September 19, 2019
By Andrea Berenbaum
In 2014, Canada’s patent law was amended to comply with Canada’s obligation under the Patent Law Treaty (PLT), but implementation required amending the Patent Rules. The Patent Rules have now been finalized, and amendments to both the Patent Act and Rules will come into force on October 30, 2019 (CIF).
As mentioned in our previous two articles1, this series of articles will cover the most significant amendments that affect users of the system, and in the transition to the new regime, will discuss options available to Applicants.
New Mechanism to Withdraw Notice of Allowance
One change expected to be welcomed by applicants is a new mechanism for amendment after a notice of allowance is sent. Under the current regime, after a notice of allowance has been mailed and prior to the payment of the final fee, the only means for making substantive amendments is to allow the application to go abandoned by not paying the final fee. Such applications can then be reinstated within 12 months by submitting a request for reinstatement along with the final fee and a reinstatement fee. Any type of voluntary amendment ordinarily allowable under Canadian patent practice may be entered at this point and the application will be subject to further examination.
All requests for reinstatement under the current regime are as of right. In light of this, and because there is no other option, Canadian patent practitioners generally feel there is low risk involved in using this approach to make substantive amendments after allowance. However, we appreciate the aversion applicants and foreign agents may have towards intentionally abandoning an application that they wish to issue as a patent!
Thankfully, for notices of allowance that are issued on or after CIF, it will be possible to request a notice of allowance be withdrawn. The application will then be subject to further examination where amendments can be introduced. This request must be made within four months of the notice of allowance being sent and prior to paying the final fee. The government fee of $400 CAD for the request appears quite reasonable in that it is only slightly higher than the government fees for the current mechanism (fees for reinstating an application would be $200 CAD) and does not require abandoning the application. Another advantage is that, unlike abandoning an application, requesting the withdrawal of a notice of allowance will not result in a loss of special order status.
To save costs and expedite prosecution, it remains preferable to make all substantive amendments prior to the application being allowed. Such amendments can be made in a response to an Office Action or in a separate voluntary amendment. However, the new procedure for withdrawing a notice of allowance adds a convenient and time-saving option where amendments are desired after an application has been allowed.
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