Patent rules and regulations amended to align with CUSMA
The proposed amendments to the Canadian Patent Rules attempt to align them with the Canada–United States–Mexico Agreement. The revisions primarily focus on implementing patent term adjustments to create remedies for unreasonable delays in patent issuance. These revisions, scheduled for enactment on January 1, 2025, are specifically tailored to applications filed after December 1, 2020, as part of the broader compliance with CUSMA.
The amendments allow for additional patent terms by specifying factors, including eligibility criteria, application processes, fee structures, and reconsideration mechanisms. Specifics reveal that term extensions are available if the issue date exceeds five years from the filing/national entry date or three years from the requested examination date, whichever is later. However, delays caused by factors beyond the control of the Canadian Intellectual Property Office, such as inefficiencies caused by the patent applicant, may also weighed against delays caused by CIPO during the extension grant determination process.
The proposed fee for requesting an additional term is $2500 as a standard fee ($1000 for small entities) plus any additional annual maintenance fees. In return, CIPO has proposed specific standards for the fees associated with the amendments, aiming to provide timely and responsive service delivery. These standards, conforming to the Service Fees Act, include providing preliminary determinations within specified timeframes and updating the Canadian Patent Database promptly upon receipt of maintenance fees. The update to the service standards now also contains a remedy in the form of potential charge refunds if CIPO does not meet the new standards they proposed for themselves.
Furthermore, alongside the patent term adjustments, the amendments introduce various miscellaneous amendments designed to improve the patent regulatory framework. These include granting the Patent Commissioner discretionary authority to extend the time to pay the request for examination fees, expanding permitted modes of electronic communication, and implementing provisions for priority requests and examination suspension when patentees do not pay maintenance fees on time.
The public has until July 2, 2024, to comment on the proposed amendments.
The proposed amendment can be read and commented on here.
