October 10, 2019
By Sam Frost and Denver Bandstra
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 the previous articles1, this series 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.
Divisional Patent Applications
While the new Patent Act and Rules change a number of technical aspects pertaining to divisional applications, the requirements for divisional applications will remain substantially the same once the new Rules come into force.
Divisional applications are distinct patent applications that share the subject matter of an original application. The original application can be the first application or even a divisional application itself so long as the new divisional application is filed within the relevant time periods discussed in greater detail below. When an original patent application claims more than one invention, one or more divisional applications will be required to pursue claims to the additional inventions, because the Patent Act only permits one invention to be claimed in each patent application.
Under both the current and new Rules, if a patent application claims more than one invention, an Applicant may: (a) choose to limit the claims of that application to one invention and voluntarily file divisional applications for each of the other inventions; or (b) claim each of the inventions in the original application and have the Commissioner issue a non-unity of invention objection and require the Applicant file divisional applications for each of the inventions. As it is often unclear if the claims do cover more than one invention, it is generally recommended to use option (b). More importantly, option (b) is preferable to avoid issues of double patenting, because a divisional application filed in response to a non-unity of invention objection is insulated from subsequent double patenting attacks, particularly those based on ‘obviousness-type’ double patenting. Terminal disclaimers are not available in Canada to overcome double patenting attacks.
When the new Rules come into force, Applicants will still be able to file divisional applications at any time before the original application has issued. In addition, the new Rules will still allow divisional applications to be filed even if the original application goes abandoned; an Applicant can file a divisional application before the later of the deemed abandonment and the end of the period for reinstatement. Also under the new Rules, if the original application is refused, a divisional application can be filed before 6 months from the mailing of the refusal or, if there is an appeal, 2 months from when the appeal process ends.
Under the new Rules and unchanged from previous practice, when filing a divisional application, the Applicant must provide the Patent Office with: (a) a petition stating that the application is a divisional of [application number of original application]; (b) one or more claims; (c) a description that does not introduce new matter when compared to the original application; (d) filing fees; and (e) maintenance fees from the filing date of the original application to the presentation date of the divisional application (i.e. the date on which all prescribed requirements for the divisional application are received by the Patent Office). Additionally, the new Rules require that at least one Applicant of the divisional application is an Applicant of the original application.
Many of the changes in the Rules provide Applicants with more flexibility during the filing process. For example, if not provided or incorrect in the petition, the application number of the original application can be provided and/or corrected within 3 months from the presentation date.
Further, filing fees may be paid late. For missing fees, the basic application fee and a late fee must be paid within 3 months of a Notice from the Commissioner, and maintenance fees due within the later of 2 months of a separate Notice and 6 months from the presentation date.
Many actions taken on the original application are considered to have been taken on the divisional so long as they are taken on or before the presentation date, including a claim to small entity status, requesting priority, and providing the copy of the priority document and any required translation.
The most substantial change to divisional applications introduced by the new Patent Rules is the timeline for requesting examination. Under the new Rules, once a divisional application is filed, the Applicant must request examination of that divisional application prior to the later of 4 years from the filing date, i.e. the filing date of the original application, and 3 months from the presentation date. Under the current Rules, it is the later of 5 years from filing and 6 months from the presentation date.
For divisional applications that have a presentation date after October 30, 2019, and originate from an original application filed prior to October 30, 2019, the Applicant must request examination prior to the later of 5 years from the filing date and 3 months from the presentation date. Therefore, as was discussed with regards to PCT Applications2, to take advantage of the longer period to request examination for divisional applications in Canada, Applicants should ensure that their divisional applications are filed prior to October 30, 2019.
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