Canada is a contracting party to the Paris Convention for the Protection of Industrial Property, a treaty that allows an applicant for a patent to request what is called "convention priority." Requesting convention priority is typically referred to as claiming priority. When a priority claim is made the filing date of a patent application filed in one member country will be recognized by other member countries provided patent applications are filed in those other countries within one year of the filing date. It is also possible to request priority in a Canadian application based on an earlier filed Canadian application. For example, if you filed a patent application in Canada on January 2, 2017, you could file up to one year later in most countries (January 2, 2018), including Canada, and still be given the same rights as if you had filed the application on January 2, 2017 when you request priority.
In ratifying the Patent Law Treaty (PLT), Canada has already amended the Patent Act and is proposing certain amendments to the Patent Rules in respect to requesting and claiming priority. An explanation of some of the notable proposed amendments follows.
Time limit - Open to public inspection
Current state
A request for priority must be made before the expiry of the sixteen-month period after the date of filing of the earlier filed application.
Proposed new state
It is proposed that the time limit for requesting priority is the later of:
- sixteen months after the date of filing of the earlier filed application; and,
- four months after the filing date of the pending application.
A further limitation is that the priority request must be made before the date on which the application is open to public inspection. This limitation will only impact applications for which early publication is requested.
Corrections to information submitted in a priority request
Current state
Information contained in a priority request may be corrected by submitting a request to correct a clerical error under Section 8 of the Patent Act. In limited circumstances and within time limits the priority request containing incorrect information may be able to be withdrawn and the correct priority request be made.
Proposed new state
In amendments to the Patent Act (not yet in force) Section 8 has been repealed.New regulations are proposed which relate to correcting information in priority requests. These corrections are subject to specific deadlines, dependent upon the particular correction in information being requested. For more information on correcting errors in priority information please see the discussion paper on Corrections.
Submission of priority document
Current state
The examiner can requisition a copy of the priority document(s) when considered necessary, and this could be requisitioned any time during the examination of an application. Where a priority document is not provided in response to a requisition the application will be deemed to be abandoned.
Proposed new state
It is proposed to be mandatory for applicants to submit or make available copies of all priority documents on which a request for priority is based, and to do so within an established time limit. There is an exception in the case of Canadian applications forming the basis of a priority request which will, in effect, be considered to have been made available at the time of the request. Foreign priority documents may, at the option of the applicant, be made available by informing the office of the acceptable digital library where the priority document is available. The Patent Office will publish a list of acceptable digital libraries on our website.
Where a priority document is not submitted, nor made available to the office through a digital library, within the allotted time, the application will no longer become abandoned, but rather the priority request will be deemed to have been withdrawn. A remedy exists where the priority document was requested from a foreign patent office but is not yet available to the applicant. In such cases the applicant must inform CIPO of the date the request was made to the foreign patent office and submit the priority document when it becomes available. Priority documents submitted in respect of an international PCT application are not required to be resubmitted when the application enters national phase in Canada.
The proposed Patent Rules change the process for translating the content of a foreign language priority document. Notably, where an applicant has failed to respond to an examiner's request for a translation of the whole or part of a foreign language priority document, the application will no longer become abandoned, but rather the priority request will deemed to have been withdrawn.
Restoration of the right of priority
Restoration of the right of priority is not available in the current Patent system. Approved changes to the Patent Act (not yet in force) provide for the restoration of the priority right where a subsequent application is filed within two months after the expiration of the priority period, i.e. between months 12 and 14 from the filing date of the earlier filed application. In a request to restore the right of priority applicants must state the failure to file the application before the expiration of the priority period was unintentional.
A request for restoration of priority must be made no later than two months after the filing date of the pending application. Therefore the time limit for successfully requesting restoration of priority can be up to 16 months from the filing date of the earlier filed application.
There is no proposed fee for making a request for restoration of the right of priority.
The graphic below illustrates timelines for when a request for priority is possible and time limits for requesting the restoration of the right of priority.
Figure 1 - Text version
The figure contains a time-line illustrating both the current timeline for when a request for priority is possible and the proposed new timelines when a request for priority is possible. The time-line begins on the left at 0 months and extends to the right to an indefinite point in time. Noted on the time-line are important dates at 0, 12, 14 and 16 months. An arrow pointing to 0 months represents the filing date of a previously filed application, abbreviated PRI. A green arrow above the timeline illustrates the current state. The green arrow extends from 0 months to 12 months. At 12 months an indicator arrow notes the time limit for filing a pending application within which it is possible to request priority to the PRI. The time limit is 12 months after the filing date of the PRI. There is no restoration of the right of priority in the current state. A red arrow immediately following the green arrow and extending to the right indicates that priority based on a particular PRI would not be available if the pending application is filed more than 12 months after the PRI. A second green arrow above the time-line illustrates the proposed new state. The green arrow extends from 0 months to 12 months and is drawn solid. At 12 months an indicator arrow notes the time limit for filing a pending application within which it is possible to request priority to the PRI. The time limit is 12 months after the filing date of the PRI. A dashed green line immediately follows the green arrow and extends from 12 months to 16 months. An indicator arrow at 14 months indicates the time-limit for filing a pending application within which it is possible to request restoration of the right of priority to the PRI. An application filed more than 14 months after a particular PRI would not be able to request restoration of the right of priority based on that particular PRI. An indicator arrow at 16 months indicates that the applicant must request the restoration of priority before the end of 2 months after the filing date of the pending application. A red arrow immediately following the dashed green line and extending to the right indicates that priority based on a particular PRI would not be available if the request for restoration of the right of priority is not made before the end of 2 months after the filing date of the pending application.
For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.
References:
Bill C-43:
- Claim date – Section 28.1 of the Patent Act (not yet in force)
- Request for priority – Section 28.4 of the Patent Act (not yet in force)
Proposed patent rules:
- Requests for Priority – Sections 73-76
- Restoration of Priority – Sections 77 and 78