The Canadian Bar Association
Intellectual Property

Patent abandonment and reinstatement process tightened up

The Canadian Intellectual Property Office’s (CIPO) proposed update to the Patent Rules represents a significant tightening up of the country’s abandonment and reinstatement regime, says Toronto patent lawyer Aaron Edgar.

The Patent Act amendments and proposed new Patent Rules are intended to bring Canada into compliance with the international Patent Law Treaty, and represent the largest overhaul to the Patent Rules in decades, Edgar, a partner with Edgar Chana Law tells AdvocateDaily.com.  

He describes Canada’s current abandonment and reinstatement process, as “really lax in comparison to other jurisdictions.”

Under the existing rules, any missed deadline automatically renders an application abandoned by power of law without notice. However, it remains eligible for reinstatement for 12 months after that date, as long as a reinstatement fee is paid and the proper action is taken.

“There are very few countries that allow applicants to reinstate an abandoned patent application by simply paying an additional fee, so these changes will have a big change on Canadian patent practice but create a similar regime to most other jurisdictions,” Edgar says.

Under the current law, an applicant can enter the national phase of their international Patent Cooperation Treaty application up to 12 months past the typical 30-month filing deadline by paying a late entry fee.

“Our late entry fee is kind of unique around the world, and many foreign patent agents may be caught off-guard by this change," says Edgar.

The revised rules provide a host of new deadlines for steps in the patent application process, with abandonment only occurring after the patent office issues a notice to applicants informing them of the abandonment date.

The more comprehensive procedure for deeming an application abandoned is matched on the reinstatement side, where prospective patent holders must show that the missed deadline occurred “in spite of the due care required by the circumstances” before their application can be restored.

“This new ‘due care’ requirement really changes the way reinstatement works. It’s a much more strict approach, and it adds uncertainty about whether an application can be reinstated,” Edgar says.

"Additional requirements for reinstatement of an abandoned application will further help ensure that the extended periods of uncertainty (the additional time provided by the notice and the time provided to remedy the failure) remain a safety net only used where necessary, rather than a default approach that may otherwise be used strategically in the prosecution of an application for a patent,” CIPO explained in its proposal.

In its submission to CIPO, the Intellectual Property Institute of Canada (IPIC), acknowledged the importance of clearing deadwood from the patent application process, but worried that the “significantly more onerous” due care requirement “adds uncertainty and subjectivity to the reinstatement process.”

“In addition to the new burden on Office resources, a finding by the Commissioner that an applicant or patentee did miss the due date despite having taken due care is subject to reversal by the Federal Court,” the submission adds.

Other major changes proposed in CIPO’s updated rules include:

  • New third-party rights excluding individuals who act in good faith from infringement proceedings when a patent is temporarily abandoned
  • New time limits for correction of errors in patent applications
  • The time limit for requesting examination cut from five years to three years

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