Changes to Restoration of Patent Rights in Canada
The Canadian Patent Act will be undergoing sweeping changes as early as Fall 2019. Many of the expected changes will significantly complicate mechanisms for restoration of rights after a missed deadline. The following is an overview of some of the pending changes for reviving patent rights in Canada.
Canadian patent law is now quite permissive with respect to the reinstatement of expired patents and abandoned patent applications. For many missed deadlines, an abandoned application or expired patent can be reinstated within 12 months of the date of abandonment/expiration by simply paying a reinstatement fee, taking the action that led to the abandonment/expiration and submitting a request for reinstatement. No reason for failure to observe the missed deadline needs to be provided.
Under the new proposed Rules, there will be different reinstatement schemes that vary in complexity and stringency depending on the nature of the missed deadline. One of the schemes invokes a due care standard in which the reasons for the failure to meet the deadline must be submitted to the Commissioner within certain time frames. The Commissioner then determines whether such failure occurred “in spite of the due care required by the circumstances having been taken”. This due care standard applies within certain timelines for missed maintenance fee payments and failure to request examination by the deadline. As further discussed below, other reinstatement schemes are less stringent and the revival of rights is available without having to convince the Office that due care was exercised. This includes deadlines missed for responding to an Office Action and payment of a final fee.
Due care standard – maintenance fees and requests for examination
Under the new proposed Rules, a patent application will be abandoned or a patent lapsed for failure to pay a maintenance fee if, after the later of 2 months from the date of a notice sent by the Office requiring payment and 6 months from the original maintenance fee due date, the missed maintenance fee is not paid, together with payment of a late fee. After abandonment, the reasons for the failure to pay the maintenance fee must be submitted to the Commissioner, together with the missed maintenance fee payment and the late fee. The deadline for reinstatement of the abandoned application is 12 months from the deemed date of abandonment (i.e., the later of 6 months from the original deadline or 2 months from the notice sent by the Office).
If a maintenance fee is missed for a patent, the window for revival of rights is narrower in certain circumstances than for patent applications. The patent will be deemed retroactively “expired” if, after the later of 2 months from the date of a notice from the Office and 6 months from the original maintenance fee due date, the missed maintenance fee and late fee are not paid. This procedure is similar to that described above for patent applications. However, the deadline to reverse expiry is 12 months from the earlier 6 month period after which the patent expired. This could be a trap for the unwary. For example, if the notice setting a 2 month deadline for compliance is sent close to the end of the 6 month period, the deadline for reviving the expired patent is still measured from the 6 month initial deadline, not the later of the two dates. (By contrast, for patent applications, as discussed above, the 12 month deadline to reverse abandonment is measured from the later of 6 months from the original deadline or 2 months from the notice sent by the Office).
A due care standard for reinstatement also applies within certain time frames for patent applications abandoned for failure to request examination. While currently the deadline for requesting examination is 5 years from the filing date, the new deadline will be 4 years. If the deadline is missed, the application will become abandoned if after 2 months from the date of a notice sent by the Office, a request for examination is not submitted, together with a late fee. After 6 months from the initial deadline for requesting examination, a due care standard applies, similar to maintenance fees. However, from the date of abandonment up until 6 months from the initial deadline for requesting examination, an “as of right” system for reinstatement is available. That is, although a patent application will be deemed abandoned for failure to respond to an Office notice within 2 months, reinstatement can be effected with payment of the necessary fees and making the request for examination if done so within 6 months after the initial deadline and without having to meet the “due care” standard. Of course, “due care” must be shown after this time period.
“As of right” standard – includes responses to Office Actions and payment of final fee
On the other hand, reinstatement to restore patent applications for other missed deadlines is available “as of right”. This includes reinstatement after failure to respond to an office action within the new deadline of four months. (Under the current Rules, the deadline is generally 6 months). A separate notice will not be sent to pay the late fee within two months – rather the deadline indicated in the office action itself constitutes notice. A similar scheme will be in place for paying the final fee after allowance, as well as other requisitions under the Rules. A 12-month reinstatement period will be available for deadlines falling within this category. A request for reinstatement must be submitted, a reinstatement fee and the action taken that led to the abandonment.
One advantage of the new regime is that if the due care standard can be met, it is possible in some instances for the time period for restoration of rights to extend to 18 months from the missed deadline, or even longer in certain circumstances. However, this can create a long period of uncertainty for third parties regarding whether rights will be restored or not. To counter this, safe harbours are available to third parties after missed deadlines for acts that would otherwise constitute infringement of a resultant issued patent. Such safe harbours will be available within prescribed periods after application and patent maintenance fee deadlines are missed and when a late request for examination is made. For example, for an application deemed abandoned for non-payment of an application maintenance fee, the safe harbour period begins 6 months after the missed due date and ends on the earlier of the reinstatement date and grant date.
When do the new Rules regarding restoration of rights come into effect?
Further complications arise with respect to when the new reinstatement provisions come into effect. While there are exceptions, events that arise after the Coming-Into-Force (CIF) date will be handled under the new Rules. For example, if an application becomes abandoned after the CIF date for failure to request examination before the deadline, then the new abandonment/reinstatement Rules apply. If a notice or requisition is mailed before the CIF date, then the former abandonment/reinstatement provisions apply even if the deadline falls after the CIF date. Further, if abandonment occurs before the CIF date, then the former abandonment/reinstatement provisions apply – even if the deadline for reinstatement falls after the CIF date.
The moral of the story
After a missed deadline, it is important to take the necessary actions to place a patent or application in good standing as soon as possible. This is because the longer the period of time that elapses after missing a deadline, the more complicated the provisions become for restoration of rights. Also, within certain prescribed periods after a deadline is missed, safe harbours to infringement are available to third parties. Preferably, a case should be revived before the dates on which the safe harbours become effective.
To complicate matters even further, the new Rules will allow the applicant to pay maintenance fees themselves even when an agent is appointed. This is a change from the current Rules that only authorize an appointed agent to pay maintenance fees during pendency. This raises a number of uncertainties. For instance, if an applicant is paying the maintenance fees him/herself rather than via an appointed agent, will the notice be sent to the agent or the applicant, or both? This creates a scenario in which an agent unknowingly could be prosecuting an application that is abandoned for failure to pay a maintenance fee. Coordination between different parties involved in prosecution and maintenance of patent applications will be imperative under the new Rules.
The changes to the Rules are still only proposals and have not yet come into force, although it is expected that no further significant changes will be made before the CIF date expected in the fall of this year (2019). It is important to note that there may be serious consequences for failure to adhere to certain time limits and, as noted above, in many instances, it will not be possible to remedy such failure merely by payment of a reinstatement or late fee. Further, given the complexity of the new Rules, legal advice should always be sought for a particular case at hand with respect to the restoration of rights and the specific deadlines involved.
 Section 73(3) of the new Patent Act.