Patent Term Extensions - New Rules in Canada

By Louis Allard and Grant Walters, February 12, 2025

The term of a patent is the duration for which the patentee is granted exclusive rights to their invention, which in Canada is 20 years from the filing date of the patent application. New rules for receiving an additional term on a patent in Canada came into effect on January 1, 2025, with eligibility for such an addition starting December 2, 2025. The new rules are defined by amendments to the Patent Act and the Patent Rules, which together provide who is eligible for an addition, an administration process, a method for calculating a term addition, a reconsideration process, and how fees will be administered.

Patent Term Additions:

A term addition granted to a patentee will begin immediately after the expiry of the regular 20-year term and will fully extend the exclusive rights of the patent if the patent is maintained and remains valid. The term additions are extensions distinct from those provided by certificates of supplementary protection, which are only applicable to medicinal ingredients and will operate concurrently. The duration of a term addition will depend on the patent’s application timeline. In granting a term addition, the Canadian Intellectual Property Office (CIPO) will calculate its duration according to a formula intended to account for unreasonable delays in the patent application process. Briefly, the duration will amount to the number of days elapsed from the eligibility date for the term addition (provided below) to when the patent is issued, minus particular excluded days (subtracted days). The excluded days are those in the application process that cannot be attributed to normal CIPO processing, such as days requiring action from the applicant (e.g., payment of a fee) or days related to delays caused by actions of the applicant. If the calculation results in a negative number of days, it will not cause the regular 20-year term to be shortened but will result in the dismissal of any requests for a term addition.

Who is Eligible:

To be eligible for a term addition, a patent must have been filed on or after December 1, 2020, and must have been issued after the latest of:

• The fifth anniversary of the date when the patent application was filed (the national entry date for Patent Cooperation Treaty [PCT] applications or the presentation date for divisional applications) and
• The third anniversary of the date when examination was requested for the patent application.

The latest of these dates forms the eligibility date in calculating the term addition.

How to Receive a Term Addition:

To receive a term addition for a patent, the patentee must submit a formal request to CIPO within three months of the patent being issued and must pay the required government fee. CIPO will evaluate the request and determine if the patent is eligible for a term addition and, for eligible patents, the duration of the term addition. CIPO will then notify the patentee and provide a two-month ‘observation’ window in which the patentee and any other interested parties may submit comments on the determined duration. If a patentee’s request is successful, CIPO will issue them a certificate granting the term addition. As with the 20-year term, annual maintenance fees will need to be paid to prevent the patent from expiring. It is also worth noting that any person may request reconsideration of the term addition if that person believes that the additional term is longer than should have been authorized.

Why the New Rules:

The new rules for term additions are being introduced to fulfill an agreement under the Canada–United States–Mexico Agreement (CUSMA) to compensate for unreasonable delays that occur prior to the issuance of a patent. The term additions are intended to further encourage the efficient processing of patent applications, to make Canada a more competitive market for innovation, and to bring Canada into better alignment with other major jurisdictions, such as the United States, Japan, and South Korea, which already have similar schemes in place for term extensions. However, the impact is expected to be limited: only about 1,100 applications are expected to be eligible for term additions over the next decade ^[1].

Key Take-Aways:

• A term addition can be requested to account for excessive delays prior to the issuance of a patent.
• Eligibility for term additions starts December 2, 2025.
• Term additions must be applied for in writing to CIPO and will not be automatically granted.

Should you have any questions on patent term extensions and would like a free consultation, please contact:

Louis Allard, Ph.D., Senior Patent Agent
T: 613.801.1054
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

[1] Regulations Amending the Patent Rules and Certain Regulations Made Under the Patent Act. Canada Gazette, Part I, Vol. 158, No. 20, 18 May 2024.