Julie Gauvreau Partner, Lawyer and Patent Agent and Trademark Agent

Canadian Patent Practice has undergone several changes in recent years, in many cases to fulfill the requirements of various international treaties/agreements, including those of the Patent Law Treaty (PLT) and the Comprehensive Economic and Trade Agreement (CETA). On July 3, 2021, the Canadian government published proposed amendments to the Patent Rules, primarily to further streamline Canadian patent examination to pave the way for a future patent term adjustment (PTA) system in Canada as per the Canada-United States-Mexico Agreement (CUSMA), as well as to bring Canadian practice in line with upcoming Patent Cooperation Treaty (PCT) sequence listing requirements. The proposed amendments have been published for a 30-day consultation period and may be subsequently modified. Therefore, it is unknown which of the proposed changes will be retained and in what form, and when the final version of the amended Rules will come into force. However, the proposals provide a preview of the types of changes being considered by the Canadian Intellectual Property Office, which notably include the following: Excess claim fees Like many jurisdictions, Canada is considering the introduction of government fees for excess claims. The proposal is a fee on the order of $100 CAD for each claim beyond 20 claims, which will be payable when requesting examination, and will be re-assessed upon allowance to determine if further claim fees are due when paying the final fee based on changes in the number of claims during examination. It will thus be prudent to voluntarily amend the claims prior to or when requesting examination to control such fees. Request for Continued Examination (RCE) The objective of the new system is to reduce the pendency of patent applications, with a goal of putting an application in condition for allowance with no more than three Examiner’s reports. Continuing examination beyond three reports would require the filing of an RCE, which would entitle the Applicant to up to two further Examiner’s reports. The filing of an RCE is also proposed for returning an allowed case to examination, which would replace the current (and relatively recent) mechanism to withdraw an application from allowance. The proposed RCE fee is on the order of $816 CAD. Conditional Notice of Allowance (CNOA) Rather than issuing further Examiner’s reports relating to any outstanding formalities, the Canadian Intellectual Property Office will have a new tool to issue a CNOA, indicating that the application is in condition for allowance as long as certain outstanding minor defects are corrected. This provides a more efficient path for Applicants in such situations to both correct the defects and pay the final fee, following which the case would proceed to grant. New PCT Sequence Listing Standard In view of the upcoming introduction (on January 1, 2022) of the new PCT “ST.26” sequence listing standard, Canada plans to bring its sequence listing requirements in line with those of the PCT, which will similarly be adopted by patent offices around the world. Housekeeping matters Otherwise, the proposed amendments aim to provide greater flexibility for Applicants in certain areas such as the correction of various types of errors and fee payments, notably in view of the practical application of recent changes to Canadian patent practice gleaned since they came into force in late 2019. Stay Tuned! As noted above, the final form and timing of the upcoming changes are unknown. Please stay tuned for upcoming news in due course, and do not hesitate to contact a member of our patent team for guidance through the ultimate transition.

The new Patent Rules, as well as certain amendments to the Patent Act, came into force on October 30, 2019. These changes implement the Patent Law Treaty and reduce the risk to applicants of a loss of rights but also bring about practice changes worthy of mention. Canadian national phase of a PCT application For applications filed in Canada via PCT national phase entry: A little bit faster… Under the new system, the deadline to request examination will be reduced to 4 years from the PCT international filing date (currently 5 years). The shortened deadline will apply to cases having a PCT international filing date on or after October 30, 2019. Further, the deadline to respond to an Office Action will be reduced to 4 months with possible fee-based extension to 6 months (currently 6 months with no extension).That means that prosecution shall take less time overall. “Late” national phase entry It is currently possible to enter the CA national phase past the 30-month deadline and up to 42 months from the priority date, as a matter of right. Under the transitional provisions, the current system shall continue to apply to PCT applications with a PCT international filing date prior to October 30, 2019. Subsequently, for cases with a PCT international filing date on or after October 30, 2019, such “late” national phase entry will only be possible if missing the original 30-month deadline was unintentional. A statement must be submitted to that effect. The Canadian Intellectual Property Office (CIPO) will have the discretion to accept or refuse such declarations. So it will be wise to consider the 30-month deadline a hard deadline for CA national phase entry. Missing deadlines for requesting examination or paying maintenance fees Under the current system, if such a deadline is missed, a further 12 months would be available via the abandonment/reinstatement system (for applications) or the late payment system (for patents), as a matter of right. The new system will provide an additional safeguard to applicants, as missing such deadlines will trigger the issuance of a CIPO notice requesting that the required action be taken within a new deadline. However, missing the new deadline will result in a new category of abandonment requiring reinstatement under a “due care” standard. A statement must be submitted to show “due care”. Once again CIPO will have discretion to accept or refuse declarations of “due care”. This new system will apply to any deadline to request examination or pay a maintenance fee that falls on or after October 30, 2019. The prudent approach will be to avoid relying on a showing of due care by meeting all deadlines. Restoration of priority Canadian practice will come into line with the restoration of priority provisions of the PCT. This extends the usual 12-month priority period by a further 2 months if missing the original 12-month deadline was unintentional (the standard to be used in CA), and will apply to cases with a PCT international filing date on or after October 30, 2019. Therefore, applicants can rest easy that such a restoration of priority will also be available in Canada. Certified copies of priority applications Under the new system, it will become necessary to file a certified copy of any priority applications (or refer to a digital library to access the document). Note that satisfying the PCT certified copy requirements during the international phase will also satisfy the new Canadian requirements for the national phase application. “Regular” Canadian applications For Canadian applications directly filed with the CIPO (i.e., not via the PCT), equivalent changes to those noted above (with the exception of “late” national phase entry, which is not applicable) will be implemented by comparable provisions. The following additional changes are also noteworthy: Certified copies of priority applications For Canadian applications claiming priority under the Paris Convention, it will become necessary to file a certified copy of any priority applications or refer CIPO to a digital library such as WIPO-DAS to access the document. The deadline will be the later of 4 months from filing and 16 months from priority. It will of course be good practice to have such certified copies available upon filing in Canada. Easier to secure a Canadian filing date It will be easier to obtain a filing date for such direct-filed applications, as various requirements may be fulfilled shortly after filing. Notably, a translation into English or French, if applicable, may be submitted post-filing, in contrast to Canadian national phase applications filed via the PCT. It will nonetheless be good practice to have all documents and information ready at filing. We can show you the way! We can help guide applicants as we transition to this new era of Canadian patent practice. Feel free to contact a member of our team!

On June 30th, 2017, in a landmark decision, the Supreme Court of Canada rejected the relatively new so-called “promise doctrine”. The lower courts had found the patent invalid based on this doctrine in that the patent specification attributed certain advantages to the invention that were not soundly predicted at the Canadian filing date.   The Trial Division of the Federal Court had even termed the “promise of the patent” as “the yardstick against which utility is measured”. Canadian patent 2,139,653 claimed the gastric acid lowering drug (proton pump inhibitor) esomeprazole sold under the Nexium® brand.  Two so-called promises were identified by the lower court: 1) that the drug would work as a proton pump inhibitor in that it would reduce gastric acid; and 2) that the drug would yield improved pharmacokinetics with less inter-patient variability.  The first promise was not in dispute but the second one was deemed unfulfilled and directly led to a finding of invalidity.  The lower court felt bound to rule that the patent was invalid because one of the two identified promises was not soundly predicted.  The Federal Court of Appeal affirmed. Goudreau Gage Dubuc, one of the leading intellectual property firms in Canada, joins Lavery Lawyers. The two firms have integrated their operations in order to offer their clients a complete range of legal services. The integration consolidates Lavery’s multidisciplinary approach. As the largest independent law firm in Quebec, Lavery is continuing to grow by adding the expertise brought by lawyers, patent agents and trademark agents specializing in intellectual property law, who belong to one of the most respected teams in the country. To learn more, visit www.YourIPLawyers.ca. --> The Supreme Court unequivocally rejected the “promise doctrine” and reversed the findings of the lower courts.  The “promise doctrine” was deemed to be the wrong approach, being unsound and risking to deprive an otherwise useful invention of patent protection.  Moreover, the “promise doctrine” was found to be antagonistic to the bargain on which patent law is based wherein inventors are asked to give fulsome disclosure in exchange for a limited monopoly. The Supreme Court ruled that a patent providing at least one credible use related to the subject-matter of the invention was sufficient to establish utility.  Credible utility is established by either demonstration or sound prediction as of the filing date. This decision is of profound significance to understanding the utility requirement for obtaining a valid Canadian patent.  Goudreau Gage Dubuc LLP acted as intervener in this case on behalf of FICPI (Fédération internationale des conseils en propriété intellectuelle).  FICPI was jointly represented on a pro-bono basis by Fasken Martineau DuMoulin LLP,  attorneys Julie Desrosiers, Marie Lafleur and Kang Lee and by Goudreau Gage Dubuc LLP, attorney Alain M. Leclerc.  A link to the decision can be found here: AstraZeneca Canada Inc. v. Apotex Inc.

Although it is possible to patent certain plant-related innovations, another law exists in Canada drawn to plant protection, that is not as well-known as the Patent Act, but possesses characteristics conferring it significant advantages over the latter. The Plant Breeders’ Rights Act (PBRA) was adopted 25 years ago in Canada and was recently modernized 1 to improve the protection that it confers and for harmonization with corresponding laws around the world and with UPOV 1991 (International Union for the Protection of New Varieties of Plants), the international treaty on which they are based. The main objective of this modernization is to promote the development of and access to improved plant varieties in Canada; such as varieties with higher yield, greater resistance to pests, diseases, salt, or that are more adapted to local conditions. OperationBriefly, the PBRA may protect any plant variety that is: Distinct: clearly distinguishable from other commonly known varieties by at least one characteristic; Uniform: homogeneity between seedlings of the variety; Stable: stable in its essential characteristics from one generation to the next; and New: neither its propagating material (seeds, tubers, whole plants, etc.), or its harvested material (fruit, grains, etc.) has been sold: A. in Canada more than one (1) year before filing in Canada 2, a sale being broadly defined to include advertising, delivery for sale, etc.; and B. abroad more than four (4) years before filing in Canada (or more than 6 years in the case of trees and vines). One peculiarity of this system is the need to conduct UPOV-compliant comparative trials in fields or greenhouses in Canada or abroad 3 to demonstrate that the variety meets criteria (1) to (3). When the comparative trial results confirm that the criteria are met, when the denomination (i.e. name) selected for the variety is deemed acceptable, and when the opposition period has expired, the application is allowed. Comparative characteristics between the Patent Act and PBRA systems Plant types: Plant varieties that may be protected by the PBRA include not only plants derived from genetic engineering but also those derived from natural selection or deliberate crossing, for which the genetic profile is generally not known. The Patent Act requires that an innovation be described in sufficient detail to enable its reproduction. As a result, when one wishes to patent a new plant 4 having a novel and advantageous property (e.g., early ripening), it is generally necessary to describe the molecular feature (e.g., nucleic acid and/or protein sequence) responsible for this attribute. When the genetic source of the novel property is unknown, it is difficult to patent the plant unless a biological deposit of the plant propagating material is made, which significantly restricts the scope of protection afforded by the patent. Plant varieties derived from crosses or natural selection are rarely genetically characterized, which therefore makes them difficult to patent. The PBRA does not have such requirements and is perfectly tailored to protect these varieties. Term: The protection term granted by the PBRA is longer than that afforded by the Patent Act: 20 years from the grant date under the PBRA for all plants except vines and trees, which are entitled to 25 years from grant, compared to a patent term of 20 years calculated from the application filing date. Level of stringency: Plant Breeders’ Rights (PBR) are usually easier to obtain since the distinctiveness of a new variety is usually much easier to demonstrate than its inventiveness. Costs: The costs for obtaining a PBR are generally lower than those necessary for obtaining a patent. Scope: When patent protection is available for a plant variety, it usually provides a broader scope of protection than that afforded by a PBR. Conclusion Plant variety developers, such as researchers in the fields of agriculture and horticulture, seed developers, and farmers would benefit from knowing all the tools at their disposal to protect the fruits of their research, including the PBRA. The PBRA has attributes that allow it to protect innovations that are not necessarily conducive to protection under the Patent Act.  In situations where both laws apply, their respective characteristics should be carefully assessed to determine which system would be most beneficial in each case. Since these laws may offer complementary protection, one should also consider, if the budget allows, using both systems in parallel, in order to benefit from the advantages conferred by each. Please do not hesitate to contact us should you require further information regarding plant protection in Canada. February 27, 2015. New provision in amended PBRA. The amended PBRA facilitates the use of foreign trial results generated in the context of a PBR application in that country. Indirectly, since patents cannot generally claim a plant per se but only certain plant parts (e.g., plant cells, genes or plant-derived products), plant uses and plant breeding methods.