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July23

Canadian Patent Blog

The new Patent Rules were recently published and the long awaited amendments to the Canadian Patent Act are scheduled to come into force on October 30, 2019.  These changes to the Patent Rules and Patent Act will substantially alter Canadian practice.

A few of these changes include but are not limited to:

  • For new filings, an English or French translation is no longer needed to obtain a filing date; however, the translation must be provided within two months
  • For PCT filings entering national phase after 30 months, a reinstatement fee will need to be paid and a statement will need to be provided stating that failure to meet the 30 month deadline was unintentional
  • It will be possible to gain a filing date on days where the Canadian Intellectual Property Office is closed (weekends, holidays, etc…)
  • To obtain a filing date, the applicant can refer to a previously filed application rather than submitting the specification; however, a copy of the previously filed application must be submitted within two months
  • A certified copy of the priority document will now be required on all convention filings and PCT filings where in the rare instance a certified copy of the priority document is not filed.
  • Priority may be restored within two months of the Canadian filing date on the basis that it was not claimed unintentionally
  • Missing parts of the specification and/or drawings may be added after the filing date from the priority application
  • Anyone will be able to pay the maintenance fees on pending applications
  • The deadline for requesting examination will be four years from the filing date
  • Responses to Office Actions will be due four months from the letter date and may be extended an additional two months
  • Final fees will be due four months from the Notice of Allowance date and this deadline is not extendable
  • After Allowance, to re-open prosecution and add new claims, the application must be withdrawn from allowance before the fee payment due date
  • Once the Allowance fee is paid, the option to refund the final fee payment and stop the application from proceeding to grant is no longer available
  • Reinstatement of an allowed application which went abandoned for failure to pay the final fee, may be amended to only correct obvious errors, the amendments are to be requested at the time the reinstatement is requested
  • Transfers between parties is simplified – a transfer will be recorded at the request of the applicant or patentee and a transfer at the request of the transferee requires filing of evidence to support the transfer (as previously required)
  • Third party rights are provided for in instances where more than six months passes after a missed maintenance fee payment due date or an examination fee payment due date
  • Missing prosecution deadlines to respond to Requisitions (Office Actions) and to pay Notice of Allowance fees do not incur Third Party rights
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