Canada's Proposed Patent Term Adjustment Framework Excludes Cases Of Unreasonable Delay By The Patent Office

Under this PTA framework, a patentee may apply for an additional term where their patent issued more than five years after the filing/national entry date, or three years after the date examination was requested, whichever is later.

The additional term would start on the expiry of the patent, and the duration of the additional term would be equal to the number of days between the patent issue date and these deadlines after subtracting the number of days that is determined under the Regulations

As a result, this initial legislative language left significant uncertainty as to what would be considered an "unreasonable" delay until the associated Regulations became available.

Canada has now published these Regulations as proposed amendments to the Patent Rules. These proposed amendments contain a significant number of periods of time which will be deducted from any adjusted term, including the broad exclusion of the periods of prosecution most likely to be associated with unreasonable delay.

The consultation period is open until July 2, 2024, and patentees should strongly consider raising any concerns before the proposed amendments become finalized.

Number of days to be subtracted

The days to be subtracted are set out in new proposed rule 117.03(1)(a) through (z.12). Under the proposed amendments, the number of "Days Determined Under the Regulations" to be subtracted from any applicable additional term will likely be extensive and in most cases may not properly compensate patentees for unreasonable delays in issuance of their patents.

The days defined by the Regulations to be subtracted from any adjusted patent term will include:

• Every day during which the patentee must take any action or pay a fee, such as providing further drawings, responding to an office action, submitting a translation or paying the final fee (regardless of whether the patentee acts promptly to take the required action).
• Every day that the Patent Office has deemed to have been initiated by the patentee, including every day after making a request for continued examination after having received three office actions (regardless of who is responsible for any delays during that time period).
• Every day during an application for judicial review of a decision of the Commissioner or Patent Office.
• Any day the Commissioner designates on the basis that operations at the Patent Office were significantly disrupted due to circumstances beyond the control of the Patent Office.

Other details at a glance

• The system comes into force on January 1, 2025.
• The earliest date an eligible patent may receive an additional term is on or after December 2, 2025.
• The deadline to apply for adjustment is within three months of issuance of the patent.
• The Standard Fee to request an additional term will be $2500, and if granted maintenance fees will also be due during any adjusted term.
• Any additional term will run concurrently with any applicable Certificate of Supplementary Protection.

Flaws in the proposed approach

Despite the intention of CUSMA, and the professed intention of the amendments to extend the term of a patent for "unreasonable" delays in prosecuting a patent application, very few patents are likely to qualify for any PTA if the proposed regulations are implemented. In fact, the Regulatory Impact Analysis Statement accompanying the proposed regulations expects relatively few applications to be filed, anticipating only 1129 applications over 10 years.

Under the proposed regulations, patentees will not be afforded even a single day to receive, review or respond to an office action (or other required step). There is no provision of a reasonable period of time to respond to the Patent Office before the "delay" in obtaining patent issuance is attributed to the patentee.

More glaringly, should a patent application be the subject of three office actions, necessitating a Request for Continued Examination, the Patent Office will consider the entire period of examination that follows to be delay attributable to the patentee, not the Patent Office, and therefore not an "unreasonable" delay to issuance.

This means that even if the Patent Office is unreasonably delayed in addressing a fourth or fifth office action, there is no adjustment to the patent term available to the patentee. It also assumes that multiple office actions were required by the patentee's actions, and not a failure by the Patent Office to raise clear objections in a timely manner.

In short, by deducting every single day that falls to the patentee to respond to the Patent Office, and completely excluding from consideration any period of time that occurs after the filing of a Request for Continued Examination, the proposed regulations effectively exclude all but the rarest patents from being eligible for term adjustment.

Consultation is open for one month

Anyone interested in these proposed amendments may make comments and submit representations to the Patent Office on the proposed rules by July 2, 2024. Given the deficiencies identified with the draft regulations, patentees should strongly consider engaging with the deficiencies in the Regulations during the consultation period.

Comments and representations can be submitted via the Canada Gazette website or via email, mail or other means to the attention of Virginie Ethier, Assistant Commissioner and Director General, Patent Branch, Canadian Intellectual Property Office, Department of Industry (email: cipoconsultations-opicconsultations@ised-isde.gc.ca, tel.: 819‑997‑2949), citing Canada Gazette Part I, Volume 158, Number 20: Regulations Amending the Patent Rules and Certain Regulations Made Under the Patent Act, published May 18, 2024.