On August 7, 2023, the Canadian Intellectual Property Office (CIPO) launched a consultation on proposed features of regulations on patent term adjustment (PTA) in Canada (the Consultation).
The PTA system is intended to compensate patentees for “unreasonable delays” by CIPO in issuing a patent. The Consultation seeks feedback on proposals that would impact the length of the PTA term, in order to inform the development of draft amendments to the Patent Rules.
The deadline to participate in the Consultation is September 8, 2023.
Under the new PTA provisions, the Commissioner of Patents (Commissioner) shall grant an additional term for a patent if the patent was issued later than five years from the “applicable date” or three years from the date of request for examination (whichever is later). For applications filed in Canada, the “applicable date” is the filing date; for divisional and PCT national phase applications, the “applicable date” is to be defined by regulation.
Only applications filed on or after December 1, 2020 are eligible for PTA. The patentee must apply for the additional term and pay the associated fee within three months of the patent issue date.
Determining the additional term
Under the Patent Act, the starting point for determining the length of the PTA term is the number of days between: the later of three years after the request for examination, or five years after the applicable date; and the date the patent is issued.
The Patent Act requires that the PTA term be reduced by “the number of days that is determined under the regulations.” If subtracting these days results in a term of zero or a negative number, no PTA is granted.
The Consultation proposes several factors that would reduce the length of the PTA term. These factors appear aimed at eliminating any days from the PTA calculation that CIPO is not directly response for.
PTA term would be reduced by the following periods:
- Where the threshold date is based on the applicable date rather than the date examination is requested, the number of days taken to request examination of the application and to pay the prescribed fee;
- The number of days taken to meet certain formality requirements in respect of the application;
- The number of days taken to respond to notices from CIPO, such as examination reports;
- The number of days during which the application is deemed abandoned;
- The number of days utilized during authorized extensions of time;
- Under certain circumstances, submitting voluntary amendments or supplementary responses may lead to a number of days to be subtracted;
- If required fees are not paid on time, the number of days taken to pay the fee;
- The number of days taken to respond to a notice of allowance or conditional notice of allowance;
- The number of days required to complete examination following a request for continued examination and for applications filed prior to October 3, 2022, following a third examiner report; and
- Periods of time beyond the control of CIPO, such as in force majeure situations.
CIPO also proposes to leave considerations for reducing the PTA term open: “In the determination of which days are to be subtracted, the Commissioner may be authorized to consider periods of time not explicitly recited in the Patent Rules and may make determinations on the percentage of days in a particular period that are to be subtracted.”
For overlapping periods of delay, the Consultation proposes that each day of delay will only be counted once, regardless of how many different types of exclusion periods might apply. For example, if an applicant did not respond to an examination report for 16 months, their PTA term would be reduced by 16 months even though within that period, the application would have also been considered abandoned. The Commissioner would not subtract 16 months from the term (the time to respond to the examination report) and an additional 12 months from the term (the period of time the application was deemed abandoned).
Other features of the Consultation
In addition to determining the number of days to be subtracted from the PTA term, the Consultation address other topics, including:
- Proposed “applicable date” for PCT and divisional applications. The earliest point in time that CIPO can begin processing a PCT national phase application is the national phase entry date in Canada. For these applications, the Consultation proposes that the applicable date would be the national phase entry date. Similarly, for divisional applications, the proposed applicable date would be the presentation date.
- PTA application process. According to the Consultation, the information required in the application for a PTA may include: basic patent information, a clear request for an additional term, and reasons or detailed calculations to support the request for additional term. CIPO also proposes that the Commissioner make an initial determination regarding PTA eligibility, allowing any person to submit observations on the initial determination, which would be considered by the Commissioner before the final determination.
- Application for reconsideration. The Consultation proposes that the amended Patent Rules would specify details in relation to applications for reconsideration of additional term. A reconsideration of the determination of additional term may result in no change to the previous determination of additional term or the shortening of the duration of the additional term granted.
- Other amendments to the Patent Rules to streamline patent examination. Apart from PTA, the consultation proposes further changes to the Patent Rules that relate to: deferred examination, suspension of examination before maintenance and late fees have been paid, and allowing patent applicants to submit a request for priority on the same day that they submit their approval for the application to be opened to public inspection before the expiry of the confidentiality period.
Link to consultation document: The consultation document can be found on CIPO’s website here.