By Scott Foster
Canada is required under the Canada–United States–Mexico Agreement to provide a means to adjust the term of a patent when there are unreasonable delays in its issuance by the granting authority.
Patent Act amendments
In compliance with its obligations, on January 1, 2025, Canada’s Patent Act will be amended to, among other things, include:
- an additional term to compensate patent owners for unreasonable delays in the issuance of their patents;
- a mechanism for the reconsideration of additional term determinations by the Commissioner of Patents, and for bringing an action in the Federal Court against a patentee for an order to shorten the duration of an additional term; and
- fee requirements when applying for an additional term and for maintaining a patent during an additional term.
The amended Patent Act will require, subject to conditions, the Commissioner to grant an additional term for a patent if the patent was issued later than five years from a date to be defined in the Patent Rules (for divisional applications and national phase entry applications) and the filing date of the application (in any other case), and three years from the date of the request for examination, whichever is later.
The amended Patent Act will also require that, in determining the duration of an additional term, the Commissioner subtracts a number of days that is determined under the proposed Patent Rules.
The proposed amendments to the Patent Act received royal assent on in June 2023 and it is clear from the above that many key provisions will be found in the Patent Rules once they are amended.
Proposed amendments to the Patent Rules and other legislation
On May 18, 2024, Canada published the Regulations Amending the Patent Rules and Certain Regulations Made Under the Patent Act.
Under the proposed Regulations, only patent applications filed after December 1, 2020, will be eligible.
The additional term is calculated from the number of days the patent issued after the later of: (a) the fifth anniversary from the filing date; and (b) the third anniversary of the request for examination.
However, the additional term is decreased by delays attributable to the applicant. The days to be subtracted also include any days in periods that do not occur during the processing of, or the examination of, the patent application by CIPO and periods that are not directly attributable to CIPO. Recall, the objective is to compensate for unreasonable delays in patent issuance by the granting authority not by the applicant.
Examples of days to be subtracted include days when the patent applicant must take an action or pay a fee and the number of days in periods initiated by the patent applicant, such as requesting continued examination after certain events occur during patent examination. The Regulations confirm that if a day appears in more than one period, each calendar day in those periods is subtracted only once.
The Regulations prescribe a “determination process” the Commissioner must follow involving:
- an initial assessment of eligibility for an additional term;
- a preliminary determination of the duration of any additional term;
- a two-month observation period for receiving submissions from the patentee and interested third parties; and
- a determination of the duration of the additional term.
The Regulations also address the fees for applying for an additional term, applying for reconsideration of the additional term, and for maintaining applications and patents in effect from the 20th anniversary of the filing date. These include:
- fees for an application for an additional term of $2,500 as the standard fee and $1,000 for small entities; and
- maintenance fees for applications and patents, for the 20th and subsequent anniversaries of the filing date of the patent application, of $1,000 as the standard fee and $400 for small entities.
If an additional term is granted, the Commissioner will issue a certificate of additional term setting out the duration of the additional term along with other prescribed information.
The Patent Act clarifies that the term of a certificate of supplementary protection (CSP) runs concurrently with any additional term for the patent. CSPs provide an additional patent-like term of up to two years to compensate innovators for (some of) the time invested in research and obtaining regulatory drug approval in Canada. The amended Patent Act prescribes that the term of a CSP takes effect on the expiry of the 20th year from filing term regardless of whether any additional patent term is granted.
These proposed changes are not law yet and interested persons may make representations concerning the proposed Regulations within 45 days of May 18, 2024.
Regulations Amending the Patent Rules and Certain Regulations Made Under the Patent Act.