Canada Is Introducing Patent Term Adjustment: Here’s What We Know

To comply with Canada’s obligations under the Canada-United States-Mexico Agreement (CUSMA), draft legislation proposing amendments to Canada’s patent laws, among other measures, was recently introduced in Parliament as part of omnibus Bill C-47, An Act to implement certain provisions of the budget tabled in Parliament on March 28, 2023. The draft legislation underwent its second reading on May 2, 2023.

The proposed amendments introduce Patent Term Adjustment (“PTA”). For now, the proposed amendments are solely to the Patent Act and require a series of amendments to the Patent Rules which will codify many of the particulars of the new PTA regime.

What do we know so far? According to the draft legislation:

  • PTA will come into force in Canada on January 1, 2025, or on any earlier day fixed by order of the Governor in Council.
  • PTA will apply to patents having a filing date that is on or after December 1, 2020.
  • The Commissioner of Patents will be required to grant an additional term for a patent if all of the following three conditions are met:
    1. The patent was issued after the later of:
      • the fifth anniversary of an “applicable day” (which has yet to be specified by way of amendments to the Patent Rules, but will presumably be the divisional application presentation date for a patent issued from a divisional application, the date of national phase entry into Canada for a patent issued from a Patent Cooperation Treaty (“PCT”) national phase application, and otherwise, the filing date); and
      • the third anniversary of the first day on which examination is requested and the examination fee (and, if applicable, the late fee) is paid;
    2. the filing date for the application for the patent was on or after December 1, 2020; and
    3. the patentee applies for the additional term, and pays the requisite fee, within three months after the day on which the patent is issued. Presumably, then, PTA will apply to patents granted within the three-month period immediately preceding the coming-into-force date.
  • The duration of the PTA will be the number of days between the later of the two anniversaries referenced above and the day on which the patent is issued, minus a number of days that is determined under the regulations (the subtracted days will likely account for applicant-caused delays).
  • Maintenance fees will be applicable to the additional term granted by the PTA, which will be subject to the same due care requirements currently imposed on maintenance fees in order to reverse a deemed expiry of the additional term in the event that any such maintenance fee is not paid on time.
  • The duration of an additional term granted under a PTA may be reconsidered by the Commissioner on the Commissioner’s own initiative or on application by any person, in which case the Commissioner may only shorten the duration of the additional term or dismiss the reconsideration. A person may also bring an action in the Federal Court against a patentee for an order to shorten the duration of an additional term granted under a PTA.
  • A Certificate of Supplementary Protection (or “CSP”, which extends the term of a patent directed to medicinal ingredients contained in a drug product that has experienced delays in regulatory approval) will run concurrently with any additional term granted under a PTA.

Importantly, the current version of the draft legislation is subject to change prior to the coming-into-force date. Aird & McBurney will continue to monitor developments. Please contact the author should you have any questions.