The Backstory
The new Canadian Patent Rules came into effect on October 30, 2019 with the intent to make Canada compliant with its international treaty obligations by harmonizing and streamlining the administrative procedures for patents and patent applications. The changes to the Rules have resulted in both patent prosecutors and intellectual property owners adapting and developing new prosecution strategies.
Because patentees often want to align their Canadian patent applications with their global patent prosecution strategy, notably applications in other larger jurisdictions, such as Europe and the United States, Canadian applications are sometimes deliberately delayed to ensure consistency with corresponding international counterparts. Below is a brief discussion of how delays may be maximized under the new Rules.[1]
Delaying Requests for Examination
In Canadian patent prosecution, patent applicants must expressly request examination of an application within four years of the filing date. If that deadline is missed, the Patent Office will issue a notice requiring that examination be requested within two months from the date of that notice (along with payment of the applicable fees). The Patent Office will usually issue the notice within two months of the missed examination request deadline.
If the notice deadline is missed, the application is deemed abandoned. However, despite that deemed abandonment, the application may be reinstated within 12 months of the date the application was deemed abandoned.
But beware; under the new Rules, if reinstatement occurs after six months from the missed examination request deadline, the applicant will be required to provide reasons for its failure to file the request and provide evidence of due care. In addition, third party actions that would otherwise infringe the applicant’s rights will be without penalty, until the application is reinstated. This may have serious consequences for a patentee’s ability to enforce its rights, and it is important for applicants to recognize that this third party carve-out comes into effect regardless of when the above-mentioned notice was sent.
Delaying requests for examination through abandonment can allow applicants to wait for prosecution to advance in other jurisdictions, bearing in mind the longer they wait the higher the bar becomes to getting the applications reinstated, and the greater the risk of third parties gaining rights as a result of the delay. Careful diarizing of dates is fundamental to this strategy.
Delaying Responses to the Examiner
Once examination has been requested and an Office Action has been received, prosecution may still be delayed. Applicants have four months to respond to the Office Action, with an additional extension of two months available with a simple justification (e.g., we need more time to prepare a response). The request for the extension must be made before the response deadline.
If no response is submitted by the deadline (even after the two-month extension is granted), the application will be deemed abandoned. Again, the application may be reinstated within 12 months of the abandonment date. Unlike a delayed examination request however, there is no requirement to show due care.
Taking this approach allows an applicant to delay prosecution up to 14 months from the original Office Action response deadline.
But beware; as file wrapper estoppel is now a part of Canadian patent law and may be applicable in patent litigation, applicants should be cautious in how they respond to Office Actions, and how they amend Canadian applications in view of foreign ones.
Delaying after Allowance
If and when a Patent Office Examiner concludes an application complies with the Patent Act and Rules, they will issue a notice of allowance. Once the notice has issued, only amendments to correct obvious errors are permitted. However, a request within four months of receipt of the notice to withdraw it (along with payment of the applicable fee), will re-open prosecution and return the application to examination allowing further amendments to be made. Once back in prosecution, the timing of examination may be further extended.
If a request to withdraw the notice is not submitted, and the final fee is not paid within the four-month period, the application is deemed abandoned. It may reinstated as of right with payment of the final fee, but reinstatement will not re-open prosecution.
But beware; like Pandora’s box, if the application is re-opened to examination, there is a risk of unpleasant consequences (e.g., new art may be raised by the Examiner).
The Takeaway
As described above, an application may be deliberately (or because of unforeseen circumstances) delayed during prosecution in multiple ways.
The COVID-19 pandemic is an unforeseen circumstance that has caused patent offices around the world, including the Canadian Patent Office, to shut down rather abruptly with lockdowns, and while they are slowly beginning to ramp back up to full operation, the resulting delays (and several rounds of designated days granted by the Canadian Patent Office to afford applicants more time to address prosecution – mindful of physical and economic limitations caused by the pandemic) mean that correspondence with the patent offices is delayed. Needless to say, in Canada these delays impact requests for examination, responses to Office Actions, and re-opening prosecution of applications after notices of allowance are issued.
It is important to discuss the above strategies and corresponding considerations with your patent agent to make sure you understand the implications for your patent application(s) and intellectual property rights.
[1] Except where indicated, the strategies above apply to both national phase entries and applications directly filed in Canada.
