Patenting can be expensive.\u00a0 As a company expands their patent portfolio and files in multiple countries, often it becomes necessary to cull certain patents\/applications in a portfolio to keep costs in check.\u00a0 Culling patent rights is quite simple in principle \u2013 in practice it merely involves not paying a fee due to a patent office and\/or not taking a particular action required and a patent right will lapse.<\/p>\n
On the other hand, selecting which patent or patent application in a portfolio to abandon isn\u2019t always a simple decision.\u00a0 A patent right generally lasts for 20 years (with exceptions) and so identifying which patents\/applications to jettison may involve predicting their future value \u2013 something that is inherently imprecise.\u00a0 So what if you made the wrong decision and want to reinstate a patent right after abandonment?\u00a0 Then what?<\/p>\n
Most countries have legal back-stops that allow patent applicants to reinstate patent rights within strict time lines.\u00a0 However, Canada is currently more permissive than most countries in this respect.\u00a0 If a patent or application expires or goes abandon, in many instances an applicant can reinstate rights within one year of the expiration\/abandonment date, provided an additional fee is paid, among meeting other legal requirements.\u00a0 No reason for failure to observe the missed deadline needs to be provided.\u00a0 Relatively speaking, this system is quite user friendly.<\/p>\n
However, this is all changing on October 30, 2019.\u00a0 Many of the changes will significantly complicate mechanisms for restoration of rights after a missed deadline.<\/p>\n
Under the new patent regime in Canada, in a nutshell, there will be different reinstatement schemes that vary in complexity and stringency depending on the nature of the missed deadline.\u00a0 Without going into too much legal detail, one of the schemes invokes a due care standard in which the reasons for the failure to meet a deadline must be submitted to the Commissioner within certain time frames after the missed deadline.\u00a0 The Commissioner determines whether such failure occurred \u201cin spite of the due care required by the circumstances having been taken\u201d.[1]\u00a0 For example, this due care standard applies within a certain time period after a maintenance fee payment deadline is missed. \u00a0This is a significant departure from the current \u201cas of right\u201d system for reinstatement of patent rights.\u00a0 In addition, in some instances competitors will have a safe harbour for infringement after certain timelines subsequent to a missed deadline.<\/p>\n
So why introduce such complicated changes?\u00a0 The changes to Canadian patent law were required for alignment with the Patent Law Treaty (PLT), which is an international treaty aiming to harmonize and formalize procedures among different countries.\u00a0 While the goals of the PLT were meant to simplify formal procedures, Canada\u2019s current laws on revival of rights are now far less stringent than other countries.\u00a0 Harmonization thus has the opposite effect of streamlining procedures for reinstatement of rights.<\/p>\n
So what is the moral of the story?\u00a0 Since the system is less user-friendly, it will become necessary to work even more closely with your patent agent to make sure the stricter legal requirements are met for revival of rights.\u00a0 So long as you adhere to the new requirements, it is still possible to successfully revive patent rights in Canada.\u00a0 In fact, in some instances, the late fee penalties will be less costly than under the current regime.\u00a0 Currently, the reinstatement fee is $200.00, but under the new regime, provided the new timelines are met, will be only $150.00 for revival of rights for failure to pay a maintenance fee.\u00a0 So there is a small silver lining.<\/p>\n
However, navigating the new laws will definitely require more legal savvy.\u00a0 It is important to realize that there may be serious consequences for failure to adhere to certain time limits and, as noted above, in many instances, it will not be possible to remedy such failure merely by payment of a reinstatement or late fee.\u00a0 Given the complexity of the new patent regime, legal advice should always be sought for a particular case at hand with respect to the restoration of rights and the specific deadlines involved.<\/p>\n
[1] Section 73(3) of the new Patent Act<\/em>.<\/p>\n","protected":false},"excerpt":{"rendered":" Patenting can be expensive.\u00a0 As a company expands their patent portfolio and files in multiple countries, often it becomes necessary to cull certain patents\/applications in a portfolio to keep costs in check.\u00a0 Culling patent rights is quite simple in principle \u2013 in practice it merely involves not paying a fee due to a patent office […]<\/p>\n","protected":false},"author":3,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"wds_primary_category":0,"wds_primary_expertise_area":0,"footnotes":""},"categories":[161],"tags":[],"class_list":["post-4676","post","type-post","status-publish","format-standard","hentry","category-publications"],"acf":[],"_links":{"self":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts\/4676","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/users\/3"}],"replies":[{"embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/comments?post=4676"}],"version-history":[{"count":2,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts\/4676\/revisions"}],"predecessor-version":[{"id":4678,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts\/4676\/revisions\/4678"}],"wp:attachment":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/media?parent=4676"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/categories?post=4676"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/tags?post=4676"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}