The practice of patent prosecution is becoming increasingly globalized. This trend toward globalization is reflected in (1) the proposed amendments to the Patent Rules, (2) the expansion of the Patent Prosecution Highway ("PPH") program, and (3) Canadian and global patent filing statistics.
Proposed Amendments to the Patent Rules
The proposed amendments to the Patent Rules relate to pending amendments to the Patent Act to align Canada's patent regime with the Patent Law Treaty ("PLT"). The PLT, which is administered by the World Intellectual Property Organization ("WIPO"), was signed by Canada in May 2001. The proposed amendments to the Patent Rules will harmonize Canada's patent application process with those of the other contracting states of the PLT by streamlining the filing and examination of applications. Several of the proposed amendments to the Patent Rules[1], which are expected to come into force in early 2019, reflect and embrace the increasingly globalized nature of patent prosecution.
The proposed amendments will make it easier for applicants to obtain a filing date. This will be accomplished by (1) removing the requirement to submit an English or French translation of the specification and pay the filing fee to secure a filing date (these will instead be due two months after a notice from the Commissioner requesting these items), and (2) permitting applications filed electronically to secure a filing date even on days when the Patent Office is closed. The latter measure could be advantageous when an applicant desires to secure the earliest filing date possible, or a holiday or weekend filing date is required to stay within the one year novelty grace period prescribed by the Patent Act.
The proposed amendments will also introduce international reference filing, whereby an applicant can secure a filing date by submitting a statement to the Patent Office referencing a previously filed application in another country, in lieu of having to submit a document describing the invention. This amendment would make the filing similar to a Patent Cooperation Treaty ("PCT") national phase entry filing where the reference to the PCT application in the request for national phase entry is sufficient. It is proposed that the aforementioned statement must be provided at the earlier of (1) the filing date and (2) two months from the date of the earliest document or information required for establishing a filing date or a notice thereof. The applicant must submit a copy of the referenced application to CIPO within two months of submitting the statement. Once complete, the contents of the referenced application will be deemed to have been contained in the Canadian application from the date on which the statement is received.
Other proposed amendments will permit an applicant to make additions to the specification without affecting the filing date if the additions are contained in a prior application on which priority is claimed. The addition will be required to be made within two months of filing or a receipt of a notice of missing information. It will also be possible to make post-allowance amendments upon payment of a prescribed fee and submission of a request that the notice of allowance be deemed never to have been sent. Thereafter, the amended application will be subject to further examination. Practically, this proposed change appears to be similar to filing a Request for Continued Examination in the United States, with the advantage that the proposed regime may be cheaper and simpler.
The proposed changes will also reduce the pendency of applications by shortening the period within which examination must be requested from five years to three years post-filing. This change will reduce overall application pendency before a decision is rendered on patentability, thus reducing the period of uncertainty for third parties. This could have important implications on prosecution strategy for Canadian applications in certain cases. In particular, it may no longer be possible to defer requesting Canadian examination with a view to having a foreign application issue first and then amending the Canadian claims to correspond to the issued foreign application, especially if the foreign application experiences delays in prosecution. Further, the deadline for responding to Examiner's reports will be shortened to four months (rather than the current six months), with extensions of time available in justified circumstances.
Finally, late entry of a PCT application into the Canadian national phase will no longer be granted as of right upon payment of a late fee. Under the proposed changes, a PCT application will be allowed to enter the Canadian national phase after 30 months (and up to 42 months) from the priority date only if the delay was unintentional, as declared by the applicant and determined by the Commissioner.
Expansion of the PPH Program
The PPH program continues to expand at the Canadian Intellectual Property Office ("CIPO"). The PPH allows an applicant to fast-track the examination of an application by submitting a request to have positive work product from a PPH partner considered during examination, at no cost. CIPO entered PPH agreements with Chile, Colombia, New Zealand, and Poland in 2017, and with the Visegrad Patent Institute on January 6, 2018 under global or bilateral pilot agreements. This brings the total number of Canada's PPH partnerships to 28. In addition, CIPO and the European Patent Office have recently decided to extend their pilot PPH agreement for an additional three years. Notably, the most recent additions to the PPH program point to expansions in South America and eastern Europe, whereas key industrialized countries were originally emphasized.
Statistical analysis of the PPH program at CIPO shows that PPH applications enjoy a significantly higher first action allowance rate and grant rate, fewer office actions, and lower average pendency relative to other applications, which collectively reduce prosecution costs for applicants.[2] As a result, it is likely that use of the PPH program will continue to increase.
Canadian and Global Patent Filing Statistics
CIPO's recently released IP Canada Report 2017 shows interesting trends regarding the number of patent applications filed, the nationality of applicants, the type of patent filings, and Canadian applicants' foreign filing activities.[3]
The total number of patent applications filed with CIPO in 2016 fell 6% relative to 2015, which appears to be attributable to a decrease in the number of filings by foreign applicants. Total filings at CIPO have fallen 17% since 2006. It is not clear what is causing this decline in filings, but CIPO has advanced the proposition that it may be tied to a decline in research and development ("R&D") expenditures and manufacturing output as a proportion of GDP. The Canadian private sector invests less in R&D than similar countries, and foreign applicants may not be concerned about domestic competition in Canada because Canadian firms may not have adequate manufacturing capacity to pose a real commercial threat.
Foreign applicants file a substantial majority (88%) of the patent applications at CIPO. The top five filers are the US, Germany, Japan, France, and Switzerland, which collectively represent 75% of all non-Canadian filers with CIPO. In particular, American applicants account for 47% of all patent applications filed at CIPO, exceeding the proportion of applications filed by Canadians. CIPO postulates that the relatively low proportion of applications filed by Canadian residents (12%) is attributable to the small size of our economy and our close economic ties to the US.
With respect to the types of patent applications being filed, 78% of all applications in 2016 were filed under the PCT system. Since 2006, the proportion of PCT applications filed with CIPO has increased 5% (although the absolute number has decreased). According to WIPO, the number of PCT applications globally increased by 7.3% in 2016, representing the fastest rate of growth in PCT applications since 2011 and the seventh consecutive year of growth. This data suggests that applicants are increasingly moving away from direct filings towards the PCT system, perhaps for cost and convenience reasons or because more applicants have global aspirations.
Canadians are increasingly filing patent applications abroad. As a proportion of all applications by Canadians, 82% were filed abroad in 2016, representing an increase of 21% since 2006. The top three foreign filing jurisdictions for Canadians are the US (66%), Europe (8%), and China (5%). Notably, Canadian applications to China have grown by 36% since 2006, reflecting the increasing importance of China in Canadian applicants' foreign filing strategies.
Conclusion
The legislative landscape governing patent prosecution in Canada is keeping pace with and adapting to an increasingly globalized environment, as reflected in Canadian and global filing trends. This suggests an increasingly global outlook by applicants. In this context, the proposed revisions to the Patent Rules and the expansion of the PPH program at CIPO demonstrate incremental changes to maintain Canada's position as an attractive filing jurisdiction.
[1] The consultation document on the proposed Patent Rules was circulated on August 1, 2017. Consultations closed on September 8, 2017. The final amendments to the Patent Rules are expected to be published in the Canada Gazette in late 2018.
[2] PPH portal statistics are hosted by the Japanese Patent Office and are based on data from January through June 2017.
[3] The IP Canada Report 2017 was published by CIPO on November 30, 2017 and is based on 2016 data.
