On August 7, 2023, the Canadian Intellectual Property Office (CIPO) launched a public consultation on a proposed regulatory framework for providing a patent term adjustment (PTA) to compensate patent owners for unreasonable delays in the processing of patent applications.

As part of Canada’s obligations under the Canada-United States-Mexico Agreement (CUSMA), the Patent Act (the Act) was amended earlier this year to include a framework for providing a PTA.  The Act requires that the Commissioner of Patents shall grant an additional term for a patent if: (i) the patent was issued later than five years from the filing date of a patent application, or three years from the date of request for examination (whichever is later); (ii) the application was filed on or after December 1, 2020; and (iii) the patentee applies for the additional term and pays associated fee within three months of the patent issue date.  These amendments are scheduled to come into force no later than January 1, 2025.

According to the consultation document, the regulatory framework would be implemented through amendments to the Patent Rules and would provide details on what days are to be subtracted when determining the duration of a PTA, the process for making a request for a PTA and the required fee. The consultation document provides some examples of certain actions or periods of time that may reduce the length of a PTA by subtracting days associated with these steps from the additional term, such as days taken to respond to examination reports, days during which the application is deemed abandoned, the number of days taken to pay a fee, as well as other circumstances. 

The consultation also addresses other miscellaneous amendments to the Patent Rules relating to deferred examination, suspension of examination when maintenance fees and late fees have not been paid, and requests for priority.

The deadline to participate in the consultation is September 8, 2023, and further information on how to participate can be found here.

Summary By: Michelle Noonan


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