Amendments to the examination process and to when applications may be amended are being proposed to streamline patent prosecution and to allow for more efficiency and certainty in the market place with regards to patents. Within the context of the examination process important amendments are proposed to various time limits, the examination process and when amendments to applications can be made. An explanation of some of the notable proposed changes to the examination process and to when amendments to applications can be made follows.
Time limit for requesting examination
The time limit for requesting examination is currently 5 years after the filing date of the application. Currently, where examination has not been requested before the expiry of the five year time limit, the application is abandoned and a courtesy letter is sent notifying the applicant of such. Applicants have 12 months from the date of abandonment to request examination, pay the prescribed fee and to reinstate the application.
Proposed new state
The time limit for requesting examination is being shortened from 5 years to 4 years after the filing date of the application. Where examination has not been requested before the expiry of this new time limit, a notice will be sent to the applicant informing them of the non-compliance and requiring compliance within 2 months from the date of the notice. Where this notice is sent, an additional late fee of $150 will be required. Failure to comply with the notice will result in the deemed abandonment of the application.
The reduction in the time-limit to request examination reduces overall application pendency before a decision is rendered on the patentability of an invention thus reducing the period of uncertainty for third parties.
Time limit to respond
The time limit to respond to a notice of allowance and the time limit to respond to an examiner's report are currently 6 months. Shorter time periods for responding to examiner reports are established for applications that are undergoing certain forms of accelerated examination. For those applications undergoing certain forms of accelerated examination, it is possible to request an extension of time to reply up to 6 months, subject to the Commissioner's discretion.
Proposed new state
It is proposed to reduce the time limits to respond to a notice of allowance and the time limit to respond to an examiner's report from 6 months to 4 months. The 4 month time-limit would apply to all applications irrespective of if they are undergoing accelerated examination. For all applications it would be possible to request an extension of time to reply from 4 months to 6 months if the Commissioner considers that the circumstances justify the extension..
A uniform time limit to respond to examiner's reports will reduce the administrative burden on applicants to keep track of due-dates. The reduction in the time-limit to respond to a notice of allowance or an examiner's report reduces overall application pendency before a decision is rendered on the patentability of an invention thus reducing the period of uncertainty for third parties.
Amending applications after a notice of allowance
There are restrictions on the types of amendments to an application which are permitted after a notice of allowance is sent to the applicant. An amendment will be accepted after a notice of allowance is sent only if a prescribed fee of $400 is paid and if the amendment would not require a further search by the examiner nor make the application not comply with the Patent Act or Rules.
Where the applicant desires to make amendments which require a further search by the examiner or which would make the application not comply with the Patent Act or Rules they would need to go through a process of not paying the final fee resulting in the application being abandoned and then subsequently reinstating the application to bring it back into examination before the patent examiner.
Amendments to correct obvious clerical errors can be made free of charge after the notice of allowance.
Proposed new state
The proposed Patent Rules streamline the process for amendments after allowance. It is proposed to afford applicants the opportunity to make a request that the notice of allowance be deemed never to have been sent, after which amendments to the application will be possible. Upon payment of a fee of $400 and the filing of the aforementioned request, the application will be subject to further examination and amendments will be possible. Applicants will no longer need to resort to the abandonment and reinstatement process to make certain desired amendments.
The correction of obvious errors in the specification or drawings can be made free of charge after the notice of allowance. For more information on correcting errors in applications and patents please see the Consultation Document titled "Corrections".
Amending an application before translating the application into english or french
The Patent Rules do not currently allow applications to be filed in a language other than English or French. Therefore, there are currently no restrictions on amendments in this regard.
Proposed new state:
If an application is filed in a language other than English or French the applicant will be required to provide a translation of the application into English or French before amendments to the application will be permitted.
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.
- Examination - Section 35 of the Patent Act (not yet in force)
Proposed Patent Rules:
- Requests for Examination – Sections 79-83
- Documents not in English or French - Section 15
- Examination - Sections 84-87
- Amendments to Specification and Drawings – Sections 99-103
- Extension of time - Section 3(1)-(2)
- Abandonment and Reinstatement – Section 132(1)-(2)