Budget Implementation Act, 2023, No. 1 (S.C. 2023, c. 26)
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Assented to 2023-06-22
PART 4Various Measures (continued)
DIVISION 26R.S., c. P-4Patent Act (continued)
Amendments to the Act (continued)
492 (1) Subsection 46(1) of the Act is replaced by the following:
Marginal note:Maintenance fees
46 (1) To maintain the rights accorded by a patent issued under this Act in effect during the term referred to in section 44 or 45, the prescribed fees shall be paid on or before the prescribed dates.
(2) Paragraph 46(2)(b) of the Act is replaced by the following:
(b) the Commissioner shall send a notice to the patentee stating that the term will be deemed to have expired if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.
(3) Subsection 46(4) of the Act is replaced by the following:
Marginal note:Term deemed expired on prescribed date
(4) If the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the term shall be deemed to have expired on the applicable prescribed date.
(4) The portion of subsection 46(5) of the Act before paragraph (a) is replaced by the following:
Marginal note:Subsection (4) deemed never to have produced its effects
(5) Subject to the regulations, if the term is deemed to have expired under subsection (4), that subsection is deemed never to have produced its effects if
(5) Subparagraph 46(5)(a)(i) of the Act is replaced by the following:
(i) makes a request to the Commissioner for the term to never have been deemed to have expired,
(6) The portion of subsection 46(6) of the Act before paragraph (a) is replaced by the following:
Marginal note:Powers of the Federal Court
(6) If subsection (5) applies, the Federal Court may, by order, declare the term to have expired on the applicable prescribed date if the Federal Court determines either
493 The Act is amended by adding the following after section 46:
Additional Term
Marginal note:Grant of additional term
46.1 (1) The Commissioner shall grant an additional term for a patent if
(a) the patent was issued after the later of
(i) the fifth anniversary of the applicable day set out in subsection (2), and
(ii) the third anniversary of the first day, without taking subsection 35(4) into account, on which a request for examination has been made under section 35 in respect of the application for the patent, the prescribed fee referred to in subsection 35(1) has been paid and, if applicable, the prescribed late fee referred to in paragraph 35(3)(a) has been paid;
(b) the filing date for the application for the patent is on or after December 1, 2020; and
(c) the patentee applies for the additional term in accordance with the regulations, and pays the prescribed fee, within three months after the day on which the patent is issued.
Marginal note:Applicable day
(2) For the purposes of subparagraph (1)(a)(i), the applicable day is
(a) in the case of a patent issued on the basis of a divisional application, the prescribed day;
(b) in the case of a patent issued on the basis of a PCT national phase application, as defined in subsection 1(1) of the Patent Rules, the prescribed day; or
(c) in any other case, the filing date of the application for the patent.
Marginal note:Beginning of additional term
(3) The additional term begins on the expiry of the term referred to in section 44, without taking into account section 46, but only if the patent remains valid until, and is not void before, the expiry of that term.
Marginal note:Duration of additional term
(4) The Commissioner shall determine the duration of the additional term, which shall be equal to the number of days between the later of the anniversaries set out in paragraph (1)(a) and the day on which the patent is issued minus the number of days that is determined under the regulations.
Marginal note:Limitation
(5) Despite subsection (1), no additional term shall be granted under this section if the determination of the duration under subsection (4) produces a result of zero or a negative value.
Marginal note:Limitation — section 46.2
(6) The additional term is subject to section 46.2.
Marginal note:Certificate
(7) The Commissioner shall issue a certificate of additional term setting out the number of the patent as recorded in the Patent Office, the duration of the additional term and any other prescribed information and shall send the certificate to the patentee.
Marginal note:Reissued patent
(8) For the purposes of this section and sections 46.3 and 46.4, if a patent is reissued under section 47, the patent is deemed to have been issued on the day on which the original patent was issued and the application for the patent is deemed to be the application for the original patent.
Marginal note:Maintenance fees
46.2 (1) To maintain the rights accorded by a patent during an additional term granted under section 46.1 in effect, the prescribed fees shall be paid on or before the prescribed dates.
Marginal note:Late fee and notice
(2) If a prescribed fee is not paid on or before the applicable prescribed date,
(a) the prescribed late fee shall be paid, in addition to the prescribed fee; and
(b) the Commissioner shall send a notice to the patentee stating that the additional term will be deemed to have expired if the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice.
Marginal note:Prescribed fee deemed paid on prescribed date
(3) If the prescribed fee and late fee are paid before a notice is sent or, if a notice is sent, the prescribed fee and late fee are paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the prescribed fee shall be deemed to have been paid on the applicable prescribed date.
Marginal note:Additional term deemed expired on prescribed date
(4) If the prescribed fee and late fee are not paid before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, the additional term shall be deemed to have expired on the applicable prescribed date.
Marginal note:Subsection (4) deemed never to have produced its effects
(5) Subject to the regulations, if the additional term is deemed to have expired under subsection (4), that subsection is deemed never to have produced its effects if
(a) the patentee, within the prescribed time,
(i) makes a request to the Commissioner for the additional term to never have been deemed to have expired,
(ii) states, in the request, the reasons for the failure to pay the prescribed fee and late fee before the later of the end of six months after the applicable prescribed date and the end of two months after the date of the notice, and
(iii) pays the prescribed fee, the late fee and any additional prescribed fee; and
(b) the Commissioner determines that the failure occurred in spite of the due care required by the circumstances having been taken and informs the patentee of this determination.
Marginal note:Powers of the Federal Court
(6) If subsection (5) applies, the Federal Court may, by order, declare the additional term to have expired on the applicable prescribed date if the Federal Court determines either
(a) that the statement of the reasons referred to in subparagraph (5)(a)(ii) contains a material allegation that is untrue; or
(b) that, if paragraph (5)(b) applies, the failure referred to in subparagraph (5)(a)(ii) did not occur in spite of the due care required by the circumstances having been taken.
Marginal note:Reconsideration of duration
46.3 (1) The Commissioner may reconsider the duration of an additional term granted under section 46.1 on the Commissioner’s own initiative or on application by any person.
Marginal note:Application
(2) An application for reconsideration shall be made in accordance with the regulations and accompanied by payment of the prescribed fee.
Marginal note:Notice to patentee
(3) Notice of a reconsideration shall be given to the patentee in accordance with the regulations.
Marginal note:Shortening of duration
(4) On reconsideration, the Commissioner shall shorten the duration of the additional term in accordance with subsection 46.1(4) if the Commissioner is satisfied that the duration is longer than is authorized under that subsection, and shall dismiss the reconsideration in any other case.
Marginal note:Amended certificate
(5) If the Commissioner shortens the duration of the additional term, the Commissioner shall issue an amended certificate of additional term and send it to the patentee.
Marginal note:Stay
(6) The Commissioner may stay a reconsideration under this section pending the conclusion of any court proceeding.
Marginal note:Federal Court
46.4 (1) A person may bring an action in the Federal Court against a patentee for an order to shorten the duration of an additional term granted under section 46.1.
Marginal note:Power to shorten duration
(2) If the Court finds that the duration is longer than is authorized under subsection 46.1(4), the Court shall, by order, shorten the duration in accordance with that subsection, and in doing so may exercise any power, or perform any duty or function, of the Commissioner.
Marginal note:Copy to Commissioner and amended certificate
(3) If the Court shortens the duration, an officer of the Court’s registry shall send a certified copy of the Court’s order to the Commissioner, and the Commissioner shall issue an amended certificate of additional term and send it to the patentee.
494 Subsections 47(1) and (1.1) of the Act are replaced by the following:
Marginal note:Issue of new or amended patents
47 (1) Whenever any patent is deemed defective or inoperative by reason of insufficient description and specification, or by reason of the patentee’s claiming more or less than they had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, the Commissioner may, on the surrender of the patent within four years from its date and the payment of a further prescribed fee, cause a new patent, in accordance with an amended description and specification made by the patentee, to be issued to them for the same invention for the then unexpired term referred to in section 44 or 45 — and, if applicable, for the then unexpired additional term granted under section 46.1 — of the original patent.
Marginal note:Certificate of supplementary protection
(1.1) Subsection (1) also applies in the case where the original patent is set out in a certificate of supplementary protection and the original patent’s term referred to in section 44 or 45 has expired — or, if applicable, both that term and the additional term granted under section 46.1 have expired — except that in that case the issuance of the new patent, whose term or terms remain expired, is for the purpose of establishing the rights, privileges and liberties granted under the certificate.
495 Paragraph 48.4(3)(c) of the Act is replaced by the following:
(c) amends any claim of the patent or incorporates a new claim in the patent, the amended claim or new claim shall be effective, from the date of the certificate, for the unexpired term — and, if applicable, for the unexpired additional term — of the patent.
496 Subsection 55.11(1) of the Act is amended by striking out “and” at the end of paragraph (b) and by adding the following after paragraph (c):
(d) a patent in respect of which the prescribed fee referred to in subsection 46.2(2) was not paid on or before the applicable prescribed date referred to in that subsection, without taking into account subsection 46.2(3); and
(e) a patent in respect of which an additional term is granted under section 46.1 after the expiry of the term referred to in section 44, without taking into account section 46.
497 Subsection 106(4) of the Act is replaced by the following:
Marginal note:Exception
(4) Despite subsection (3), no application shall be filed within the prescribed period preceding the expiry of the term of the patent referred to in section 44 without taking into account section 46.
- Date modified: