for reversal of the expiry on a showing that the circumstances leading to expiry were unavoidable and clearly documented. It is expected that most petitions will fail.
If the examination fee is not paid by the due date, CIPO will issue a notice requiring payment of the examination fee and a late fee by 2 months from the date of the notice. If the fees are not paid within the 2 months, the application will be deemed abandoned and will enter a 12-month reinstatement period. Reinstatement will be available as of right within 6 months from the missed due date upon payment of an additional $200.00 reinstatement fee. After the 6 months, the applicant must also petition for reinstatement on a showing that the circumstances leading to abandonment were unavoidable and clearly documented. It is expected that most petitions will fail.
Third parties now have rights that will allow them to infringe patents and patent applications when certain deadlines relating to requests for examination and maintenance fees are missed.
It is now more important to meet deadlines relating to maintenance fees and requests for examination.
3) Filing dates will be easier to obtain
Filing dates can now be obtained on weekends and holidays by filing applications electronically.
Paris and non-convention applications can be filed in languages other than English or French provided a translation is filed within 2 months of a request from CIPO for a translation. This does not apply to national phase entries, which must still be filed in English or French.
Paris and nonconvention applications can be filed without a filing fee provided the fee and a late fee are paid within 3 months of a filing fee notice.
4) Applications must be withdrawn from Allowance for amendment
Applications must now be withdrawn from allowance by payment of a $400.00 fee within 4 months from the date of the Notice of Allowance for amendments other than corrections to very obvious errors.
5) Annuity services may now pay maintenance fees on pending applications.
Previously, only the appointed agent could pay maintenance fees on pending applications. Under the new rules, any person authorized by the Applicant will be able to pay application maintenance fees, including an annuity service.
However, CIPO will continue to send late payment notices only to the appointed agent in the event the fee is not timely paid. Accordingly, we urge caution with respect to the use of alternative fee payment arrangements in light of the stricter deadlines and possible consequences for missed payments discussed above.
6) Recordal of transfers of rights easier
If a request to record a transfer of rights with respect to an application or patent is made by the applicant or patentee currently on of record at the Canadian Patent Office, documentation is no longer needed to support the request. A recordal certificate will be issued for the transfer and any documentation filed along with the request will be put on file at the Canadian Patent Office. However, as was the case under the former law, requests to record transfers of rights made by a transferee (the new owner of the rights) will require providing acceptable evidence of the transfer, such as a signed, witnessed assignment.
7) Certified copies of priority documents now required
Certified copies of priority documents must now be provided for Canadian direct filings and national entries of PCT applications. Failure to provide the copy within the required time will result in withdrawal of the priority request. Fortunately, if the priority document is available in the WIPO Digital Access Service (DAS), the Canadian Patent Office will be able to access the document electronically on provision of the access code. As well, if the priority document was filed in the Canadian Patent Office or was provided during the international phase of the corresponding PCT application, no further copy is needed.
If you have any questions about how the new Rules might affect your current or future patent applications, please do not hesitate to contact us.
by senhaonline | May 19, 2023 | Sem categoria
We are pleased to confirm that on February 8, 2019, Bill Morneau, Minister of Finance, announced the appointment of Susan Beaubien as a Permanent Member of the Canadian International Trade Tribunal (CITT), for a 5 year term commencing March 4, 2019. The CITT is recognized in Canada and around the world as a centre of excellence in the fair and timely adjudication of trade law matters.
The appointment was made on February 5, 2019 by Order in Council.
The CITT is an independent quasi-judicial adjudicative body reporting to Parliament through the Minister of Finance.
It conducts injury inquiries into dumping and subsidy complaints; hears appeals of decisions of the Canada Border Services Agency and the Canada Revenue Agency; inquires into complaints by potential suppliers concerning procurement by the federal government covered under various trade agreements; conducts safeguard inquiries; and provides advice to the Government and/or to the Minister of Finance on economic, trade and tariff issues.
Susan will be retiring from private practice and leaving Moffat & Co., effective March 1, 2019. We wish her all the best in her new career.
