New exam request deadline in Canada – bad for some, good for others

The Canadian patent regime is generally quite flexible with respect to deadlines and cost effective in an effort to promote its use by patent applicants. For one, the official fees due to the Patent Office are much lower than in other countries. Another advantage for patent applicants is that they can an opt to refrain from making a request for examination at filing. This can save cost at the outset and simplify the examination procedure. However, new Rules coming into effect in Canada will reduce the generous timeline available for deferring examination. As discussed below, this will be a negative development for rights holders but a positive development for those who wish to circumvent third party patent rights.

For rights holders, not only does deferral of examination save cost in the short-term, but also increases the window of opportunity for applicants in Canada to simply replace claims that have issued in foreign jurisdictions with those that have issued elsewhere. In many instances, a Canadian patent application with claims corresponding to those that have been allowed or issued elsewhere will proceed directly to allowance, or only minor objections will be raised concerning specific requirements of Canadian patent law, such as the removal of statements that incorporate by reference other documents, among other formalities particular to Canadian practice. Deferral of examination also increases the opportunity for an applicant to submit a Patent Prosecution Highway (PPH) request in which expedited examination is granted based on an issued counterpart patent. Such a request can only be filed if a first Examiner’s Report has not issued and so the opportunity for filing such a request is increased by deferring the request for examination.

However, recent changes to bring Canadian patent law into compliance with the Patent Law Treaty will speed up examination and reduce the window of time in which it is possible for applicants to replace claims on file with issued counterpart claims and/or to make effective use of the PPH program. Under the new Rules, for those applications with a filing date after October 30, 2019, the deadline for requesting examination will be tightened to 4 years from filing, a one year reduction from the previous deadline of 5 years from the filing date. This effectively reduces the opportunities for applicants to take foreign prosecution into consideration in Canadian prosecution strategy.

On the other hand, for third parties wishing to commercialize a product or process in Canada, and seek freedom-to-operate, reducing the timeline for requesting examination is a positive development. The effect of the new Rules will be to reduce the number of pending applications sitting at the Patent Office for which examination has not yet been requested. Consequently, third parties will have a more timely picture of the scope of claims for a given application that will ultimately issue. Additionally, more patent applications will likely go abandoned after applicants opt to not pay the examination fee ($800.00 government fee for large entity). The result likely will be clearing of the deadwood from the register. While, the new Rules will reduce the timeline for third parties to submit prior art against a pending application, the option for requesting re-examination of an issued patent still remains under the new Rules.

In fact, many patent regimes do not allow examination to be deferred at all. For example, in the United States, patent applications are automatically examined and in China, the deadline for making a request for examination is three years from the filing date. Even in Brazil, where prosecution is relatively slow, the deadline for requesting examination is also three years from the filing date. Canada remains, even after the implementation of the new Rules, one of the most permissive countries in the world with respect to maximizing pendency of a patent application.

So is the new tightened deadline a positive development? As the saying goes, “it is in the eyes of the beholder”.

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