Barristers and Solicitors
Patent and Trademark Agents

Patent Act Amendments

On December 16, 2014 amendments to the Canadian Patent Act  received royal assent. These amendments were included in the omnibus Bill-43 known as the Economic Action Plan 2014 Act, No. 2. The amendments are not yet in force. They are expected to be implemented in late 2015 or early 2016, likely to coincide with recent amendments to the Trademarks Act.

The upcoming amendments to the Patent Act contain measures expected to increase the flexibility of the patent process and provide relief from some of the harsh consequences of making minor omissions and errors in the patent application process.

Additions and Incorporation by Reference

An applicant will be able to incorporate by reference into an application some or all of the specification or drawings contained in previous patent applications filed within the preceding six months instead of actually amending the application to physically add the content. Additionally, an applicant will be permitted to amend an application up to six months after its original filing date to add subject matter that was contained in an earlier application from which it claimed priority.

Transfers

The amendments will provide the Commissioner of Patents with the ability to refuse to record a patent transfer in the event that another recordation against title has already occurred, even if the date of the transfer is before the other recordation. This protects a subsequent purchaser against instances where a "secret assignment" is being alledged that is not recorded against title to the patent. The Commissioner of Patents will also be able to remove the recording of a transfer of an application or patent upon receipt of satisfactory evidence that the transfer should not have been recorded.

Restoration of Priority

An applicant has 12 months from the date of its first patent application filed anywhere to file corresponding applications in other countries. In practice, an applicant files a claim for priority along with the filing of a subsequent application within the 12 month period; but if the applicant misses filing within the 12 month period, the priority is lost. The amendments to the Patent Act will create a restoration of priority. The filing date of a pending application will be deemed to be within 12 month after the filing date of the priority application if the actual filing date is more than 12 months and less than 14 months after that priority. Essentially this creates a 2 month grace period to make a priority claim if the applicant has unintentionally missed the application filing deadline. The restoration of priority is not available in situations where the delay was intentional. These amendments to the Patent Act will bring Canadian practice into line with the right of restoration of priority provided in Regulations under the Patent Cooperation Treaty (PCT).

Notice before Abandonment

If an applicant fails to pay the patent application fee, maintenance fees, or examination fees, the Commissioner of Patents will be required to send the applicant a notice of non-payment before the application is deemed abandoned. The applicant will then have a specified time to respond by paying the applicable fee and a late fee to avoid the application becoming abandoned. An applicant may still request that an abandoned application be reinstated, but the Commissioner would only reinstate the application if he is satisfied that the applicant took “due care” to avoid the abandonment. This may be difficult to prove if an applicant has ignored the notice of non-payment.

Intervening Rights

The amendments will also introduce the concept of intervening rights where a abandoned application is abandoned and reinstated or an expired patent is revived. The amendments provide that no action for infringement of a patent lies against a person in respect of an act, that would otherwise constitute an infringement of the patent, if that act is committed in good faith by the person during a period to be established by the regulations. Presumably, the period to be established by the regulations will be sometime between the time the patent is marked as abandoned or expired, and the time the patent is reinstated or revived. Note: Currently, properly reinstated patent applications do not suffer a loss of any rights of enforcement for infringement.

Awaiting Regulations

The full impact of these amendments to the Patent Act is not yet clear. Regulations are currently being drafted to implement the amendments. Once the regulations are available, we will have a better understanding of the practical impact of these amendments on patentees and patent practice in Canada.