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Canadian Patent Term Extension: A First Overview

The patent landscape in Canada is expected to undergo significant changes in the near future with the introduction of a new patent term extension provision. The new provision, which is set to come into effect on January 1, 2025 or by order in council, will grant additional term for a patent if certain criteria are met.

As per the provisions of the new patent term extension, the Commissioner of Patents will grant an additional term for a patent if the patent was issued after the later of the fifth anniversary of the applicable day (which may depend on how the application is filed) and the third anniversary of the first day on which a request for examination was made.

For the patent to be eligible for the additional term, the filing date for the patent application must be on or after December 1, 2020, and the patentee must apply for the additional term and pay the prescribed fee within three months of the patent’s issuance. The duration of the additional term will be determined by the Commissioner and will begin on the expiry of the term referred to in section 44 (20 years from the date of filing), as long as the patent remains valid. To maintain the rights granted by the patent during the additional term, the patentee will be paying fees.

The Commissioner may reconsider the duration of the additional term, either on its own initiative or on application by any person. The Commissioner may also shorten the duration of the additional term if they find it to be longer than authorized. A person may also bring an action in the Federal Court to shorten the duration of the additional term.

It is important to note that the new patent term extension provisions are expected to be accompanied by regulations that will provide more detail on how the provisions will be implemented.

In conclusion, the introduction of the patent term extension provisions is expected to bring significant changes to the patent landscape in Canada and will provide patentees with the opportunity to extend the term of their patent. The regulations accompanying the provisions will provide more detail on the requirements and processes involved in securing the additional term.

For more information see Bill C-47.

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