CIPO’s Patent Term Adjustment (PTA) System

The Canadian Intellectual Property Office (CIPO) is set to introduce its Patent Term Adjustment (PTA) system on January 1, 2025. This system is designed to compensate for unreasonable delays caused by CIPO in granting patents. Following Canada’s obligations under the Canada-United States-Mexico Agreement (CUSMA), the PTA system ensures compliance with international standards. The finalized regulations, released on December 18, 2024, clarify the procedures for requesting PTA, calculating delay periods, and maintaining patents beyond their standard term. Below is an overview of the PTA system, its requirements, and strategies to maximize benefits.

 

Key Features

  1. Eligibility Requirements:
    • The PTA system applies only to patents granted from applications filed on or after December 1, 2020.
    • Only patents issued after December 1, 2025, can qualify, which means no PTA applications will be due before March 2026.
    • Applications must meet specific filing and timing conditions outlined in PTA rules, e.g., delays exceeding five years from filing or three years from the examination request.
  2. Application Process:
    • The patentee must apply for PTA within three months of patent issuance and pay an official fee of CAD $2,500 or $1,000 for small entities.
  3. Calculation of Delays:
    • PTA accounts for periods where CIPO caused unreasonable patent examination delays.
    • Any delays attributable to the applicant are subtracted from PTA
  4. Maintenance Fees During PTA:
    • Maintenance fees continue to apply during the extended PTA term.
    • Patents under PTA require annual maintenance fees of $1,000 or $400 for small entities.
  5. Preliminary Determinations:
    • Patentees can perform PTA calculations to determine whether applying is worthwhile, thereby avoiding unnecessary fees if significant PTA is unlikely.

 

PTA Eligibility and Term Calculation

PTA eligibility hinges on meeting two conditions:

  • Filing Date Requirements: For Canadian patent applications, including PCT national phase and divisional applications, the filing date must be on or after December 1, 2020.
  • Examination Timeline Delays: CIPO’s delay is measured from the later of: (A) three years from the date of the examination request, or (B) five years from the application’s filing date or PCT national phase entry date.

 

Calculating PTA

  • Assess Cumulative Delays: Count the days beyond the allowed processing time, as outlined below.
  • Subtract Applicant-Attributed Delays: Deduct any delays caused by the applicant failing to meet deadlines, e.g., late filing of fees, translations, or responses.
  • Net PTA: The remaining time represents the additional term granted under PTA, which begins after the standard 20-year patent term expires.

While all applicant delays are subtracted from the PTA calculation, they generally do not reduce the net PTA. This is because delays by the applicant typically result in corresponding delays in patent issuance, balancing the overall calculation.

 

Considerations to Maximize PTA

  1. Deferring Examination Requests:

Deferring examination requests can increase the likelihood of accruing PTA by delaying the calculation timeline. Applicants may defer requesting examination up to four years from the filing date, which can:

  • Minimize Applicant Delays:
    • Any applicant delays before requesting examination are excluded from the PTA calculation if certain conditions are met. For example:
      • For PCT national phase applications, no delays are subtracted if three years from the examination request exceeds five years from national phase entry.
      • For original Canadian applications, this condition is satisfied if the request is filed more than two years from the filing date.
  • Avoid Early Deductions:
    • Deferring examination ensures that minor delays, e.g., in filing translations or priority documents, don’t reduce potential PTA.
  1. Efficient Patent Prosecution:

To prevent forfeiting PTA, applicants should:

  • Respond promptly to examination reports.
  • Avoid filing unnecessary amendments that prolong prosecution.
  • Make strategic amendments early to minimize rejections and streamline examination.
  1. Avoiding Excessive RCEs:

Issuance of a third Examiner’s Report or filing a Request for Continued Examination (RCE) halts PTA accrual. To maintain eligibility:

  • Applicants should address examiner concerns early and comprehensively, reducing the need for multiple reports.
  • Amendments to claims should be precise and targeted to facilitate quicker approvals.
  1. Preliminary PTA Estimations:

Given the application fee of $2,500, patentees should calculate preliminary PTA to ensure it’s worthwhile to proceed. Patents unlikely to qualify can avoid unnecessary administrative costs by forgoing a formal PTA application.

 

PTA Application Process

To apply for PTA, patentees must follow these steps:

  1. PTA Application Submission:
    • File within three months of patent issuance and pay the applicable fee.
  2. CIPO Review:
    • CIPO issues a preliminary determination of PTA duration, allowing the patentee to respond within two months if there are discrepancies.
  3. Final Determination:
    • CIPO grants the additional term or dismisses the application, providing detailed reasoning.
  4. Reconsideration Options:
    • The Commissioner of Patents or Federal Court may review the granted term, but it cannot be extended beyond the original determination.

 

Impact of RCEs and Complex Prosecution

The PTA rules disincentivize prolonged prosecution by penalizing excessive examiner reports or RCE filings:

  • Third Examiner’s Report: Any delays following the issuance of a third report are excluded from PTA calculations.
  • Filing an RCE: No PTA can accrue from the moment an RCE is filed until the patent’s final fee is paid.

These restrictions mean patents requiring extensive prosecution are less likely to benefit from significant PTA. For example, applications requiring court appeals or lengthy Patent Appeal Board reviews will often exclude much of the delay.

 

PTA Accrual

Due to CIPO’s current processing times and performance targets, significant PTA is expected to apply to a few patents:

  • Minimum Timeframe:
    • CIPO is afforded at least 36 months to complete key examination steps without accruing PTA, including:
      • Issuing three Examiner’s Reports.
      • Processing responses.
      • Issuing the patent upon payment of final fees.
  • Performance Metrics:
    • In most cases, CIPO’s examination timelines fall well within this threshold. The average time from examination request to grant between 2017 and 2024 was approximately 31.7 months, including applicant delays.
  • Projected Usage:
    • The Regulatory Impact Analysis Statement (RIAS) predicts that only 0.5% of granted patents might qualify for PTA.

 

Concurrent Terms: PTA and Certificates of Supplementary Protection (CSP)

Both PTA and Certificates of Supplementary Protection (CSP) may apply for pharmaceutical patents. However, the CSP term runs concurrently with the PTA period, not after it. This ensures that extensions due to regulatory approval delays (CSP) don’t overlap unnecessarily with PTA extensions.

 

Conclusion

CIPO’s PTA system introduces a structured process for addressing unreasonable delays in patent prosecution, aligning Canadian practices with international trade agreements. While the system offers relief to patentees affected by prolonged examination times, the strict eligibility requirements and careful subtraction of applicant delays mean that few patents may qualify for significant PTA. To maximize potential benefits, applicants should focus on strategic examination deferral, efficient prosecution, and minimizing RCEs. Performing preliminary PTA calculations is also advisable to determine whether applying is cost-effective.

 

This publication is intended for general information purposes only and should not be relied upon as legal advice.