Priority Restoration: Canada’s Convoluted Amendments Cause Confusion

Bill C-43 (as outlined in an earlier article here) will give patent applicants who have missed a 12 month priority filing deadline the opportunity to restore priority rights in certain limited circumstances.

Several commentators have suggested that the Bill C-43 amendments will also extend the grace period from disclosures by the applicant made within one year before the filing date to disclosures by the applicant made within one year before the claim date. However, a careful review of the amendments suggests that the grace period will only be extended by 2 months to a maximum of 14 months from the Canadian filing date and only if there has been a restoration of a missed priority claim.

The “claim date” of an application is either the filing date of a Canadian application or the filing date of a previously regularly filed application from which priority has been requested. That assumes of course that the Canadian application was duly filed within 12 months of the priority application [s. 2, s. 28.1(1)(b)].

Bill C-43 will amend s. 28.2(1)(a) to provide a grace period that now reads as follows:

28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the “pending application”) must not have been disclosed

(a) before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;

It appears that some commentators have read subsection (a) as though it read:

“(a) before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the one-year period immediately preceding the claim date …

That reading eliminates the word “before” in “before the claim date”. It is also inconsistent with the amended French version of the Act.

Priority Restoration

The new priority restoration regime will be governed by new s. 28.4(6) of the Patent Act and any related regulations. Subsection 28.4(6) provides:

(6) Subject to the regulations, for the purposes of paragraph 28.1(1)(b) [which makes the priority date the “claim date”] and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii), the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if

(a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application but within two months after the end of those 12 months; and

(b) the applicant, within the prescribed time,

(i) makes a request to the Commissioner for this subsection to apply,

(ii) states, in the request, that the failure to file the pending application or the co-pending application, as the case may be, within 12 months after the filing date of the previously regularly filed application was unintentional, and

(iii) complies with any prescribed requirements.

The restoration operates by deeming the filing date to be within 12 months of the priority date, even if it is actually over it by up to 2 months. It specifically so deems it for the purposes of the definition of “claim date” in s. 28.1(1)(b). It follows that the clause “if the claim date is before that period” in s. 28.1(1)(a) can only be a maximum of 14 months before the actual Canadian filing date. Section 28.2(1)(a) then operates to provide a grace period extending to the claim date itself.

 A Hypothetical Example

A good way to consider the effect of the amendments is with reference to the following hypothetical example.

In the above hypothetical, the February 17, 2016 Canadian filing missed the January 8, 2016 priority filing deadline.

Under the current Patent Act, the January 8, 2015 “priority date” is not considered a “claim date” since the condition set out in s. 28(1)(b) is not met (i.e. the February 17, 2016 filing date is not within the twelve months after filing date of the priority application). Additionally the February 3, 2015 disclosure falls outside the one-year disclosure grace period offered under s. 28.2(1)(a) and therefore the application filed on February 17, 2016 lacks novelty due to the disclosure.

Under the Bill C-43 amendments to the Patent Act, the applicant may be able to overcome the February 3, 2015 disclosure and novelty problem. Since the February 17, 2016 filing date is within two months of the priority deadline, the applicant could request a restoration of priority under new subsection 28.4(6). If the priority deadline was missed unintentionally and if all other requirements are met, then new subsection 28.4(6) deems the filing date in paragraph 28.1(1)(b) to be within 12 months after the priority date. This has the effect of making the January 8, 2015 priority date a “claim date”. Returning to paragraph 28.2(1)(a), since the restored January 8, 2015 “claim date” is before the “one year period immediately preceding the filing date”, any disclosure by the applicant on or after the claim date is acceptable. Since the disclosure in the hypothetical occurred on February 3, 2015, it would not present a novelty problem despite being more than one year before the “filing date”.

The means by which Parliament chose to introduce a priority right restoration regime and to adjust Canada’s one-year grace period has already caused confusion. It remains to be seen whether that carries over to the courts’ interpretation of the provisions.