On May 18, the Canadian Intellectual Property Office (CIPO) published proposed amendments to the Patent Rules (the Rules), among other regulations, providing details regarding Canada’s new patent term adjustment (PTA) system to take effect on January 1, 2025.

The PTA system stems from Canada’s obligations under the Canada-United States-Mexico Agreement (CUSMA) and is intended to compensate patent owners for unreasonable delays in CIPO’s processing of patent applications.  The Patent Act (the Act) was amended earlier this year to include a framework for providing a PTA, as reported by the E-TIPS® Newsletter here.

However, the Act left many details to be filled by the regulations.  CIPO’s proposed amendments to the Rules support the amended Act by providing further details about the PTA system.

The amendments outline the steps the Commissioner of Patents (the Commissioner) must follow from receiving an application for an additional term to deciding the duration of the additional term.  The process involves assessing the eligibility for an additional term, a preliminary determination of the duration of any additional term, a two-month observation period for receiving submissions from the patentee and interested third parties, culminating in a determination of the duration of the additional term.  If an additional term is granted, the Commissioner will issue a certificate of additional term setting out the duration of the additional term along with other prescribed information.

The amendments further detail how the additional term will be calculated and provide a list of time periods to be subtracted when calculating the length of each additional term.  There is also an additional term reconsideration process which allows anyone to challenge the duration of an additional term granted by the Commissioner and allows the Commissioner to shorten the duration of an additional term.

Lastly, the proposed amendments set fees for an application for an additional term or reconsideration of an additional term at $2,500 (standard) and $1,000 (for small entities).  The maintenance fees are proposed to be $1,000 (standard) and $400 (for small entities).

CIPO is currently accepting written comments online on the proposed amendments until July 2, 2024.

Summary By: Victoria Di Felice



24 06 12

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