Getting patent term adjustment right

In a nutshell

Canada must implement a patent term adjustment (PTA) framework to offset administrative delay in granting patents under the terms of the Canada-U.S.-Mexico Agreement. Changes are needed to the proposed regulations under the Patent Act to specify how the PTA operates if the government is to fulfil its international obligations under the Canada-United States-Mexico Agreement, according to the CBA’s Intellectual Property Section.

International obligations

CUSMA’S Article 20.44 requires parties to compensate patentees for “unreasonable delays” in patent issuance. But how “unreasonable delays” are defined is rather stringent and effectively implements a “zero delay” policy, writes the Section.

“The CBA Section is concerned that the PTA regime, as set out in the Patent Act and the Proposed Regulations fails to fulfill Canada’s CUSMA obligation to restore lost patent term,” reads the submission.

Such a policy “fails to recognize the practical challenges faced by applicants and patent lawyers, such as the need for thorough review, coordination amongst legal teams and potential logistical challenges for international applicants that must contend with time zone differences,” the letter says.

Onerous and expensive process

The CBA submission points out that the proposed regulations establish a difficult, time-consuming and costly process for patentees to get compensated for unreasonable delays. This process shifts the burden from the entity that causes the delay (the Canadian Intellectual Property Office, or CIPO) to the patentee suffering from it.

Other concerns

The CBA submission questions why the regulations allow for third-party input or observations on the PTA term calculation, as this would only prolong what is an already complicated procedure for applicants. The Section also notes the absence of provisions that would “permit adjusting maintenance fees to be proportional to the time that is remaining of the adjusted term.”

The Section offers a few more recommendations to the government:

• CIPO should provide applicants with a preliminary determination of PTA term in advance of requiring applicants to apply for PTA term. Alternatively, applicants should not be charged any PTA application fee, or should be charged a lower fee.
   
• CIPO service standards for rendering a preliminary PTA determination should be no longer than three months; a one-year service standard should apply to the final decision.
   
• Applicants should be provided with a reasonable response time in accordance with the time-periods already stipulated by the Patent Act/Rules (excluding extensions). This response period should not be subtracted from any PTA term owing.
   
• CIPO should revisit CUSMA compliance in light of the extensive subtracted periods being proposed. Delays directly attributable to CIPO, including successful appeal periods, should not be subtracted. PTA should also compensate for significant disruptions at CIPO.
   
• Subsection 117.3(8) requires further clarification.

Read the submission.