Regulations Amending the Patent Rules and the Trade-marks Regulations: SOR/2018-140

Canada Gazette, Part II, Volume 152, Number 14

Registration

June 25, 2018

PATENT ACT
TRADE-MARKS ACT

P.C. 2018-872 June 22, 2018

Her Excellency the Governor General in Council, on the recommendation of the Minister of Industry, makes the annexed Regulations Amending the Patent Rules and the Trade-marks Regulations

Regulations Amending the Patent Rules and the Trade-marks Regulations

Patent Act

Patent Rules

1 (1) Paragraphs 5(4)(a) and (b) of the Patent Rulesfootnote 1 are replaced by the following:

(2) Subsections 5(7) and (8) of the Rules are replaced by the following:

(7) For the purposes of subsection (6), if, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is open to the public for all or part of that day, it is deemed to be received by the Commissioner on that day.

(8) For the purposes of subsection (6), if, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is closed to the public for all of that day, it is deemed to be received by the Commissioner on the day when the Office is next open to the public.

2 The Rules are amended by adding the following after section 27:

27.01 The following days are prescribed for the purposes of subsection 78(1) of the Act:

3 (1) Paragraphs 54(3)(a) and (b) of the Rules are replaced by the following:

(2) Subsections 54(6) and (7) of the Rules are replaced by the following:

(6) For the purposes of subsection (5), if, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is open to the public for all or part of that day, it is deemed to be received by the Commissioner on that day.

(7) For the purposes of subsection (5), if, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is closed to the public for all of that day, it is deemed to be received by the Commissioner on the day when the Office is next open to the public.

4 Section 98 of the Rules is amended by adding the following after subsection (1):

(1.1) If an application is deemed to be abandoned as a result of one failure to take an action and, before the application is reinstated, the application is deemed to be abandoned as a result of one or more other failures to take an action, a single request for reinstatement may be submitted in respect of all of those failures if the single request is made within the 12-month period after the day on which the application is deemed to be abandoned as a result of the first failure to take an action.

5 Section 152 of the Rules is amended by adding the following after subsection (1):

(1.1) If an application is deemed to be abandoned as a result of one failure to take an action and, before the application is reinstated, the application is deemed to be abandoned as a result of one or more other failures to take an action, a single request for reinstatement may be submitted in respect of all of those failures if the single request is made within the 12-month period after the day on which the application is deemed to be abandoned as a result of the first failure to take an action.

6 The portion of item 7 of Schedule II to the Rules in column I is replaced by the following:

Item

Column I

Description

7

On requesting reinstatement of an application deemed to be abandoned, in respect of each failure to take an action referred to in subsection 73(1) of the Act or section 97 or 151 of these Rules that is the subject of the request............................................................................

7 The English version of the Rules are amended by replacing “for business” with “to the public” in the following provisions:

Trade-marks Act

Trade-marks Regulations

8 (1) Paragraphs 3(4)(a) and (b) of the Trade-marks Regulationsfootnote 2 are replaced by the following:

(2) Subsections 3(3) and (5) of the English version of the Regulations are amended by replacing “for business” with “to the public”.

(3) Subsections 3(7) and (8) of the Regulations are replaced by the following:

(7) For the purposes of subsection (6), if, according to the local time of the place where the Office of the Registrar of Trade-marks is located, the correspondence is delivered on a day when the Office is open to the public for all or part of that day, it is deemed to be received by the Registrar on that day.

(8) For the purposes of subsection (6), if, according to the local time of the place where the Office of the Registrar of Trade-marks is located, the correspondence is delivered on a day when the Office is closed to the public for all of that day, it is deemed to be received by the Registrar on the day when the Office is next open to the public.

9 The Regulations are amended by adding the following after section 14:

14.1 The following days are prescribed for the purposes of subsection 66(1) of the Act:

Coming into Force

10 (1) Subject to subsection (2), these Regulations come into force on the first day on which subsection 50(3) of the Combating Counterfeit Products Act, chapter 32 of the Statutes of Canada, 2014, and both sections 63 and 68 of the Economic Action Plan 2015 Act, No. 1, chapter 36 of the Statutes of Canada, 2015, are in force.

(2) Sections 4 to 6 come into force on the day on which these Regulations are registered.

REGULATORY IMPACT ANALYSIS STATEMENT

(This statement is not part of the Regulations.)

Issues

Some of the rules that govern the administration of Canada’s Intellectual Property (IP) regime are in need of housekeeping changes to ensure they are clear, consistent, and predictable.

Specifically, the Standing Joint Committee for the Scrutiny of Regulations (the Committee) has reviewed amendments previously made to the Patent Rules and is seeking a change in wording to ensure the requirements in the regulations correspond with the authority granted in the Patent Act.

In addition, there is a need to prescribe in regulations the days on which deadlines under the Trade-marks Act and Patent Act will be extended to account for holidays and unforeseen circumstances.

Background

Amendments to the Patent Rules regarding reinstatement

In regard to the process to seek patent protection, an applicant must pay certain fees, respond to requests for documentation, make changes requested by an examiner, or take other actions as required by the Patent Act and the Patent Rules. If an applicant fails to take particular actions in respect of their application, it may be deemed abandoned. At that time, in order to reverse the deemed abandonment, an applicant would have to request that the Canadian Intellectual Property Office (the Office) reinstate their application, take the previously required action, and pay the necessary fee within an established time period. If the patent is still abandoned at the end of the reinstatement period, the legal effect of the patent application ends and no further recourse against infringement is available to the applicant.

In order to ensure the requirements in the regulations correspond with the authority granted in the Patent Act, the Office has been asked by the Committee to amend the Patent Rules so that it is explicit that a single request for reinstatement can be submitted to the Office to request reinstatement of an application that is deemed abandoned for failing to take more than one required action. Because the Act does not specifically require multiple requests for the same application, there is a lack of clarity about whether a single request for reinstatement may be made when a patent application is deemed abandoned for failing to take multiple required actions. The Office agreed to make the necessary amendments in order to ensure that a single request for reinstatement can be made to reinstate an application that is deemed abandoned for failing to take more than one required action if the other conditions are complied with and if the request is submitted before the end of the first reinstatement period.

Amendments related to holiday provisions

The Office administers the IP regime in Canada and handles the assessment, registration, and upkeep of IP rights. Amendments to the Patent Act, the Trade-marks Act and the Industrial Design Act (the Acts) to modernize the administration of IP rights received royal assent on June 23, 2015, as part of the Economic Action Plan 2015 Act, No. 1 (Division 3, Part 3). These amendments contain provisions for prescribing days for the purposes of calculating extensions of deadlines, including in exceptional situations where the Office is closed to the public.

Under the Acts, if any deadline in respect of business before the Office expires on a day when the Office is closed, that deadline is extended to the next day the Office is open. The days that the Office is closed to the public are currently communicated through notices that provide guidance on the Office’s operational procedures. These can be found on the Office’s website, but are sometimes updated or moved. As a result, it is difficult to find the most up-to-date information regarding the type of IP that an interested party may be looking for, leaving those seeking IP protection at risk of missing or miscalculating deadlines.

If someone does not know when the Office is closed for business, they risk a possible inadvertent loss of rights. For example, if a deadline to pay a fee falls on a provincial holiday, an applicant may believe the payment can be made on the next business day. However, not all provincial holidays are also a day when the Office is closed for business. If the deadline is missed, a business may irrevocably lose their IP protection, be subjected to fee penalties, or unnecessarily delay progress on their application.

With respect to industrial designs, on December 9, 2017, a regulatory amendment was published in the Canada Gazette, Part I, as part of a larger overhaul of the Industrial Design Regulations. The amendments included in this proposal include equivalent provisions for patents and trademarks in order to bring the proposed amendments into force for all three types of IP at the same time. The Office is committed to ensuring that the rules regarding holidays are consistent across the three major lines of business (patents, trademarks, and industrial designs).

Objectives

The objective of the proposal is to address housekeeping issues that have been identified with Canada’s IP regime. The amendments would ensure that consistency between the powers laid out in the Patent Act and the practices of the Office are enshrined in the regulations. This would satisfy the concerns raised by the Committee and provide legal certainty by ensuring that all sections of the Patent Rules have statutory authority. It would also codify the existing practice at the Office, which is to accept multiple reinstatements in one request so long as it is submitted before the end of the first reinstatement period and that it complies with the other conditions.

These amendments would clarify in regulations the prescribed days on which deadlines for those seeking patent and trademark protection would be extended. This would also contribute to the objective of harmonizing the prescribed days across Canada’s IP regime, while also ensuring that the rules are easy to access in the regulations for greater certainty for users of the IP system. It would also permit the Commissioner of Patents and the Registrar of Trademarks to designate days when time periods are extended if it is in the public interest to do so (for example, in the event of a natural disaster).

Description

Amendments to the Patent Rules regarding reinstatement

The revised text in sections 98 and 152 of the Rules will state that a single request for reinstatement may be submitted in response to all of the initial failures that led to the application becoming abandoned. This must be done within 12 months from the date the application was deemed abandoned as a result of the first failure to take an action.

The other elements specifically require the request be filed within a prescribed time period (12 months both in the current Rules and in the proposed new subsection), be accompanied by a prescribed fee, and that the applicant must take all of the initial actions that were required by the Office before the application was deemed abandoned, will remain unchanged from the current Rules.

Finally, item 7 of Schedule II, which currently sets the fee that an applicant must pay to file for reinstatement, will be amended to specify that the fee is paid per each failure that led to the application becoming abandoned. This means that the fees paid by applicants under these changes will be the same as those paid presently.

Two different sections must be amended as the Rules cover different sets of patents based on their filing date. In this instance, section 98 handles the reinstatement process for patent applications with a filing date on or after October 1, 1996, while section 152 describes the same proceedings for patent applications with a filing date that falls in the period beginning on October 1, 1989, and ending on September 30, 1996.

The amendments to the Patent Rules would come into force on the day they are registered.

Amendments related to holiday provisions

The amendments to each of the Trade-marks Regulations and Patent Rules (the Regulations) are identical and will introduce in the respective Rules and Regulations what had previously been described in practice notices and online, with minor changes (specifically the addition of the August holiday, which has been requested by stakeholders).

The amendments prescribe days for the purpose of subsection 78(1) of the Patent Act and 66(1) of the Trade-marks Act. If the end of a time period specified under the Act falls on a prescribed day or a designated day, it is extended to the next day that is neither prescribed nor designated. Generally, the prescribed days are statutory holidays, but they also include days when the Office is closed for all or part of a day. The prescribed days are

The proposed regulations will provide clarity to practice that was previously unclear. The above does not prevent a person from meeting any initial deadline, instead it provides for more time and flexibility to do so if the time is needed due to Office closure. The amendments to the Regulations would come into force on November 5, 2018, which is also intended to align with the targeted coming into force of the amendments to the Industrial Design Regulations.

“One-for-One” Rule

The “One-for-One” Rule does not apply to this proposal, as there is no change in administrative costs to business. The amendment to the Patent Rules that govern reinstatement would make it easier for a patent applicant or their agent to file a request for reinstatement if there were multiple reasons why their application became abandoned. This amendment would be consistent with the wording of the Patent Act and codify existing Office practice (i.e. that applicants may submit a single reinstatement request for multiple abandonments if the other requirements are complied with). Therefore, it is not expected to lead to a monetized OUT under the “One-for-One” Rule.

Small business lens

The small business lens does not apply to this proposal, as there are no costs on small business.

Consultation

Stakeholders were consulted on the proposed change to the Patent Rules regarding reinstatement in the summer of 2017, as part of a broader consultation on proposed amendments to patents. At that time, a draft copy of the proposed amendments was posted publicly on our website and distributed to interested stakeholders (primarily organizations representing patent agents as well as individual agents and businesses that frequently interact with the Office). While the draft text used in the 2017 consultation is not the same as the proposed amendments to section 98 and 152 of the Patent Rules, the practical outcome, spirit, and intent of the amendments are the same. The Office received no negative comments from stakeholders about this change during the consultations and has heard broadly that they appreciate the efforts made to reduce paperwork and promote legal certainty in operations.

The Canadian Intellectual Property Office consulted selected stakeholders (i.e. IP agents and business representatives who are heavy users of the IP system) with drafts of these regulatory changes when consulting on amendments to the Industrial Design Regulations, Trade-marks Regulations and Patent Rules. Agents have previously expressed their desire for clarity regarding how holidays and Office closures affect time period calculations; few comments were received regarding these changes, but those received were positive, with the exception of one remark during the patent technical consultations questioning why Family Day was not included on the list (the Office’s response is that Family Day falls on different dates throughout the country and therefore does not affect clients as much as the August Civic Holiday).

When developing the previous practice notices, agents expressed their desire to allow the Office to designate itself closed during “force majeure” events, such as the flooding that affected the National Capital Region in the spring of 2017. Agents have also expressed desire for the August date as a prescribed day; the majority of agents practise in provinces or territories where that is a holiday, i.e. except Quebec and Yukon.

The language proposed for this amendment is the same as what is in the proposed amendments to the Industrial Design Rules. That proposal was published in the Canada Gazette, Part I, on December 9, 2017, for a 30-day comment period. None of the submissions received on that proposal commented on the holiday provisions and the resulting extension of time. Since some of the same stakeholders targeted here have seen that publication, we are confident that no opposition will be raised to this proposal.

Rationale

These amendments will make it easier for stakeholders to be certain of which days the Office is closed for the purposes of extending deadlines, as they will be formalized in the Regulations. In addition, amending the provisions for patent reinstatements adds clarity to the existing provisions and codifies existing Office practice, which is that applicants may submit a single reinstatement request for multiple abandonments if the other requirements are complied with. These measures taken together will increase legal certainty and lessen the likelihood that an applicant or rights holder makes a mistake that could jeopardize their IP rights.

Specifically, codifying in the Regulations how deadlines are extended on days the Office is closed to the public as well as permitting the Commissioner and the Registrar to designate days in case of natural disasters will make it easier for users of Canada’s IP system to be aware of when important deadlines occur and then be able to plan accordingly.

The amendments will also provide for flexibility in exceptional cases where the Office is closed to the public or as otherwise designated. Deadlines that fall on these days will be automatically extended to the next non-designated day that the Office is open to the public. As a result, during natural disasters, security-related occurrences, or any other sufficiently disruptive event, IP applicants and rights holders will not need to worry about the status of their application or registration. Instead, their deadlines will be extended until after the situation is resolved.

The amendment to the Patent Rules that govern reinstatement will make it easier for a patent applicant or their agent to file a request for reinstatement if there were multiple reasons why their application was deemed abandoned. In practice, they will still pay the same fee, within the same time period, and must still take the actions that were required of them when their application was deemed abandoned. In addition, reducing the amount of paper burden lessens the risk that a request will be misplaced or lost. This change also ensures that the statutory authority granted by the Patent Act is reflected in the requirements set out in the Patent Rules. This has specifically been requested by the Committee, and making this amendment will increase legal certainty that the responsibilities set forth in the Patent Rules have the full weight of law behind them.

There are no expected costs related to these amendments, either on the government or on Canadians. Instead, it simply provides additional clarity and legal certainty.

Contact

Mesmin Pierre
Director General
Trademarks Branch
Canadian Intellectual Property Office
Innovation, Science and Economic Development Canada
Telephone: 819-994-4600