Consultation document – Transitional provisions

The Patent Act and Rules are undergoing changes in order to ensure compliance with the Patent Law Treaty (PLT) and in order to implement other desired revisions. When new laws and rules come into force it may not be desirable to apply them to applications and patents that are already in the system. Doing so could cause confusion, undue hardship, and administrative burdens for the Office and applicants to ensure these applications and patents comply with the new laws and rules. To ensure a smooth and logical transition from an earlier Patent Act and Rules to a new Patent Act and Rules, transitional provisions are included in the Patent Act and Rules. Where it is not desired to apply particular provisions in the new Patent Act and Rules to specific applications or patents, transitional provisions are used to inform that those particular provisions do not apply and to provide the laws and rules that will apply. In this way transitional provisions may serve to extend the application of provisions in a previous Patent Act and Rules where it makes sense to do so.

A simplistic example is where new Patent Rules contain formatting requirements for an application for patent that differ from the formatting requirements in the earlier Patent Rules. The new Patent Rules could specify, for example, a different font size, page margin or page numbering convention, than was specified in the earlier Patent Rules. Before the coming into force of the new Patent Rules, thousands of applications would have been filed according to the formatting requirements of the earlier Patent Rules. Without a transitional provision that specifies the formatting requirement in the earlier Patent Rules will apply to applications filed before the coming into force of the new Patent Rules, these applications would not comply with the new Patent Rules. Without a transitional provision the undesirable result would be that applicants would be required to submit amendments to reformat their applications so that they are in compliance.

On or after the coming into force date of the new Patent Act and Rules, for applications and patents filed before the coming into force date, in order to determine whether a particular provision in the new Patent Act or Rules apply, one needs to refer to the transitional provisions.

The transitional provisions will be organized into 6 divisions as follows:

  • Division 1: Rules that apply to interpretation
  • Division 2: Rules that apply to Category 1 patent applications- those applications filed before .
  • Division 3: Rules that apply to Category 2 patent applications- those applications filed on or after but before .
  • Division 4: Rules that apply to Category 3 patent applications- those applications filed on or after but before the coming into force date of the new Rules.
  • Division 5: Rules that apply to certain patents- mostly patents granted on the basis of Category 1 and Category 2 patent applications.
  • Division 6: Rules that apply in all cases
  • Table 1 provides some examples of proposed transitional provisions for the Patent Rules for Category 3 patent applications.
Table 1: Transitional provisions for the Patent Rules
Pre-CIF action or event Treatment under new Patent Rules
An examination report is sent before CIF.
  • Deadline to respond, as specified in report, remains unchanged.
A notice of allowance is sent before CIF.
  • Deadline to pay finale fee, as specified in notice, remains unchanged.
  • Former Rule 32 applies to amendments after allowance.
Returning application to examination after a notice of allowance is sent.
  • Former process applies: abandon application for non-payment of final fee and reinstate.
Request for examination

Regular applications

5 years after the filing date, not 4. Divisional application The later of:

  • 5 years after the filing date, not 4.
  • 6 months after presentation date if before CIF.
  • 3 months after presentation date if on or after CIF.
Entry into the national phase after 30 months from the international filing date. No requirement for:
  • request that the right of the applicant be reinstated, and
  • statement that the failure to enter on time was unintentional.
No filing date in CIF date On CIF, the application is deemed never to have been filed. New Section 28 of the Act does not apply.
Application is abandoned before CIF
  • Section 73 of the Act, as it reads before CIF applies
  • Former Rule 98 applies
Application is abandoned on or after CIF on the basis of failure to comply with a requisition or notice sent before CIF.
  • Section 73 of the Act, as it reads before CIF applies
  • Former Rule 98 applies
Application fee not paid New notice requirement in 27(7) of the Act does not apply.
Reference filing New section 27.01 of the Act does not apply.
Addition to specification or addition of drawings New section 28.01 of the Act does not apply.
Request for priority
  • New Rule 74 requirements do not apply if request made before CIF.
  • Examiner may requisition a copy of the priority document if needed.
Withdrawing request for priority without affecting the lay-open to public inspection date Deadline is 16 months after the filing date or priority date but if we can stop technical preparations to lay open, we will.
Withdrawing an application without having it lay-open to public inspection Deadline is 16 months after the filing date or priority date but if we can stop technical preparation to lay open, we will.
Appointments of patent agents and associate patent agents Will be deemed to have been made in accordance with the new Rules.
Required agent representation for Reissue/Disclaimer/Re-Examination Will not apply to procedures commenced before CIF.
Common representative (CR) If there is an agent appointed, there will be no default CR at CIF.
Otherwise- default assigned as per Rules.
Small Entity Declaration submitted before CIF Will be deemed to be in accordance with the new Rules.
Requirements related to inventors and entitlement. Requirements are based in when the application was filed and consistent with Rules that existed at that time.
New requirements for divisional applications Will not apply to divisional applications filed before CIF.
Restoration of the right of priority New section 28.4(6) of the Act does not apply.
Restoration of the right of priority in the international phase If restored internationally before CIF, the restoration does not have effect in Canada.
Third Party Rights (S 55.11 ACT)
  • Defense against infringement.
  • Does not apply to any period of abandonment that occurs in the basis of a failure to act:
    1. Before CIF; and
    2. After CIF in respect of a requisition or notice pre-CIF.
Final fee – excess page fees for sequence listings If a notice of allowance is sent before CIF, the calculation of excess page fees includes pages of sequence listings.
Otherwise, sequence listings are exempted.

References:

Bill C-43:

  • Examination- Section 35 of the Patent Act (not yet in force)
  • Abandonment and Reinstatement- Section 73 of the Patent Act (not yet in force)

Bill C-59:

  • Abandonment and Reinstatement- Section 73 of the Patent Act (not yet in force)

Proposed Patent Rules:

  • Requests for Examination – Sections 79-83
  • Abandonment and Reinstatement – Sections 132-136
  • Schedule II – Tariff
  • Transitional provisions – Sections 165-234
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