Daily Alert

Patent Term Adjustment

Proposed amendments to the Patent Rules were published in the Canada Gazette for consultation to implement patent term adjustment by January 2025. Term may be added if the issue date is more than 5 years from the filing/national entry date, or 3 years from requesting examination, whichever is later, particularly time attributable to the patent applicant. Several miscellaneous amendments are also proposed.

Canada Gazette Part I: Regulations Amending the Patent Rules and Certain Regulations Made Under the Patent Act

Some points of interest:

  • The proposed fee for requesting additional term is $2500 plus any additional annual maintenance fees.
  • Term of a Certificates of Supplementary Protection runs concurrently with any term adjustment.
  • An application must be made for additional term, and after a preliminary assessment, observations may be made during a two-month period by the patentee and third parties.
  • Days are subtracted as provided for in the proposed Rules, such as “days when the patent applicant must take an action or pay a fee and the number of days in periods initiated by the patent applicant, such as requesting continued examination after certain events occur during patent examination”.
  • CIPO expects there to be about 1100 applications for additional term over the next 10 years.
  • The first patent application subject to the run rules would be those granted in December 2025.
  • The service standard would be to provide a preliminary determination of term adjustment within one year from the request for additional term.

The impact report states:

Overall, it is anticipated that the proposal will positively impact patentees and their employees and negatively impact those who do not participate in the patent system.

In terms of miscellaneous amendments, these include:

  • extensions of time for underpaid requests for examination that were erroneously acknowledged as paid.
  • clarifying that if a request for continued examination is made, the application won’t be subject to accelerated examination.
  • excess claim fees would not be charged on claims filed in error that are immediately removed if they had not yet been subject to examination.