Canadian patents and priority claims: Learning to play by the new patent rules

The Canadian Intellectual Property Office (CIPO) has released the first in a series of monthly newsletters to update stakeholders on upcoming changes to the Canadian patent system. The changes result from the Government of Canada’s proposed amendments to the Patent Rules (draft Patent Rules), which were published in December 2018. The draft Patent Rules are not yet law and are subject to change. The final Patent Rules are expected to be published in mid-2019 with an expected coming into force (CIF) date in late-2019. The draft Patent Rules introduce significant changes to Canada’s patent regime. This bulletin focuses on the first CIPO newsletter regarding priority claims in Canada.

What you need to know

The draft Patent Rules include several notable changes to the priority system in Canada:

• Restoration of priority is coming to Canada: Restoration of the right to priority will be available if an application is filed within 14 months of the priority application date, if the applicant’s failure to file by the priority deadline was “unintentional” and the applicant requests restoration of priority within a prescribed period (of within one or two months of the application’s filing, depending on whether the filing was through the PCT).
• Certified priority documents will be mandatory: It will be mandatory to submit a certified copy of the priority document within a prescribed period or make a certified copy available to the Patent Office via one of the digital libraries acceptable to the Patent Office. However, no submission is required if the priority document is Canadian or has been previously filed with the International Bureau. When required, certified copies should be provided with filing instructions due to short deadlines.
• Procedure for correcting priority claims will change: The general provision for correcting “clerical errors” in any document of record, which had historically been used to correct priority claims, will be repealed and replaced with specific provisions for correcting different types of errors. For priority claims, there will be specific provisions for correcting the filing date, country or office of origin, or application number of the priority document.

Priority claims: A comparison of the current and new regime

The draft Patent Rules introduce a number of changes to priority claims, including timelines for requesting priority. Some of the more notable changes are discussed below.

Restoration of the right of priority

Currently, in order to have a valid priority claim in Canada, the Canadian patent application (or PCT application forming the basis for the Canadian national phase application) must be filed within 12 months of the earliest priority date. If an applicant does not request priority by that deadline, priority is not available in Canada. Even if an applicant successfully restores priority for the PCT application, that restoration does not have effect in Canada for the Canadian national phase application.

Under the new system, restoration of the right of priority will be available where the Canadian or PCT application is filed within two months of the priority deadline (i.e., within 14 months of the earliest priority date) if the applicant’s failure to file by the priority deadline was “unintentional” and the applicant requests restoration of priority within a prescribed period (i.e., within one month of national phase entry for a PCT national phase application or within two months of the filing date for a direct filing). The Federal Court can reverse the restoration of priority if failure to file by the priority deadline is found to be “intentional”. Restoration of priority will not apply to applications filed before the CIF date.

Certified priority documents

Currently, certified priority documents are not required unless requisitioned by the Examiner (which is rare) and failure to comply would result in abandonment of the application.

Under the new system, it will be mandatory to either (a) submit a certified copy of the priority document or (b) advise the Patent Office that a certified copy of the priority document is available in one of the digital libraries acceptable to the Patent Office¹ by the prescribed period except: (i) if the priority application is Canadian or (ii) a priority document was already submitted to the PCT International Bureau in compliance with PCT regulations (for Canadian national phase applications). When required, certified copies should be provided with filing instructions due to extremely short deadlines.² Unlike the current regime, non-compliance will potentially result in loss of the priority claim, rather than abandonment of the application. The new requirements will not apply to requests for priority made before the CIF date.

Procedure for correcting priority claims

Currently, “clerical errors” in any document of record at the Patent Office may be corrected at the discretion of the Commissioner under Section 8 of the Patent Act. This section has historically been used for the correction of errors in priority claims.

Under the new system, Section 8 will be repealed and replaced with specific provisions for correcting different types of errors.³ For priority claims, there are specific provisions for correcting the filing date, country or office of origin, or application number of the priority document. Deadlines vary according to the type of error and the ability to correct priority dates is limited; therefore, there will be an added premium to having verified priority claims before filing. Special provisions will apply for correcting priority claims for patent applications filed before the CIF date.

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¹ The Patent Office has informally indicated that provision of priority documents through the WIPO Digital Access Service (DAS) will be permitted, but the official list of acceptable digital libraries has not yet been published. It is expected that further details will be provided by the CIF date.

² The deadline for filing a certified priority document for a pending application is the latest of (a) 16 months after the earliest priority date; (b) four months after the filing date of the pending application; or (c) if the pending application is a PCT national phase application, the national phase entry date of that application. If the applicant does not comply with this deadline, the Commissioner will by notice requisition a copy of the certified priority document within two months of the date of the notice. If the applicant does not comply, the request for priority will be deemed to be withdrawn unless the applicant requests a certified a certified copy of the priority document at least two months before the initial deadline and takes the prescribes steps within the prescribed period.

³ Under the draft Patent Rules, an applicant may request the correction of an “obvious” error in the specification or drawings of a patent within six months of issue. The draft Patent Rules also contain specific provisions for correcting various errors such as the name of an applicant or inventor. During the consultation period for the draft Patent Rules, the Government of Canada has received feedback that the proposed timelines for correction of errors are too short, but it remains to be seen if the government will adjust the timelines when the Patent Rules are finalized.