IPIC Submission on Proposed Amendments to the Patent Rules

IPIC's Position

The recent amendments to the Patent Act and proposed new regulations under the Act represent the most significant changes to the Canadian patent regime since the transition from the “old” to the “new” Act in the late 1980s.

There are several motivations behind the current changes: a decades-long project to implement the Patent Law Treaty (PLT); the exigencies of the Canada-European Union Comprehensive Economic and Trade Agreement; even “wish list” items inspired by court decisions. We recognize, though, that in preparing these proposed Patent Rules, CIPO has been concerned primarily with enabling applicants to access the Canadian patent system and preventing inadvertent loss of rights, while balancing applicants’ interests against those of third parties in obtaining finality and certainty in the scope of patent rights. These goals are consistent with CIPO’s long-term objectives in serving innovation and the public interest. They are also consistent with the objectives of IPIC’s own membership, who represent both intellectual property owners and users of intellectual property.

To this end, the proposed Rules were written not only to implement PLT, but also to more closely conform to the minimum requirements of the Patent Cooperation Treaty (PCT) and its Regulations. The result is a proposed new patent regime that provides new opportunities and safeguards for applicants, reduces patent pendency, and eliminates minor ambiguities in the current Rules.

At the same time, the proposed new regime creates a new set of challenges for CIPO, applicants, and patent professionals alike. For example, the new “due care” standard for reinstatement in the amended Act imposes new decision-making responsibilities on the Commissioner of Patents, and the new measures permitting applicants to file by reference, replace missing parts, and request restoration of the right of priority add additional administrative steps and deadlines to the process of filing a complete patent application.

In the following submissions, our objective is to help CIPO improve on the proposed Rules and the policies they represent to ensure that prospective patent rights are not lost due to stringent administrative requirements, while maintaining sufficient measures to protect the public interest.