On June 22, 2023, the federal government passed Bill C-47, An Act to implement certain provisions of the budget tabled in Parliament on March 28, 2023. The introduction of a Patent Term Adjustment (“PTA”) system will be among the amendments to the Patent Act once in force.
The reasoning behind implementing a Canadian PTA system is as follows:
- To address unreasonable delays in the patent prosecution process; and
- To meet Canada’s international obligations under the Canada-United States-Mexico Agreement (CUSMA).
Currently, there is no PTA system in Canada for any reason. However, since CUSMA came into effect on July 1, 2020, Canada is now obligated to adopt a PTA system prior to the January 1, 2025 deadline. Once in place, patentees will be able to apply for an additional patent term if they experience “unreasonable delays” in the processing of their patent applications.
Under Article 20.44 of CUSMA, an ”unreasonable delay” is defined as “a delay in the issuance of a patent of more than five years from the date of filing of the application in the territory of the Party, or three years after a request for examination of the application has been made, whichever is later”.
The PTA system is expected to take effect on or before January 1, 2025. Once in force, applicants who filed on or after December 1, 2020 will be able to apply to the Patent Office for an additional patent term and pay a prescribed fee within three months of their patent being issued. Despite the guidance from Bill C-47 and CUSMA, many details, such as differences for divisional or PCT applications, are still to be decided by the future regulations.
The duration of a PTA term will be calculated using the number of days between the later of the two circumstances described in CUSMA’s definition and the date of patent issuance. Then a certain number of days, still to be determined by the regulations, will be subtracted from the resulting amount to consider delays caused by the applicant and delays that were not directly caused by the patent office. The Commissioner of Patents may reconsider the granted PTA term and shorten it by their own initiative or through application by any third party.
Patentees who suspect that they will be eligible to apply for a PTA should familiarize themselves with the new system and await its finalization on or before January 1, 2025.
To view Bill C-47, click here
This article is provided for informational purposes only and is not legal advice. For further information or assistance, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.