This document contains two sections. Section 1 relates to regulatory amendments related to the additional term resulting from patent office delays in the granting of patents. Section 2 relates to other possible amendments to the Patent Rules to improve the regulatory framework.
The deadline to participate in this consultation is .
Section 1: Regulations related to Additional Term
Background
The Canada-United States-Mexico Agreement (CUSMA) entered into force . Parties to CUSMA agreed to an updated, comprehensive chapter on Intellectual Property, including a requirement to provide a patent term adjustment to compensate patent owners for unreasonable delays in the processing of their patent applications. To implement this commitment, amendments were made to the Patent ActFootnote 1 to include a framework for providing additional term which received Royal Assent on and will come into force on or before .
In order to practically implement the amendments to the Patent Act, amendments to the Patent Rules detailing the framework for the administration of the changes must be made.
The Patent Act requires that the Commissioner shall grant an additional term for a patent if the patent was issued later than five years from the filing date of a patent application, or three years from the date of request for examination (whichever is later), provided that the application was filed on or after and that the patentee applies for the additional term and pays the associated fee within three months of the patent issue date. However, this does not account for days that may be subtracted when determining the duration of the additional term, which could result in no additional term being granted. The earliest date on which a patent could be theoretically eligible to receive an additional term would be .
Scope
The legislation has set out the framework for providing additional patent term including but not limited to eligibility for additional term, requirements for obtaining a determination of additional term, related fees, and the reconsideration process.
This consultation in respect of additional term focuses on the regulatory framework for providing additional term.
Current State of Patent Application Processing in Canada
More than 36,000 patent applications are typically filed every year in Canada. Nearly 80% of these applications enter Canada through the Patent Cooperation Treaty (PCT) international system and the remainder are directly filed in Canada. Canada has a deferred examination system that provides patent applicants up to 4 years to request examination of their patent applications. For this reason, the substantive review of an application by a patent examiner will not occur until a request for examination is received.
Historically, the patent process in Canada could be categorized into two phases: the application phase, which includes examination of the application and the patent phase, which is entered into if the patent application is granted and a patent is issued. Figure 1 contrasts the process of a patent application filed before having a particularly long application phase against the process for the same patent application filed on or after . A patent is valid for a 20 year term, calculated from the filing date of the patent application on the basis of which it is granted; however, for a patent application filed on or after there is a possibility that an additional term of protection could be granted to compensate for delays in the issuance of the patent.
Figure 1 - Text version
Figure 1 depicts the patent process in Canada, including: a) a timeline for a patent with a filing date before ; and b) a timeline for a patent with a filing date on or after . After the patent application is filed, the applicant must request examination of the application within four years. Upon receipt of the request for examination, the examination phase begins in the office, where the application is subject to scrutiny by an examiner to determine whether the application complies with the Patent Act & Rules. A patent application filed on or after may be entitled to receive additional patent term to compensate the patentee for delays in the issuance of the patent.
The duration of the application phase is greatly influenced by the patent applicant's decisions, such as the quality of the patent application and the amount of time taken to request examination, and to respond to notices from CIPO; however, CIPO's timeliness and quality standards also factor into application pendency. In fiscal year 2022/2023, application pendency from the request for examination date to the issuance of the patent was on average 32.3 months. This represents a significant improvement since fiscal year 2012/2013, when the average application pendency was 45.7 months. Over the past several years CIPO has made concentrated efforts to improve the timeliness of the examination process through both hiring and continuous improvement of our processes and IT infrastructure.
Regulatory Framework
The regulatory framework would be implemented in the Patent Rules. The Patent Rules would support the Patent Act to provide details on aspects such as what days are to be subtracted in the determination of additional term, how to make a request for additional term and what fee amounts are required to be paid.
Pendency of an Application and Issuance of a Patent
Subject to conditions, the Patent Act requires the Commissioner to grant an additional term for a patent if the patent was issued after a threshold date unless, after accounting for days to be subtracted, the net number of relevant days prior to issuance falls below the threshold outlined in the Act. The threshold date is the later of five years from an applicable day, and three years from the day on which a request for examination has been made.
In the case of a nationally-filed patent application, the applicable day is the filing date of the application in Canada. The regulations would prescribe the applicable day for PCT national phase applications and for divisional applications. The earliest point in time that CIPO could begin processing a PCT national phase application is the national phase entry date in Canada. This date would be the proposed applicable day for those applications. The earliest point in time that CIPO could begin processing a divisional application is the presentation date and therefore this date would be the proposed applicable day for those applications.
Applying for Additional Term
The Patent Act requires patentees to make an application for additional term in accordance with the regulations and to pay a prescribed fee within 3 months after the day on which the patent is issued. The information that must be submitted with an application, the details surrounding who can apply, and the amount of the fee will be prescribed in the Patent Rules.
It is contemplated that the patentee on record at the time of the application, or their assigned patent agent, would be the only ones authorized to make an application for additional term. Basic information such as the patent number and a clear expression that the communication relates to an application for additional term may be required. Additional information to be provided by the patentee may also include reasons or detailed calculations to support their request for additional term.
The amount of the fee required to submit an application for additional term would take into account the costs involved for CIPO to administer the required framework in the Patent Rules and to make the determination in relation to a particular request.
The Determination of Additional Term
Upon receiving an application for additional term, the Commissioner would first conduct a review of the prosecution history to determine if the patent was issued after the threshold date (i.e. the later of three years after the request for examination, or five years after the applicable day). The number of days between the threshold date and the date the patent is issued would be the starting point for the calculation of additional term. Then, a number of days determined in the regulations would be subtracted to arrive at the duration of additional term, if any. Subtracting the days specified in the regulations from the number of days between the threshold date and issue date may result in a zero or negative value, indicating that the patent is not entitled to receive additional term. The days to be subtracted may have occurred at any point during the application process.
Figure 2 illustrates a simple timeline for a potential prosecution history showing typical days that may be subtracted in the determination of additional term. In this example the threshold date is determined to be 5 years after the national phase entry date and the patent was issued after the threshold date by 1 year and 1 month. After accounting for days to be subtracted the result is that the patentee is not entitled to receive additional term, because the net balance is a zero or negative value.
Figure 2 - Text version
Figure 2 illustrates a patent prosecution timeline for an application that entered the national phase in Canada through the Patent Cooperation Treaty route. In the timeline the applicant requested examination one month after national phase entry. Two examination reports were sent during the prosecution history. The applicant responded to the first examination report four months after the date of that report. The applicant did not respond to the second examination report before the deadline to respo9nd and the application was abandoned. The response to the second report was received with the request for reinstatement, 16 months after the date of the second report. A notice of allowance was subsequently sent to the applicant and they paid the final fee 3 months after the date of the notice of allowance. The patent was issued 6 years and 1 month after the national phase entry date.
The figure describes how the initial review indicates the patentee may be eligible for additional term since the patent was granted after the threshold date that is 5 years after the national phase entry date. After accounting for days to be subtracted it is determined that no additional term is to be granted.
In the determination of which days are to be subtracted, the Commissioner may be authorized to consider periods of time not explicitly recited in the Patent Rules and may make determinations on the percentage of days in a particular period that are to be subtracted. It is proposed that overlapping days, i.e. those that occur in more than one period of time, would be counted only once.
Some examples of actions and periods of time that may lead to days being subtracted in the determination of additional term include:
- Where the threshold date is based on the applicable date, the number of days taken to request examination of the application and to pay the prescribed fee;
- The number of days taken to meet certain formality requirements in respect of the application;
- The number of days taken to respond to notices from CIPO, such as examination reports;
- The number of days during which the application is deemed abandoned;
- The number of days utilized during authorized extensions of time;
- Under certain circumstances, submitting voluntary amendments or supplementary responses may lead to a number of days to be subtracted;
- If required fees are not paid on time, the number of days taken to pay the fee;
- The number of days taken to respond to a notice of allowance or conditional notice of allowance;
- The number of days required to complete examination following a request for continued examination and for applications filed prior to , following a 3rd examiner report; and,
- Periods of time beyond the control of CIPO, such as in force majeure situations.
A table containing more details on proposed periods of time that may lead to subtracted days can be found in the Annex.
Processing of Applications for Additional Term
The macro-level process for the determination of additional term and applications for reconsideration of additional term is defined in the Patent Act. The details of the administrative processing of applications for additional term have been left to the Patent Rules.
Figure 3 presents an example of a process for the determination of additional term. During the determination of additional term, in order to promote efficient delivery and effective use of Office resources, it is envisaged that an initial review step may be conducted prior to embarking on a more comprehensive determination of additional term. If certain conditions to receive additional term are not met, the determination process would terminate and no further analysis would be conducted. For example only in cases where the patent was granted after the threshold date would the Office proceed to conduct a detailed analysis to determine if additional term should be granted.
To ensure accuracy and transparency in the determination of additional term, it is envisaged that the office may make public an initial determination of additional term to be followed by an observation period, where any person, including the patentee, may submit observations on the initial determination. The Commissioner would consider those observations before making the required determination.
Figure 3 - Text version
Figure 3 illustrates an example of a potential process of determining additional term. Once an additional term request and the prescribed fee are received, the patentee and public are notified of the request and an initial review begins. The initial review seeks to answer the following questions: is the issue date later than the filing date plus five years, or the request for examination date plus three years; is the filing date after ; and was the request made and the prescribed fee paid within the three months after the patent issued? If the answer to any of these questions is no, then no additional term may be granted and the patentee and public are notified of such. If the answer to all of these questions is yes, then an additional term determination process begins, which process involves a) an initial determination; b) a two-month observations period; and c) a determination of additional term. During the initial determination, as per the Patent Act and Rules the Office subtracts appropriate days from the time exceeding the threshold period, where the threshold period is five years for patents in cases where the applicable day plus five years occurred later than the request for examination date plus three years, and three years if otherwise. Once the initial determination has been developed it is shared with the public and patentee, and the two-month observation period commences. During the observation period any person may submit observations relevant to the initial determination, which observations are considered by the Commissioner in developing the determination of additional term. If the determination result is a zero or negative number of days, then no additional term is granted and the patentee and public are notified accordingly. In any other case, in other words if the determination result is a positive number of days, then it is deemed that the patentee is entitled to additional term, the public and patentee are notified of the additional term and a certificate of additional term reflecting the duration of the additional term is sent to the patentee.
Public Notice and Certificates of Additional Term
The regulation may provide information relating to the provision of information to the public about requests for additional term including the granting of certificates of additional term. For example, the Commissioner may be required to inform the public upon receipt of a request for additional term. In the case of a request for reconsideration, the Commissioner may be required to provide notice to the patentee and any third party requesting a reconsideration of additional term. Notice to the public may occur through the Canadian Patent Database and a dedicated webpage similar to that used to provide information in relation to Certificates of Supplementary ProtectionFootnote 2.
A Certificate of Additional Term will be sent to the patentee in the case where any additional term is granted. Should the Commissioner decide that the patentee is not entitled to additional term, the Commissioner will notify the patentee of their decision. The information contained in a certificate of additional term may include the patent number, the filing date of the application the name of the patentee, and the duration of the additional term.
Applications for Reconsideration of Additional Term
The regulations would specify details in relation to applications for reconsideration of additional term. A reconsideration of the determination of additional term may result in no change to the previous determination of additional term or the shortening of the duration of the additional term granted. If the reconsideration is initiated by a person other than the Commissioner, a request and fee would be required as per the requirements in the Patent Act. The regulations would outline information that must be submitted with a request for reconsideration and may include the identification of the patent, a detailed explanation of any alleged error(s) in the previous determination or previous reconsideration of additional term.
It is proposed that the process for reconsidering the additional term granted to a patentee would follow a similar approach to the process contemplated for the determination of additional term. The public and patentee would be provided time to provide observations on CIPO's initial views before a final decision is made.
If the Commissioner determines that the additional term should be shortened, this would be reflected in an amended Certificate of Additional Term.
Maintenance Fees
In accordance with the legislative amendments, proposed amendments to the Patent Rules will include maintenance fees in order to maintain an application for a patent or a patent in good standing from the 20th and all subsequent anniversaries of the filing date of the application.
Client service standards
CIPO's service standards (Client Service Standards of the Canadian Intellectual Property Office) reflect a commitment to a level of service for clients and are required to be set in accordance with the Service Fees Act. Service standards relate to services for which clients must pay a fee and reinforce government accountability and reliability. CIPO endeavors to establish service standards that meet client expectations while ensuring a sufficient interval for CIPO to perform its responsibilities.
In cases where a service standard is not met, a portion of the fee will be remitted to the client in accordance with the Service Fees Act, the Treasury Board Directive on Charging and Special Financial Authorities, and the CIPO remission policy.
Questions for Discussion
Provided below are some sample questions to prompt feedback on elements of the additional term framework in Canada. ISED is interested in receiving your views, including on issues that may not have been captured in this document.
- What are your views on the proposed regulatory framework and do you believe there is anything missing?
- Do you have thoughts on which periods should result in days to be subtracted in the determination of additional term?
- Do you have views on the requirements for submitting a request for additional term or a reconsideration?
- What information should be contained in certificates of additional term?
- What information do you feel is important for CIPO to convey to the public in relation to determinations of additional term?
Section 2: Miscellaneous Amendments to the Patent Rules
In an effort to continually improve CIPO's operations and the administration of the patent system, ISED is studying various issues that may lead to proposed amendments to the Patent Rules. Of particular interest are ideas to reduce unnecessary burden on applicants and patentees and to further streamline the patent examination process. Your feedback on the issues below and your ideas for regulatory amendments that would further improve the patent system in Canada are welcomed.
Deferred Examination
Currently, there is a four-year deadline to request examination of a patent application starting from the filing date of the patent. For applications filed before the deadline was five years. Extensions of time are not available for this deadline. History has shown that most patent applicants request examination in the final months leading up to the deadline, which indicates an interest in delaying the start of examination. Research has shown that applications with a later request for examination tend to achieve a state of compliance sooner. ISED is studying the issue and exploring the possibility to permit applicants to request an extension of time to the deferred examination period. Such a change could help to conserve resources for both patent applicants and CIPO, make it easier for applicants to align rights in Canada with those that might be obtained in other jurisdictions, and could increase the possibility of leveraging the earlier search and examination work of other offices.
Some factors under consideration are how likely are applicants to request an extension of time of the deferred examination period and for what reasons, how much time extension should be permitted and what other criteria should be required when applying for the extension. For example, should there be a statement of intention to align the Canadian application with a corresponding application in a foreign jurisdiction if it is eventually approved for allowance or granted? Balancing measures may also be contemplated to reduce any marketplace uncertainty that could be generated by the increased delay. A new process allowing third parties to protest a delay generated by extending the deferred examination may be created. A protest being filed may lead to the Commissioner requiring the applicant to request examination under s. 35(5) of the Patent Act.
Suspension of Examination
In instances where a maintenance fee has not been paid on or before the anniversary of the filing date of the patent application, the application enters a late payment period of up to 6 months or more before the application is deemed abandoned. In accordance with current practice, to conserve office resources by not unnecessarily examining applications in the late period, a contemplated amendment to the Patent Rules would clarify that examination will be suspended until such time the maintenance fee and the late fee are paid. The Patent Rules currently specify that the examination of a patent application is suspended during any time the application is deemed to be abandoned and the existing provision would be amended to include a reference to the late period for payment of maintenance fees.
Priority requests and request for early open to public inspection on same day
Section 73 of the Patent Rules requires a request for priority to be submitted before the day on which the applicant submits their approval for the application to be open to public inspection. This requirement is to ensure the cover page of the patent application contains information related to priority requests. It is recognized that in certain scenarios applicants may desire to take multiple actions such as these on the same day. In the interest of efficiency, a change is contemplated which would permit applicants to submit a request for priority on the same day that they submit their approval for the application to be opened to public inspection before the expiry of the confidentiality period. With such a change, CIPO would still be able to ensure that the cover page contained the relevant information related to priority requests.
Questions for Discussion – Section 2
- What are your thoughts about the possible regulatory amendments discussed?
- What other changes might you propose to improve the existing regulatory framework including streamlining examination and lightening administrative burdens?
- How often do you expect applicants would request an extension of time to the deferred examination period and under which circumstances? What would be the positive and negative impacts on you if the Government permitted extensions of time to the deferred examination period?
ANNEX: Examples of periods of time containing days that may be subtracted
- Period of time to respond to notices that must be responded to:
- If the Commissioner or the examiner sends a notice requiring the applicant to take an action within a prescribed period, (e.g. respond to an office action) the period of time it takes for the applicant to respond to the notice may be deducted.
- Periods of time to respond to notices where a reply is not necessarily required: Time may be deducted pending a reply from the applicant, or if a reply is not received, the end of the period to reply specified in the notice. For example:
- Communications received from an unauthorized person (e.g. someone who is not the agent or the common representative); and,
- Time to respond to a notice from the Patent Appeal Board related to proceeding with a Commissioner review or in relation to an oral hearing.
- Periods of time to take certain actions that are expected to be taken without CIPO notifying the applicant: The time it takes for the applicant to the action may be deducted. For example:
- The time to request examination;
- The time to pay required fees after their due date;
- The time to make a request for priority after the filing date;
- The time to comply with priority document requirements;
- Time to submit a translation of the patent application when it's submitted in a language other than English and French; and,
- Time to submit a compliant sequence listing after the filing date.
- Periods of time based on actions taken by the applicant: Days in relation to certain actions taken by the applicant may be deducted. For example:
- Time to act when an extension of time has been granted;
- Submitting a voluntary amendment during certain periods;
- Allowing an application to become abandoned;
- Time to make a voluntary amendment after examiner interview where the amendment was agreed to;
- Time between filing date and adding subject matter to application;
- When filing by reference, the time to provide a copy of the application;
- All time after an impermissible amendment after a conditional notice of allowance;
- All time after a request for continued examination;
- All time after a 3rd examination report for applications filed before ;
- An amendment is made to bring the application into compliance with Act and Rules after an examiner rejection.
- Other periods of time that may be deducted: Days may be deducted in relation to:
- Delays in the mail and correspondence lost in the mail;
- Normal operations at the Patent Office being disrupted;
- Appeals to the courts after refusal of a patent application; and,
- Judicial review of a decision taken by the Commissioner.