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Canada: Consultation on proposed Patent Rules amendments

The government of Canada continues to modernise Canada's IP framework to comply with a number of international IP treaties, including the Patent Law Treaty (PLT). Previous amendments to the Canadian Patent Act have been made, but are not yet in force, to comply with the requirements of the PLT. The government of Canada is now in the process of amending the accompanying Canadian Patent Rules, which will guide how the Act is applied. A public consultation on proposed amendments to the Rules runs from August 1 to September 8 2017. In view of the necessary steps in the regulatory approval process in Canada, the amended Rules could be in force by early 2019.

A number of significant elements of the amended legislative scheme reflected in the proposed Rules are outlined below.

It is not possible to obtain a filing date on a Saturday, Sunday, holiday or other day when the Canadian Patent Office is closed for business. Under the amended regime, it will be possible to secure a filing date on a day when the Patent Office is closed for business if the application is filed by electronic means.

At present, a PCT application must enter the Canadian national phase within 42 months from the priority date, although an additional late fee is payable if the applicant enters the national phase more than 30 months from the priority date. Under the proposed Rules, the late entry option is removed as a matter of right.

At present, only the Canadian patent agent may pay a maintenance fee on a pending application. This will change such that anyone, such as an annuity service, can pay maintenance fees on pending applications, as is now the case for issued patents.

There is a focus in the proposed amendments on reducing pendency of patent applications with shortened prosecution deadlines. The term for requesting examination will be reduced from five years to three years from the filing date. Examiner's reports will have a standard term for response of four months rather than six months. The final fee will be due four months rather than six months from the notice of allowance. In some circumstances, deadlines may be extended upon payment of a fee.

Many of the proposed amendments to the Rules are directed to simplifying formal requirements and minimising the risk of loss of rights. Canadian patent applicants will likely notice few substantive changes to routine prosecution, although the pace should pick up somewhat with the proposed shortened time limits. Notably, with the shortened term for PCT national phase entry, applicants will need to plan ahead for Canadian national phase entry no later than 30 months from the priority date.

Tamara O’Connell

Smart & Biggar/ Fetherstonhaugh55 Metcalfe Street Suite 900PO Box 2999 Station DOttawa ON  K1P 5Y6Tel: 613 232 2486Fax: 613 232 8440

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