Patent law changes - what you need to know

Following consultations in late 2018, changes to Canada’s patent rules will come into effect on October 30, 2019. The changes are intended to modernize Canada’s patent rules and bring them in-line with the international Patent Law Treaty.

What is a patent?

A patent provides legal protection to an invention, granting exclusive rights to the patent-holder. Patents can be sold, licensed, or used as an asset when a business is looking for funding. 

How long does a patent last?

A patent is valid for 20 years from the date of filing the application; however, this is conditional on payment of annual maintenance fees. 

Major changes coming

As Canada gets ready to ratify the Patent Law Treaty, some of the benefits you’ll see include fewer administrative requirements to secure a filing, harmonized procedures, and a modernized patent legislative framework. 

Filing a patent

It will be easier to obtain a filing date (the date the Patent Office receives your application). This date is important because the first person to file for a patent, gets to own that patent. Filing dates will be available on weekends and holidays – even if the Patent Office is closed. 

As well, the Patent Office will grant a filing date even if the application fee is not paid, or the application is not in English or French, if the patent is filed directly with the Patent Office.

If an application is missing information, there will be no loss of the original filing date if the necessary information is submitted within 2 months of filing. (This is only the case for clerical errors in providing information, and not significant errors in the claims of the application).

Patent Priority

Priority is the right to file an application in another country for the same invention and have the same date of filing as the original application. For the first time, Restoration of Priority will exist in Canada. Priority claims must be made within 12 months of the original filing. This period can be extended to 14 months, if the applicant can prove the failure to meet the 12-month deadline was unintentional. 

Applicants will need to file a certified copy of the priority document, unless it was submitted during the international phase of a Patent Cooperation Treaty application.  

Examination Timelines

Applications are not automatically examined – you must request it and pay a fee. Currently you have 5 years to request an examination, but under the changes this will be reduced to 4 years. If you do not request an examination within this time, then your application will be considered abandoned. Examiners will need to produce their reports within 4 months (down from 6) and the final fee will be due 4 months from the Notice of Allowance (down from 6 months); if the fee is not received the application will be considered abandoned. 

Fees

Each year a maintenance fee must be paid to keep a patent application or patent in good standing. If maintenance fee payments are missed, the deadline for late payment is dependent upon when the Canadian Patent Office issues the late notice.  Then if the late payment is missed, reinstatement will only be available on a “due care” standard – i.e. if the applicant took all measures they could to make the payment.  Missing payments leaves an application for a patent uncertain and allows third parties the right to use, or prepare to use, a patented invention. 

The Canadian Intellectual Property Office has more information on patents, and you can also contact your CFIB Business Counsellor with any questions.