Time extension grid

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.

 


 Research grid

By Claire Palmer and Andrew Masson, January 6, 2025

Although many know there are research exemptions to patent infringement, the devil is in the details for successfully utilizing them. Each country has specific intricacies in how these exemptions operate, making careful planning vital. Here, we provide a general overview of Canada, the US, and the EU’s research/experimental use exemptions and highlight some important differences in how they operate.

A patent grants the patentee the right to stop others from making, using, or selling an invention for a period of time. There are however in most jurisdictions crucial “Research Exemptions” (also known as “Safe Harbours”, “Bolar Exemptions”, or “Experimental Exemptions”) for non-commercial research or experimentation. A Research Exemption insulates certain activities from claims of patent infringement and is supported by either statute (formal written laws) or common law (unwritten law based on previous court decisions).

Research Exemption in Canada:

In Canada, there are two exemptions:

1.  A narrow statutory exemption for research and related activities mandated by the Government under regulatory laws;[1]

2.  A broad common law “fair dealing” exemption for non-commercial research and experimentation.[2]

The statutory exemption has been interpreted by Canadian courts to capture activities that are both directly and indirectly required for regulatory reasons to sell products in Canada, for example, drug approval. Given the technicalities of this exemption, if you think your activities will fall under it, we recommend that you seek legal advice prior to initiating any potentially infringing activities.

The common law research exemption is intended to enable “users” (i.e. researchers) to “infringe” a patent in a “fair” way (for non-commercial/non-fraudulent purposes). “Fair” is fact-specific and judged holistically. There are five factors that courts will consider and are questions that you should ask yourself when considering the use of patented inventions:

1.  Is the research and related experimentation bona fide (genuine) and being done in good faith? For example, someone working in a non-commercial research lab to confirm that a patented process works would be considered fair dealing.

2.  Are you producing the patented product in small quantities commensurate with the research being done? If you need 10 g to do the research, it may be fair to produce 12 g of the patented product, but producing 1,000 g is unlikely to be considered fair.

3.  Is the patented product remaining in the possession of the researcher or will it enter the commercial market? If a patented product produced by the researcher, directly or indirectly, enters a commercial market in any way, it is unlikely to be considered fair.

4.  Will the researcher make profits from the activities? Obviously, it is not “fair” to sell products resulting from their infringing activities. However, getting paid to conduct bona fide research (as covered by the first factor) is likely to be considered fair.

5.  Is the use of a patented invention causing a loss to the patentee? The patentee does not have the right to completely bar you from experimenting with a patented invention. Research and experimentation to develop a product that doesn’t infringe the patent is allowed and that product can be commercialized, but the commercialized final product must be completely independent of the use of the patented invention.

Research Exemptions in the US:

The US and Canada have nearly identical statutory research exemptions for legally mandated regulatory information (and the same regulatory advice applies).[3] However, the common law research exemption in the US is limited to conduct “solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.”[4] This means any entity making and selling products in the US will find it highly unlikely that any experimentation will fall within the common law research exemption. Meaning the US’s common law research exemption is highly restrictive.

Research Exemptions in the EU:

Research exemptions in the EU operate in a manner analogous to Canada. The EU philosophy provides sufficient room for research activities that promote innovation, but individual countries ultimately dictate the language and operation of the law within that principle. Therefore, when operating in the EU it is important to understand the nuances of research exemptions for the countries relevant to you.

Should you have any questions or would like more information on patent research exemptions, please contact:

Claire Palmer, Ph.D., Senior Patent Agent
T: 613.801.0450
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] Patent Act, RSC 1985, c P-4, s 55.2(1).

[2] See Teva Canada Limited v Novartis AG, 2013 FC 141, online (CanLII): https://canlii.ca/t/fw81j; Micro Chemicals Limited et al v Smith Kline & French Inter-American Corporation, [1972] SCC 506, online (CanLII): https://canlii.ca/t/1xd2k; Merck & Co Inc v Apotex Inc, 2006 FC 524, online (CanLII): https://canlii.ca/t/1n553.

[3] Hatch-Waxman Act, 35 USC §271(e)(1).

[4] See Madey v Duke, 307 F 3d 1351 (CA FC 2002).


funding programs grid


By Kay Palmer and Alexandra Mazgola, May 15, 2024

Securing intellectual property (IP) rights is a critical step for businesses, particularly for start-ups and small or medium-sized enterprises (SMEs), who want to gain a competitive advantage in the marketplace. To assist in funding IP-related costs, various government funding programs have been developed across Canada to help companies secure IP rights.

Below are some common funding programs available across Canada.

Elevate IP:

ElevateIP is a federal program delivered Canada-wide through selected business accelerators and incubators (BAIs) in collaboration with regional partners to help start-ups develop and implement IP strategies, in addition to offering IP education services.

While eligibility requirements and funding amounts vary depending on the BAI administering the program, start-ups may be eligible for up to $100,000 to develop and implement an IP strategy. Most BAIs require, at a minimum, that the start-up have less than 500 employees and be headquartered in the geographic region of the BAI administering the program. The program funding is divided into 3 tiers:

1. IP Education & Awareness

2. IP Strategy Development

3. IP Strategy Implementation

The selected BAIs in different provinces are listed below:

To learn more about the Elevate IP program, please click here.

IP Assist (IRAP):

IP Assist, administered by The National Research Council of Canada Industrial Research Assistance Program (NRC IRAP), is a tiered national funding program designed to support SMEs' IP efforts. Under the IP Assist Program, SMEs can receive support and funding across three different levels:

  • L1 – IP Awareness
  • L2 – IP Strategy
  • L3 – IP Action

The funding available for IP Strategy and IP Action ranges from $10,000 to $25,000 for each, with an additional $1,000 for IP awareness. To learn more about the IP Assist program, please click here.

Intellectual Property Ontario (IPON):

IPON is a provincial-run program that provides support to Ontario-based SMEs operating in one of IPON’s served sectors – MedTech, life sciences, artificial intelligence, vehicle technology, and mining and advanced manufacturing – to promote innovation and growth in these highly desired sectors in Ontario. Once the SME is enrolled as an IPON client and is part of IPON’s IP Bootcamp or Partner Program, it may be eligible for up to $35,000 in initial funding for IP protection and commercialization services and have potential access to future IP funding of up to $100,000. It’s important to note that the SME has to cover 20% of IP service costs directly, and IPON covers 80%. To learn more about the IPON program, please click here.

Innovation Access Collective (IAC):

IAC is a membership-based not-for-profit organization funded by the Government of Canada to assist Canadian SMEs in the data-driven CleanTech sector with IP-related needs. Full members may be eligible for grant funding ranging from $5,000 to $20,000, while associate members may be eligible for grant funding ranging from $5,000 to $10,000. In addition, IAC also has a Grant for Women in IP created in response to the demonstrated inequitable gender balance in the IP ecosystem. To learn more about the IAC program, please click here.

CanExport Innovation:

CanExport Innovation provides funding for intellectual property protection in international markets and other related services for Canadian SMEs looking to expand into international markets to develop R&D collaborations through partnerships in foreign markets. Businesses may be eligible for funding of up to $75,000 to assist with research and development (R&D) for a single technology. To learn more about the CanExport Innovation program, please click here.

Eligibility requirements and application process:

Please note the information presented in this article represents only a general outline and the above programs are subject to specific eligibility requirements that are listed on their respective websites that are linked above. For more information, please reach out to an MBM professional who can assist you in determining the best funding program for your business and assist you through the application process.

While some of the above programs accept applicants on a “rolling basis”, other programs require applicants to apply to open calls subject to strict deadlines. We strongly encourage businesses looking to apply to consult the program websites linked in this article for further information regarding eligibility criteria, program application process and deadlines.

MBM is an approved service provider for ElevateIP, IP Assist, and IPON.

If you would like to learn more or require any advice, please contact:

Kay Palmer, Ph.D., Senior Patent Agent
T: 613.801.0452
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.



signage - small


By Scott Miller and Deborah Meltzer, September 21, 2023

If you sell products or have public signage in the Province of Québec, then please consider what changes, if any, will be necessary to the product inscriptions/packaging and signage to ensure compliance with the amendments to the Charter of the French Language, c-11, which will come into force on June 1, 2025.

To assist with your review, MBM has prepared the following flow charts:

MBM French language flowchart 2023 Page_1

 

MBM French language flowchart 2023 Page_2

 

MBM has developed creative solutions to minimize product inscriptions/packaging and signage changes and yet still be in compliance with the amendments to the Charter of the French Language, c-11, which will come into force on June 1, 2025. The flow charts are provided only as a general guide based on known amendments to the Charter of the French Language, c-11. Future amendments or regulations may impact the information provided above.

If you would like to learn more or require any advice, please contact:

Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613.801.1099
E:  This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

Deborah Meltzer, Trademark Agent & Associate Lawyer
T: 613.801.1077
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.

windows-10-cumulative-update-kb3194496-experiencing-installation-issues-508767-2


By Randy Marusyk and Alexandra Mazgola, August 22, 2023

The Canadian Intellectual Property Office (“CIPO”) has announced that effective January 1, 2024, most official fees will be increasing by 25%. On the patent side, the increase in the fees will be applicable to standard entity size. At the same time, the definition of “small entity” in the Patent Rules will be broadened from the current 50 employees to fewer than 100 employees, which would mean that more companies can fall into the small entity category and thus utilize the lower official fees. Canada remains an important jurisdiction in North America for IP filings and is further reinforced by rapid population growth, surpassing the 40 million mark in 2023. The above changes are detailed below with some recommendations for saving on official fees.

Significant CIPO Fee Increase

Effective January 1, 2024, a one-time 25% fee increase will be implemented, impacting most patent, industrial design, trademark and copyright fees. With respect to patent matters, this increase will not apply to businesses qualifying as a “small entity” under the Patent Rules. Thus, small entity patent applicants will only experience CIPO’s regular annual fee increase in 2024.

Below are a few examples of changes in CIPO’s fees (rounded up):

 

PATENTS

 

CIPO 2023 Fees (in CAD)

CIPO 2024 Fees (in CAD)

Filing a patent application

  • Small entity fee
  • Standard fee


$211

$422

 


$225

$555

 

Filing an Examination request

  • Small entity fee
  • Standard fee


$408

$816


$450

$1,110


TRADEMARKS


CIPO 2023 Fees (in CAD)

CIPO 2024 Fees (in CAD)

  • Filing a trademark application in one class of goods or services
$348 $458

A complete listing of fee increases relating to patents, industrial designs, trademarks, copyrights, and other fees can be found on CIPO’s website here.

Expansion of the definition of “Small Entity” under the Patent Rules

Another important change is the broadening of the definition of “small entity” in the Patent Rules. This change is important because entities that meet the definition of small entity and who submit a small entity declaration are entitled to a 50% reduction of some CIPO patent-related fees.

Currently, a “small entity” is defined as a university or an entity that employs 50 or fewer employees at the time the patent application was filed or at the national phrase entry date for an international PCT application, but does not include:

(a) an entity that is controlled directly or indirectly by an entity, other than a university, that has more than 50 employees, or

(b) an entity that has transferred or licensed, or has an obligation other than a contingent obligation to transfer or license, any right or interest in a claimed invention to an entity, other than a university, that has more than 50 employees

The definition of “small entity” will be amended effective January 1, 2024, to increase the maximum number of employees from 50 employees to fewer than 100 employees. Thus, more companies will be able to qualify for the small entity category and, as a result, utilize the lower small entity fees. Please note that small entity status is determined at the time of filing (or at the national phrase entry date) and is only determined once.

This amendment does not entitle newly qualifying small entities to a partial refund of fees paid before January 1, 2024. The amendment is, however, allowing applicants who had more than 50 employees but less than 100 employees at the time of filing (or at the national phrase entry date) to start paying future fees at the small entity rate after January 1, 2024, provided all other small entity conditions were met when the patent was filed, and a small entity declaration is submitted.

Recommendations

1. As a result of these changes, individuals and businesses are encouraged to review their IP portfolios with their IP professional for possible new filings, examination requests and renewal/maintenance fees that can be done before January 1, 2024, to take advantage of the lower 2023 rates before the 25% increase takes effect.

2. Additionally, applicants should also review with their IP professional whether they will qualify as of January 1, 2024, for the expanded small entity status.

For more information, please contact:
Randy Marusyk, Co-Managing Partner
T: 613.801.1088
E: rmarusyk@mbm.com
 

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.


Poonam Tauh on Orange forweb

January 13, 2023

With great pleasure, we would like to announce that Dr. Poonam Tauh has been promoted to Partner.

Prior to joining MBM, Poonam earned a Ph.D. in organic chemistry from the University of Ottawa in 2001 and now has over 20 years experience as a Patent Agent.

Poonam moved to Calgary in 2012 to establish MBM’s Calgary office and has subsequently grown the office into a successful and vibrant MBM outpost in Western Canada to better serve our clients in the Alberta region.

“Poonam is an integral part of our MBM team. In addition, to her exceptional technical knowledge, her clients love working with her because of her calm nature and willingness to always go the extra mile. And, no matter how busy she is, her colleagues know they can always count on her for guidance and support. Poonam is a tremendous asset to our firm”, said Randy Marusyk, Co-Managing Partner.

To learn more about Poonam, check out her full bio here.

Poonam Tauh, Ph.D., Partner, Patent Agent
T: 403.800.9018
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

 

60BPcm48nQ-580x365


By Scott Miller and Deborah Meltzer, August 24, 2022

On August 15, 2022, the Federal Court of Canada issued its decision with respect to costs in Dragona Carpet Supplies Missisauga Inc. v Dragona Carpet Supplies Ltd and Flooreno Building Supplies Inc., 2022 FC 1200, ordering one of the highest lump sum costs ever awarded in a trademark dispute, representing 50% of aggregate fees incurred, plus disbursements.

The decision was the culmination of a factually complicated family dispute related to the right to use and own the trademark “DRAGONA” in specified pockets of the GTA. The Defendants/Plaintiffs by Counterclaim were wholly successful in (1) defending against the Plaintiff’s motion for summary trial with respect to its claim of passing off, and (2) their own motion for summary trial with respect to their claim for expungement of three of the Plaintiff’s registered “DRAGONA” trademarks.

Ultimately, the Federal Court preferred the evidence of the Defendants. Although there was disagreement on the majority of the facts presented throughout the proceedings, the parties unequivocally agreed that the Defendant, Dragona Carpet Supplies Ltd., was the first to use the trademark DRAGONA. Based on the evidence, there was no basis for the Plaintiff to argue that it was entitled to the trademark registrations. In granting an exceptional lump sum cost award of 50% to the Defendants, the Court emphasized that in light of the facts, the Plaintiff ought never to have maintained the legitimacy of the trademark registrations, much less, waited until the commencement of the hearing to abandon its position.

This precedent-setting decision not only expanded the law on concurrent-use passing off and care and control in the context of a license, but further substantiates the Federal Court’s recent trend of opting for lump sum cost awards in lieu of the tariff, which represents a more reasonable and realistic recovery of legal fees for the successful party.

For more information please contact:

Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613.801.1099
E:  This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

Deborah Meltzer, Trademark Agent & Associate Lawyer
T: 613.801.1077
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.

law


By Scott Miller and Grace Wang, June 24, 2022

In approximately three years or less, the Québec Government’s newly adopted Bill 96, An Act respecting French, the official and common language of Québec will go into force. Bill 96 will have a significant impact on the use of English trademarks in the Province of Québec. For example, whereas in the past, both unregistered and registered trademarks did not need to be translated into French, under Bill 96, only registered trademarks will be exempt from translation into French. Currently, it takes approximately two years for a trademark application to mature to registration in Canada. As such, it is imperative businesses review their trademark portfolios and consider which trademarks ought to be filed for registration to ensure continued use in the Province of Québec.    

The Present Rules in Québec:

Promotional Material - Packaging

At present, a “recognized trademark” is exempt from translation requirements in Québec. A recognized trademark includes a registered trademark, an applied-for trademark with a pending application, or a common law trademark. As such, unless the English trademark has been registered in French, it is not necessary to translate the English trademark registered or common law (unregistered) on packaging offered in Québec into French.

Signage

Currently, in Québec, outside signage, inside signage that is seen outside, mall signage and/or signage on a pole/column (with some exceptions) displaying an English registered or common law (unregistered) trademark does not need to be translated into French. However, if the equivalent French trademark is a registered trademark, then the French trademark must be used on the signage. In any event, if there is only an English trademark, unlike packaging or promotional material, the signage must have “sufficient presence” in French and include:[1]

•  A generic term or a description of the products or services;

•  A slogan; or

•  Any other term or indication favouring the display of information pertaining to the products or services to the benefit of consumers or persons frequenting the site (location).

The “sufficient presence” of French means that it should be displayed with permanent visibility and legibility in the same visual field as the non-French mark, although not necessary to be present side-by-side, in the same number, in the same materials or in the same size.[2]

Exception: If the English trademark is displayed on a pole/column and there are more than two trademarks on the pole/column then the signage does not need to disclose the generic term, slogan or other terms in French.  The typical situation would be the external signage of the parking lot entrance for an outdoor mall.[3]

Bill 96 – New Requirements in Québec for French in Trademarks:

When Bill 96 goes into effect, the scope of the “recognized trademark” exemption is greatly reduced.

First, only non-French registered trademarks will be exempt and not need to be translated into French. As such, an unregistered (i.e., applied-for or common law) English trademark will need to be accompanied by its French equivalent on commercial advertising and public signage.

Second, even if a non-French trademark is registered but is used on public signs and posters visible from the outside of a premise, the signage must still have a generic term, slogan or other term in French marked predominately in French.[4] Predominantly means that the space allotted to the French text must be at least twice as large as the space allotted to the non-French text, or the characters used in the French text must be at least twice as large as those used in the non-French text.[5]

Implications of the New Québec Language Laws:

It is expected that the newly adopted Québec language laws will be in force in three years or less.  Currently, it takes approximately two years for a trademark application to mature to registration in Canada. As such, if you offer goods and/or services in Québec and do not want to run afoul of the new Québec language laws, then it is imperative for you to review your trademark portfolios and consider a tailored solution to meet your business goals (for example, filing trademark applications with the Canadian Intellectual Property Office immediately).

Notably, these implications may not only affect English language trademarks but also trademarks using other non-French languages and potentially “coined” words.

For more information please contact:
Scott Miller, Co-Managing Partner, Head of the Litigation Department
T: 613.801.1099
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] Regulation respecting the language of commerce and business, CQLR c C-11, r 9, ss 25(4) and 25.1.

[2] CQLR c C-11, r 9, s 25.3.

[3] CQLR c C-11, r 9, s 25.2(1).

[4] Bill 96, An Act respecting French, the official and common language of Québec, 1st Sess, 42nd Leg, Québec, 2021, cl 47 (assented to 1 June 2022).

[5] CQLR c C-11, r 11.


iStock 000016788678Small

By Claire Palmer, June 10, 2022

Canadian Intellectual Property Office (CIPO) just announced that the new amendments to the Canadian Patent Rules to ‘streamline examination', including excess claim fees, will be coming into effect on October 3, 2022. The changes will include a $100/per claim fee for applications with more than 20 claims and a fee for continued examination after three office actions equal to the original examination fee. The amendments also add steps such as 'notice of conditional allowance'.

As a result of these changes, we advise our clients to review their patent portfolios to determine which patents have over 20 claims and request examination for these patents before the October 3, 2022 date to avoid paying the access claim fees, as they would apply at the examination stage after this date.

We will follow up this announcement with more comprehensive coverage of the new changes to Canadian Patent Rules - stay tuned!

For more information please contact:

Claire Palmer, Ph.D., Senior Patent Agent
T: 613.801.0450
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.

pexels-freestocksorg-143654

By Claire Palmer & Carly Horvath, May 17, 2022

Canada’s Patented Medicine Prices Review Board (PMPRB) is a quasi-judicial body that has authority under the Patent Act to protect and inform Canadians “by ensuring that the prices of patented medicines sold in Canada are not excessive and by reporting on pharmaceutical trends”.[1]

Two recent decisions[2] from Canadian appellant courts surrounding the scope of the PMPRB’s authority under the Patent Act represent victories for the pharmaceutical industry, sending a strong signal that the PMPRB does not have the jurisdiction to consider consumer protection or general regulations of drug pricing in its determination of “excessive” pricing.

In response to these recent appellant decisions, the Canadian Minister of Health announced in April that there will be “a new and different set of guidelines” prepared for consultation in the coming months. Notably, these amendments will not include the proposed economic regulatory factors for drug pricing nor the net price disclosure requirements held to be unconstitutional by the Quebec Court of Appeal.[3] The Minister of Health also stated that Health Canada will be implementing the “new basket of comparator countries” as an amendment to the Patented Medicines Regulations, which will come into force on July 1, 2022.[4] This amendment removes the US and Switzerland and adds Japan, Norway, Belgium, Australia, and the Netherlands as comparator countries.[5]

Importantly, while rights holders will need to begin reporting price information in accordance with the new comparator countries beginning on July 1, 2022, there will be a temporary period during which no guidelines will be in effect. During this period, the PMPRB will be holding expedited written consultation on what price tests should be applied, the details of which will be communicated once the new draft guidelines have been published in the Canadian Gazette. Once the new guidelines are finalized, rights holders will be provided with a reasonable period to become compliant.[6] Although the PMPRB is aiming to have these new draft guidelines published in a timely manner, no firm time frame has been established.

This response by the Canadian government should benefit pharmaceutical companies by ensuring that the PMPRB does not exceed its authority by considering consumer protection or general pricing regulations in its determination of “excessive” pricing. In the meantime, we anxiously await the release of the new PMPRB guidelines.

For more information please contact:

Claire Palmer, Ph.D., Senior Patent Agent
T: 613.801.0450
E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

Carly Horvath, Articling Student
T: 613.801.0456
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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.

 


[4] Office of Honourable Jean-Yves Duclos, Minister of Health, “Statement from Minister of Health on the Coming-into-Force of the Regulations Amending the Patented Medicines Regulations” (April 14, 2022).

[6] Office of Honourable Jean-Yves Duclos, Minister of Health, supra note 4.

 

cb photo 111 561d6b13433c5JONATHAN ROCH

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Jonathan assists clients with their intellectual property rights including patents, trademarks, copyrights, industrial designs and trade secretsMBM read_more_btn

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