Amending the Patent Act to implement Cusma in Canada
The Canadian government unveiled Bill C-47 on April 20, 2023, which would amend the Patent Act’s regulations regarding patent term adjustments. The measure specifically extends the validity of a Canadian patent that was submitted on or after December 1, 2020, where the patent granting process has been inappropriate.
The Canada-United States-Mexico Agreement (CUSMA, also referred to as USMCA) is a free trade agreement between Canada, the United States, and Mexico that provides a legal framework of basic standards for the protection and enforcement of intellectual property rights in North America. Under CUSMA, Canadian patent applications filed on or after December 1, 2020, may be eligible for patent term modification if the Canadian Intellectual Property Office has subjected them to unreasonable prosecution delays.
The parties are required by CUSMA’s Article 20.44 to process patent applications “in an efficient and timely manner, with a view to avoiding unreasonable and unnecessary delays.” The patentee may request a patent term modification to make up for prosecution delays if an “unreasonable delay” arises. CUSMA defines an “unreasonable delay” as the latter of the following delays:
- greater than five years from the date of filing; or
- greater than three years from the request for examination.
Each signatory nation must implement CUSMA’s patent term modification rules by January 1st, 2025. Bill C-47, the Budget Implementation Act, which intends to provide for patent term modifications for arbitrary prosecution delays, is Canada’s proposal to amend the Patent Act in order to take CUSMA into consideration.
The patent will be qualified for an extra term with the adjustment term if it was issued following the latter of:
- Three years from the date examination was requested under section 35 of the Patent Act, and the prescribed fee has been paid; and
- Five years from:
a. in the case of PCT national phase applications and divisional applications, a “prescribed day” that is not yet established within legislation;The proposed patent adjustment term provisions of the Patent Act are not needed to take effect until January 1, 2025, in accordance with CUSMA. The House of Commons and the Senate will both evaluate and take public comments on the proposed revisions.
b. in all other cases, the filing date of the application.
The extended period will be equal to the number of days that the patent was delayed from being granted, less the “number of days that is determined under the regulations.” This extended term must be requested by the patentee, who will then get a certificate of the additional term after paying the required fee. It is not automatically granted.
– You can also check the Fee of Trademark In Canada here
– You could visit here to see Procedure of Canada Trademark Registration.
– You could visit here to check the required documents of filing trademark in Canada
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