Patent Term Adjustment is coming to the Canadian Patent Office

The Canada-United States-Mexico Agreement (CUSMA), which entered into force on July 1, 2020, included a requirement to provide a patent term adjustment to compensate patent owners for unreasonable delays in the processing of their patent applications.  To implement this commitment, amendments were made to the Patent Act to include a framework for providing additional patent term; the amendments received Royal Assent on June 22, 2023 and will come into force on or before January 1, 2025.  Amendments to the Patent Rules detailing the framework for the administration of the changes will be forthcoming.

The Canadian Intellectual Property Office (CIPO) has released a Consultation Document, providing a summary of proposed amendments to the Patent Rules in order to implement the changes to the Patent Act.  Note that these changes are subject to review and amendment prior to finalization.  CIPO has provided a deadline of September 8, 2023 to provide comments on the proposed changes.

For applications filed on or after December 1, 2020, the proposed changes will allow applicants to apply for additional patent term by filing a request and paying the associated fee (within three months of the patent issue date) only if the patent was issued after the “threshold date”, which is the later of:

• five years from the filing date of a Canadian direct national application (otherwise, the date of national phase entry into Canada for PCT applications, or the “presentation date” for divisional applications); or

• three years from the date of request for examination.      

The earliest date on which a patent could be theoretically eligible to receive an additional term would be December 2, 2025.

Upon receiving an application for additional term on an eligible patent issued after the threshold date, the Commissioner will conduct a review of the prosecution history.  The number of days between the threshold date and the date the patent is issued would be the starting point for the calculation of additional term.  Then, a number of days determined in the regulations would be subtracted to arrive at the duration of additional term, if any.  Subtracting the days specified in the regulations from the number of days between the threshold date and issue date may result in a zero or negative value, indicating that the patent is not entitled to receive additional term.  The days to be subtracted may have occurred at any point during the application process.

Some examples of actions and periods of time that may lead to days being subtracted in the determination of additional term include:

• number of days taken to request examination of the application and to pay the prescribed fee; or to respond to notices from CIPO, such as Examination Reports;

• number of days during which the application is deemed abandoned; or days utilized during authorized extensions of time;

• under certain circumstances, submitting voluntary amendments or supplementary responses may lead to a number of days to be subtracted;

• delays in paying required fees, which are not paid on time;

• number of days taken to respond to a notice of allowance or conditional notice of allowance; or to complete examination following a request for continued examination (RCE); or

• any periods of time beyond the control of CIPO, such as in force majeure situations.

Other proposed changes are expected to include provisions for maintenance fees beyond the current 20-year patent term.   

Please contact a patent agent at Cassan Maclean IP Agency Inc. for further information.