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PATENT LAW TREATY CHANGES REQUIRED TO CANADIAN LAW & PRACTICEPrepared for the Canadian Intellectual Property Office (CIPO) Page 1 The following analysis seeks to identify the changes that will be required to be made to Canadian law and practice in order for Canada to comply with the Patent Law Treaty. Headings for PLT Articles and Rules are included below only where requirements for change have been identified.
The following abbreviations are used throughout this document: CPA for Canadian Patent Act; CPR for Canadian Patent Rules; CPO for Canadian Patent Office; PCT for Patent Cooperation Treaty and PLT for Patent Law Treaty. ARTICLE 5 & RULE 2 (FILING DATE)Indication that patent sought The filing date requirement in s.93(a) CPR [i.e. "an indication in English or French that the granting of a Canadian patent is sought"] must be changed to conform to the requirement set out in PLT A.5(1)(a)(i) [i.e. "an express or implicit indication to the effect that the elements are intended to be an application"]. PLT A.1(ii) defines "application" to mean "an application for the grant of a patent, as referred to in Article 3". PLT A.5(2)(a) would permit Canada to require the PLT A.5(1)(a)(i) indication to be in English or French. Name and address The filing date requirements in s.93(b) and (c) CPR [i.e. "the name of the applicant" and "the address of the applicant or of a patent agent"] must be changed to conform to the requirement set out in PLT A.5(1)(a)(ii) [i.e. "indications allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office"]. Some flexibility in implementing the PLT A.5(1)(a)(ii) requirement is given in PLT A. 5(1)(c) which provides: "For the purposes of the filing date, a Contracting Party may require both information allowing the identity of the applicant to be established and information allowing the applicant to be contacted by the Office, or it may accept evidence allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office, as the element referred to in subparagraph (a)(ii)." PLT A.5(2)(a) would permit Canada to require the PLT A.5(1)(a)(ii) indication to be in English or French. Description The filing date requirement in s.93(d) CPR [i.e. "a document, in English or French, that on its face appears to be a description of an invention"] must be changed to conform to the requirement set out in PLT A.5(1)(a)(iii) [i.e. "a part which on the face of it appears to be a description"]. PLT A.5(1)(b) provides that a "Contracting Party may, for the purposes of the filing date, accept a drawing as the element referred to in subparagraph (a)(iii)". In accordance with PLT A.5(2)(b), the "part referred to in paragraph (1)(a)(iii) may, for the purposes of the filing date, be filed in any language". Fee The filing date requirement in s.93(e) CPR [i.e. "the application fee set out in item 1 of Schedule II"] must be deleted since PLT A.5(1) does not permit fees to be a filing date requirement. The reference to "fees" in s.28(1) CPA, and s.28(2) CPA in its entirety, should also be deleted. In accordance with PLT A.6(4),(7)&(8) Canada will be able to require, where the filing fee has not been paid at the time of filing, that the fee be paid within a specified time thereafter failing which the application could be considered to be abandoned (but the filing date would be maintained). PLT A.12 would require any such abandoned application to be subject to reinstatement under certain conditions. The PLT leaves Contracting Parties free to establish the amount of any fees to be paid and Canada could thus require a penalty fee to be paid whenever a filing fee is paid subsequent to the filing date. The PLT provides two options that Canada could follow in setting time limits for the payment of filing fees: i) in accordance with PLT A.6(7)&(8) and R.6(1), Canada could, at any time after filing, send a notification requiring the applicant to pay the filing fee (together with any penalty fee) within not less than two months from the date of the notification (If notification is not possible because indications allowing the applicant to be contacted by the office have not been filed, PLT Rule 6(2) provides for a time limit of not less than three months from the initial filing.); and ii) in accordance with PLT A.6(4) and R.6(3), Canada could specify that the initial time limit for payment of the filing fee was one month after the filing of the application and then, at any time after the expiration of that one month period, send a notification requiring the applicant to pay the filing fee (together with any penalty fee) within one month from the date of the notification. Non-compliance with minimum filing date requirements PLT A.5(3)&(4) will require the CPO to notify any applicant whose application does not comply with the minimum filing date requirements and to give the applicant at least two months from the date of the notification to comply and obtain a filing date without any need to re-file and pay new fees. The filing date would be the date on which the last required element for a filing date was received. Although the CPA and CPR do not currently require the CPO to act in this way, the CPO does comply as a matter of practice and this would be sufficient for Canada to be in compliance with these PLT obligations. Consideration could, however, be given to amending the CPR to make such a procedure mandatory. Missing part of description of drawing PLT A.5(5) obliges an office, where it, in establishing the filing date, finds that a part of the description or a referenced drawing appears to be missing, to promptly notify the applicant. This provision does not require an office, in establishing the filing date, to make a check of whether a part of the description or a drawing is missing. As a matter of practice, the CPO already complies with the notification requirement under PLT A.5(5). The CPR could be amended to make such notification mandatory but this is unnecessary. PLT A.5(6) sets out mandatory rules to be followed in establishing the filing date when a missing part of the description or drawing is filed. This will require amendment of s.93 CPR and probably also s.28(1) CPA.
For the purposes of PLT A.5(6)(a), Canada will have to establish a time limit for filing a missing part of the description or drawing which in view of PLT R. 2(3) must be at least two months from notification or, if no notification, two months from the date on which any element of the application was filed. If a missing part of the description or drawing is filed during this period, it appears that it must not be treated according to the usual amendment rules (i.e. accepted if no new matter) but rather in accordance with paragraphs (a), (b) and (c) of PLT A.5(6). Paragraph (a) states that, subject to paragraphs (b) and (c), the filing date shall be the later of the date on which the missing part of the description or drawing is received and the date on which all filing date requirements are satisfied. Paragraph (b) provides that (subject to certain conditions that a contracting party may impose as discussed below in the following paragraph) the missing part of the description or drawing must be included in the application without loss of filing date if the missing part or drawing is contained in a priority document and priority based on that document was claimed at the earliest date on which any element of the application was filed. Paragraph (c) permits an applicant to withdraw a later filed missing part of the description or missing drawing in order to avoid the date of receipt of that part or that drawing being accorded as the filing date under subparagraph (a).
Although PLT A.5(6)(b) is mandatory in requiring contracting parties to establish a regime allowing a missing part of the description or drawing to be included without loss of filing date where they are contained in a priority document, that paragraph and PLT R.2(4) allow contracting parties, at their option, to make this subject to a number of requirements and Canada will thus need to decide which if any of these it wishes to impose. PLT R.2(4) provides: "Any Contracting Party may, subject to Rule 4(3), require that, for the filing date to be determined under Article 5(6)(b): (i) a copy of the earlier application be filed within the time limit applicable under paragraph (3); (ii) a copy of the earlier application, and the date of filing of the earlier application, certified as correct by the Office with which the earlier application was filed, be filed upon invitation by the Office, within a time limit which shall be not less than four months from the date of that invitation, or the time limit applicable under Rule 4(1), whichever expires earlier; (iii) where the earlier application is not in a language accepted by the Office, a translation of the earlier application be filed within the time limit applicable under paragraph (3); (iv) the missing part of the description or missing drawing be completely contained in the earlier application; (v) the application, at the date on which one or more elements referred to in Article 5(1)(a) were first received by the Office, contained an indication that the contents of the earlier application were incorporated by reference in the application; (vi) an indication be filed within the time limit applicable under paragraph (3) as to where, in the earlier application or in the translation referred to in item (iii), the missing part of the description or the missing drawing is contained." Although technically, as noted above, it would not appear that the normal amendment procedure can be applied when a missing part of the description or drawing containing no new matter is filed within the time limit established under PLT A.5(6)(a), in practice the same effective result could be obtained if the office advised an applicant filing a missing part or drawing within that period that it has two choices: 1) accept the date of filing of the missing part or description as being the filing date (as long as all other filing date requirements have been satisfied and unless PLT A.5(6)(b) applies); or 2) withdraw the missing part or drawing, as allowed under PLT A.5(6)(c) and resubmit the missing part or description after the time limit as part of a voluntary amendment. Because of the complicated nature of PLT A.5(6) and its interface with the amendment procedure, it would appear desirable for Canada to prescribe as the time limit for PLT A.5(6)(a) the shortest time limit permitted by PLT R.2(3). Reference filings S.28 CPA will require amendment to accommodate the requirement in PLT A.5(7)(a) that contracting parties accept, at the time of filing, the replacement of the description and any drawings in an application by a reference to a previously filed application subject to compliance with the requirements of PLT R.2(5). PLT R.2(5)(a) requires the reference to indicate that, for the purposes of the filing date, the description and any drawings are replaced by the reference to the previously filed application and that the reference also indicate the number of that application and the office with which that application was filed. A contracting party, if it wishes, may also require that the reference indicate the filing date of the previously filed application. PLT R.2(5)(b) permits a contracting party to require a copy, or a certified copy, or where appropriate, a translation of the previously filed application. PLT R.2(5)(c) permits a contracting party to permit references to be made only to a previously filed application that had been filed by the applicant or his predecessor or successor in title. Amendment procedures The implementation of PLT A.5(6) and (7), relating to the handling of missing parts of the description or drawings and to reference filings, may require consequential amendments to s.38.2(2) and (3) CPA e.g. to allow amendments to be based on missing parts that are contained in a priority application and that are submitted in accordance with PLT A.5(6)(b). Provisional protection As a result of changes to Canadian law required by various PLT provisions (such as the requirement to accept foreign language documents for filing date purposes; the requirement to accept reference filings; the requirement to provide restoration of the priority right; and the requirement to provide for reinstatement of rights for missed time limits), there may be rare cases where an application consisting only of a foreign language specification or a reference number becomes open to public inspection under s.10 CPA. As a result, it may be desirable to amend s.55(2) CPA to provide that liability to pay reasonable compensation begins only after an English or French copy of the specification becomes open to public inspection under s.10 CPA. Go to Page 2 | Consultation and
Discussion | Text of letter requesting
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Last Modified: 2004-06-21 |  |
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