New Canadian Patent Laws More Aligned With U.S.

Canada has substantially amended its Patent Act and Patent Rules for the first time in decades. The amendments are intended to better align patent prosecution in Canada with its major trading partners, including the U.S. Two noteworthy advantages of the Canadian system have been retained. Canadian applications do not require payment of excess claims fees — there are no additional fees owing for a patent application based on the number of claims in the application — and examination can be accelerated, or deferred for up to four years (previously five years).

Among many other changes, new provisions in the Act provide for “third-party rights,” where third parties who undertake infringing actions in good faith within a certain time are granted a defense against infringement proceedings initiated by a patent holder. The typical Canadian Patent Office action will now require a response within four months, bringing the Canadian standard closer to the U.S. The new changes provide for a more robust prior use defense against infringement proceedings.

While the changes to the Act and the Rules do align Canadian patent prosecution more closely with the U.S., Canadian patent prosecution continues to include unique challenges of which U.S. practitioners should be mindful when advising clients. Clients will need more robust and responsive systems to manage the time-sensitive, shortened response times, and will need to be aware of the risk of third-party rights or prior use rights negating any investments in developing IP.