Owners of Canadian patents may receive some good news in the form of a patent term extension. For strategic Canadian patents in a patent owner’s patent portfolio, such a patent term extension could provide significant value. The proposed extension recognizes that delays in patent application examination by the Canadian Intellectual Property Office (CIPO) may unintentionally penalize patent owners by shortening the length of time they may enforce a Canadian patent.
Current Canadian law provides a standard 20-year patent term, which begins on the filing date. According to a recent Consultation Document published by the CIPO, under this proposed patent term adjustment (PTA), “an additional term of protection could be granted to compensate for delays in the issuance of the patent.”
The CIPO has made great strides in the past decade to shorten the patent examination period. But in FY 2022-23, the average time between a request for examination and the patent issue date still was 32.3 months. The starting point for the additional term would be the number of days between application request and patent issuance. Then, days would be subtracted from that starting point, depending on a wide range of actions taken by the applicant during the application process. As a result, some patents may not qualify for an extension, even if they meet all other criteria.
The proposed PTA would take effect January 1, 2025 and would apply to patents with a filing date of December 1, 2020 or later. A Canadian patent would receive the additional term if it was granted:
- More than five years after an “applicable day”, or
- More than three years after requesting a patent examination, whichever is later.
For nationally-filed patent applications, the “applicable day” for the proposed PTA would be the date the application is filed in Canada. The applicable day for patents filed under the international Patent Cooperation Treaty (PCT) is still being determined, but according to the CIPO Consultation Document, “the earliest point in time that CIPO could begin processing a PCT national phase application is the national phase entry date in Canada. This date would be the proposed applicable day for those applications.”
It is important to note that the proposed PTA or patent term extension would not be automatically granted. Patent owners must apply for an extension and pay a fee within three months of the patent’s initial issuance. Accordingly, early consideration of a patent’s strategic importance in Canada should be evaluated and determined by patent owners.
The earliest date on which a patent could be theoretically eligible to receive an additional term would be December 2, 2025. The CIPO is gathering feedback through September 8, 2023 before finalizing this proposed PTA program by CIPO.
If you have questions about the proposed Canadian patent term extension or related matters, please contact the authors of this alert or the Womble Bond Dickinson attorneys with whom you usually work.