New Patent Rules Published For Consultation

On December 1, 2018, the Government of Canada published its proposed amendments to the Patent Rules (the Proposed Rules) for consultation.  The Proposed Rules implement legislative amendments to the Patent Act passed in 2014 and 2015, which are not yet in force, and enable Canada to ratify the Patent Law Treaty.  The Proposed Rules include significant changes to certain filing requirements, the timing of responses to Canadian Intellectual Property Office (CIPO) notices, and abandonment procedures.

Some of the key changes include:

• simplifying the requirements to obtain filing dates and eliminating temporal requirements for electronic filing;
• shortening response time periods by reducing the deadline for requesting examination from five to four years, and reducing the time limit to respond to a notice of allowance and examiner's reports from six to four months;
• providing for the applicant to add to the specification or to add a drawing, without losing the original filing date, when the addition exists in a priority document and was made within two months of the filing date or within two months of a notice from the Commissioner that part of the application appears to be missing; and
• streamlining the amendment process to enable Notices of Allowance to be withdrawn and prosecution to be reopened upon payment of a fee.

The 30-day consultation period for the Proposed Rules will end on December 31, 2018.  Implementation of the amendments is expected late 2019.

For more information, please see CIPO’s website.

Summary By: Michelle Noonan