Upcoming Changes to Canadian Patent Practice Could Mean Increased Costs. Can you take steps now to mitigate?
As part of the implementation of the patent term adjustment (PTA) obligation in the Canada-United States-Mexico Agreement (“CUSMA”), the Government of Canada proposed a series of amendments to the Canadian Patent Rules to better streamline the patent examination process.
As noted in our earlier blog post, the proposed amendments provided for a request for continued examination requirement and a new notice from the Canadian Intellectual Property Office (“CIPO”) to applicants named a “conditional notice of allowance”, both of which are designed to streamline the patent examination process.
The Government of Canada is proposing regulatory amendments to the Canadian Patent Rules. The proposed amendments were published on July 3, 2021 and the public has 30 days to provide comments. The final rules are expected to be published in fall 2021 and implemented in late 2021.
The Canadian Trademark landscape has changed significantly over the last few years with a modernized trademarks regime. The challenges that have arisen since Canada’s 2019 accession to the Singapore Treaty, the Madrid Protocol, and the Nice Agreement, along with various input from stakeholders, have guided the Canadian Intellectual Property Office (CIPO) in adopting new measures to accelerate the prosecution of trademark applications. With the time to the issuance of a first examination report reaching recently 24-30 months in the case of some national applications, these measures need to be carefully considered. Two new practice notices are intended to address delays in examination, namely:
The Canadian Intellectual Property Office (“CIPO”) has announced that many of its fees for Canadian trademarks, patents, industrial designs, and integrated circuit topographies will increase on January 1, 2021. Among the fees being increased by 2% are those for an application to register a trademark as well as examination of patent and industrial design applications. A full list of the adjusted fees can be found in the links above or on the CIPO website.
The CIPO website should be consulted for an up-to-date listing of the adjusted fees because the applicable Tariff of Fees in the Patent Rules may not yet be updated. Whether the current fee or the adjusted fee must be paid for a given service will depend on the date on which the fee is received by CIPO, not the date on which the service is requested.
Fasken’s team of experienced intellectual property lawyers, patent agents, and trademark agents would be pleased to assist you with any and all CIPO matters.
The Canadian Intellectual Property Office (“CIPO”) has extended its final extension of the deadlines under the Patent Act, Trademarks Act and/or Industrial Design Act as a result of the COVID-19 outbreak. As we reported previously, March 16th to August 21st were considered “designated days” under the applicable Canadian intellectual property legislation; the time to respond to certain CIPO actions therefore had been previously extended to August 24th.