Amendments to Intellectual Property Regulations Benefit Universities and Businesses

OTTAWA, June 4, 2007 — The Canadian Intellectual Property Office (CIPO), a special operating agency of Industry Canada, today announced the coming into force of regulatory amendments effective June 2, 2007, ensuring Canada’s intellectual property (IP) regime is more user-friendly, cost-effective and responsive to the needs of Canadian universities and businesses.

“This is good news for intellectual property practices in Canada, especially for small businesses,” said Secretary of State Gerry Ritz, on behalf of the Honourable Maxime Bernier, Minister of Industry. “Small and medium-sized companies and universities that qualify can save up to $3000 over the life of a patent by applying at the small-entity level. As well, many of the amendments will help reduce their paperwork burden in this area.”

The main purpose of the regulatory changes is to clarify the patent regime for small entities — universities and organizations with 50 or fewer employees — while providing a relief mechanism for regular-sized entities that mistakenly pay fees at the small-entity level. The amendments will also improve the IP regime by simplifying procedures and reducing processing times and costs, in keeping with the legislation principles of Smart Regulation and the Paperwork Burden Reduction Initiative.

In November 2006, Canada’s New Government released its long-term economic plan, Advantage Canada. The plan emphasizes the Government of Canada’s commitment to reduce the administrative and paperwork burden on business by 20 percent. Budget 2007 committed to achieving this target by November 2008.

Regulations that benefit from the amendments include the Patent Rules, the Trade-marks Regulations, the Industrial Design Regulations, the Integrated Circuit Topography Regulations and the Copyright Regulations that came into force on June 2, 2007. Certain regulations dealing with trademark opposition proceedings, as specified in the Trade-marks Regulations, come into force on October 1, 2007.

Summaries of these regulatory changes are included in the attached backgrounder. For more information on the regulatory amendments, visit the Canada Gazette website.

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For more information, please contact:

Media Relations
Industry Canada
613-943-2502

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Backgrounder

Amendments to Intellectual Property Regulations Improve Canada's Regulatory Framework

In May 2006, the Canadian Intellectual Property Office (CIPO) began a three-week web-based public consultation process to determine the need to action proposed regulatory amendments to the following: Patent Rules, the Trade-marks Regulations (1996), the Industrial Design Regulations, the Integrated Circuit Topography Regulations and the Copyright Regulations.

On December 23, 2006, the resulting proposed amendments were pre-published in the Canada Gazette, Part I, Vol. 140, No. 51, which initiated a formal 30-day consultation period.

Amendments to Patent Rules, the Trade-marks Regulations (1996), the Industrial Design Regulations, the Integrated Circuit Topography Regulations and the Copyright Regulations were published in the Canada Gazette, Part II, Vol. 141, No. 10, on May 16, 2007, and came into force on June 2, 2007. Sections 4, 5, 6, 8 and 9 of the Regulations Amending the Trade-marks Regulations (1996) will come into force on October 1, 2007.

The amendments seek to encourage small entities (i.e., entities employing 50 or fewer employees and universities) to use the patent system while providing a relief mechanism for regular entities that mistakenly pay fees at the small entity level. Filing at the small entity level will allow the patent applicant/holder to save up to $3000 over the life of a patent. The amendments also simplify procedures and reduce processing times and costs in keeping with the principles of Smart Regulation and the Paperwork Burden Reduction Initiative.

In November 2006, Canada’s New Government released its long-term economic plan, Advantage Canada. The plan emphasized the Government of Canada’s commitment to reduce the administrative and paperwork burden on business by 20 percent . Budget 2007 committed to achieving this target by November 2008.

Specifically, the amendments are as follows:

Amendments to the Patent Rules

Small Entity Regime Amendments

• the definition of “small entity” is refined to mean an entity that employs 50 or fewer employees or that is a university, and that is not controlled by or has transferred or licensed its obligation to an entity that employs more than 50 people;
• the small entity status for regularly filed applications is determined on the filing of the application and at national entry for Patent Cooperation Treaty (PCT) applications;
• patent applicants/holders must submit a small entity declaration, in the petition or as a separate document, stating that they believe they are entitled to pay fees at the small entity level;
• if patent applicants/holders wish to pay as a small entity, they must submit the small entity declaration at the time of payment or if they pay their fees before the prescribed due date, they should submit the declaration before that deadline;
• the Commissioner of Patents is authorized to grant patent applicants/holders an extension of time that will permit the correction of fees mistakenly paid at the small entity level;
• fee corrections made pursuant to the relief mechanism would only be permitted if the patent applicant/holder makes a statement that the small entity fee was paid in good faith and the application for an extension is filed without undue delay; and
• patent applicants/holders are required to pay the difference in fees and the prescribed fee for requesting an extension of time.

Harmonization of the Canadian Format for Sequence Listing with the Patent Cooperation Treaty Standard
This amendment brings Canada’s sequence listing standard in line with the format required under the PCT. In doing so, a sequence listing submitted at the international level for the PCT would be acceptable in Canada, thereby clarifying that there is no need to file the same information in two different formats.

Type of Evidence Required When the Applicant Is Not the Inventor
Applicants are no longer required to register evidence and pay the associated registration fee, but they must submit a declaration, either in the petition or in a separate form, demonstrating that they are entitled to apply for and be granted a patent. As a result of this modification, approximately 37 000 applicants per year will no longer have to register evidence and pay the associated registration fee, resulting in cost savings for applicants of up to $3.7 million per year.

Refund Policy
The amendment to the refund provisions, Section 4 of the Patent Rules, imposes a three-year time limitation for applicants/patentees requesting a refund. As well, subsection 4(6) has been reworded to clarify that patent applicants/patentees who paid the standard fee but could have paid the small entity fee would not be entitled to a refund for the difference in fees.

Clarification of Certain Practices for PCT National Entries
The Commissioner of Patents will now provide a notice to PCT applicants informing them that certain documents are still required to complete the application. Abandonment will not occur until the applicant has been notified of the deficiency and had the opportunity to respond. Also, sub-paragraph 58(3)( b ) of the Patent Rules is amended and reworded to clarify that additional late payment fees are due before the expiry of the 42-month period after the priority date for PCT national entries.

Other Minor Amendments
A series of minor amendments are proposed to improve and facilitate dealings with CIPO and to accommodate technological advances. These minor amendments include allowing new translations to replace faulty ones during PCT national entry; permitting CIPO to request that a PCT national phase application be withdrawn before the same application can be filed again; standardizing the format for electronic forms; retaining only the electronic version of a sequence listing application (as opposed to paper form); not allowing a trademark, coined word or the name of a person in the title of an invention; and providing free certified copies of certain documents to the Federal Court.

It is important to note that some amendments to the Trade-marks Regulations came into force on June 2, 2007, while others will come into force on October 1, 2007.

Amendments to the Trade-marks Regulations That Came Into Force on June 2, 2007

The amendments include facilitated service in opposition proceedings between parties by allowing the use of courier services and other means as agreed by the parties. As well, with certain exceptions, CIPO will no longer charge a fee to clients who amend the trademark register. It is estimated that this change will affect about 17 000 applications annually, resulting in savings of up to $0.85 million a year to clients. CIPO will also no longer charge a fee for certain certified copies that clients need to provide to the Federal Court should they wish to pursue their rights in the judicial system.

Amendments to the Trade-marks Regulations That Will Come Into Force on October 1, 2007

Sections 4, 5, 6, 8 and 9 Regarding Changes to Extension of Time Limits

There will be an increase in the time limit for filing a counter statement from one month to two months, and from one month to four months for filing opponent’s evidence under Rule 41 and applicant’s evidence under Rule 42.

Amendments to the Industrial Design Regulations, the Integrated Circuit Topography Regulations, and the Copyright Regulations

CIPO will provide certified copies of certain documents to the Federal Court free of charge, thereby reducing the financial burden on owners or applicants wishing to pursue their rights in Federal Court. The rules of correspondence regarding receipt of mail in the Integrated Circuit Topography Regulations have been modernized to allow for receipt of mail that is sent by electronic means.

The amendments and more detailed information can be found on the Canada Gazette website.