Background
Canada has introduced legislation introducing patent term adjustments (PTAs) to compensate patentees for unreasonable delays caused by the Canadian Intellectual Property Office in granting patents. Canada has historically never had patent term adjustments, but they were mandated by the Canada-United States-Mexico Agreement (CUSMA) of 2020. Bill C-47 (which includes the PTA provisions) was tabled in Parliament on March 28th, 2023 and received Royal Assent on June 22nd, 2023. PTAs are scheduled to come in force January 1, 2025 unless an earlier date is ordered by the Governor in Council.
Eligibility for a Patent Term Adjustment
To be eligible for the grant of an additional term, the filing date of the application must be on or after December 1st, 2020. The patentee must apply for an additional term within three months of the patent being issued and pay a prescribed fee (which has not yet been set). Patents eligible for an additional term are those for which the patent is issued after the later of:
- The fifth anniversary of the “applicable day”; and
- The third anniversary of the first day on which a request for examination was made and the prescribed fees have been paid.
The “applicable day” is the date of filing of the patent application except for divisional applications and PCT National Phase applications. For the latter, the definition of “applicable day” is to be determined in upcoming regulations.
Timeframe and Duration of a Patent Term Adjustment
The additional term commences upon the expiry of the regular patent term and is conditional upon the patent remaining valid until the expiry of its regular term.
The PTA duration is equal to the time between the eligibility period (as described above) and the issue date. For example, for a patent that issued 6 years after the applicable day, where the fifth anniversary of the applicable day is later than the third anniversary of the request for examination, the PTA would be one year.
The calculation of the additional term is subject to deductions to be determined under future regulations. It is presumed that these deductions will be in accordance with Article 20.44 of the CUSMA, which under paragraph 4 states that the following periods may be excluded from the determination of a patent term adjustment:
- Periods of time that do not occur during the processing or examination of the patent application by the patent office;
- Periods of time that are not directly attributable to the patent office; and
- Periods of time that are attributable to the patent applicant.
It is likely that this will mean a “reset” or a deduction for any extensions of time or requests for continued examination made by the Applicant.
No Double Counting with CSPs
A Certificate of Supplementary Protection (CSP) extends rights for delay in the process of regulatory approval of medicines. PTA term runs concurrently with CSP term. CSP term and PTA term do not run one after the other.
Maintenance Fees
Annual patent maintenance fees will be due during the PTA term. It is noted that no maintenance fees are due during a CSP term.
Reconsideration of the Duration of a Patent Term Adjustment
The duration of a PTA may be reconsidered on the Commissioner’s own initiative or by application to the Federal Court.