Canada has implemented a Patent Term Adjustment (PTA) system to account for unreasonable delays by the Canadian Intellectual Property Office (CIPO) in issuing a patent. The PTA system effectively comes into force today, with PTA potentially available for patents issuing on or after December 2, 2025.
The new PTA system is discussed in detail in our previous article. In summary:
- PTA is available only for a patent granting on an application having a filing date on or after December 1, 2020.
- Only patents issued on or after December 2, 2025 can be eligible for PTA.
- An application for PTA must be filed within three months after issuance of the patent, and an official fee of CAD $2567.50 (2026 fee) must be paid.
- If PTA is granted, annual maintenance fees are payable to maintain the patent in force during the additional term that extends beyond the original 20-year term of the patent.
- PTA is concerned with the cumulative time CIPO has the application in its hands for processing. Applicant delay has minimal effect on PTA.
- Deferring the examination request and fee until closer to the deadline for requesting examination improves the likelihood that PTA will be available and minimizes deductions from PTA. The likelihood of PTA is greater if the date that is three years from the date examination was requested is later than five years from the filing date, or five years from the date of national phase entry in the case of a PCT national phase application.
- Because issuance of a third Examiner’s Report or filing a Request for Continued Examination (RCE) effectively terminates potential accrual of PTA, applicants should consider making early amendments that facilitate compact prosecution.
- It appears likely that few patents will qualify for any PTA, let alone substantial PTA. As the cost of a PTA application is significant, patentees may wish to make their own preliminary calculations to assess whether a PTA application appears justified. Smart & Biggar LP will provide a preliminary PTA assessment when reporting issuance of a patent.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.