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Request for Examination under the New Patent Rules

February 11, 2020

On October 30, 2019 the new Canadian Patent Rules came into force.  The new Patent Rules include a number of significant changes, including changes related to requesting examination of applications.  When a patent application is filed in Canada, either directly or under the PCT, there is a statutory requirement to request examination of the application within a set time period and pay a prescribed fee.  The time period has been shortened under the new Rules.

Filing date before Oct. 30, 2019

For applications having a filing date prior to October 30, 2019, the deadline to request examination and pay the prescribed fee is five (5) years after the filing date.  For Canadian applications filed under the PCT, the filing date is the international filing date.

In the case of divisional applications, examination must be requested within the later of: five (5) years from the filing date of the original (“parent”) application, and six (6) months from the presentation date (i.e. submission date of required documents & information) of the divisional application.

Transitional provisions apply in the case of a divisional application filed on or after October 30, 2019 where the parent application was filed before October 30, 2019.  In this case, examination must be requested within the later of: five (5) years from the filing date of the parent application, and three (3) months from the presentation date of the divisional application.

Filing date on or after Oct. 30, 2019

For applications having a filing date on or after October 30, 2019, the deadline to request examination and pay the prescribed fee is four (4) years after the filing date.  For Canadian applications filed under the PCT, the filing date is the international filing date.

In the case of divisional applications, examination must be requested within the later of: four (4) years from the filing date of the parent application, and three (3) months from the presentation date of the divisional application.

 

To avoid abandonment, Applicants are advised to respect the reduced timelines for requesting examination of Canadian patent applications and any subsequent divisional applications.