Author: Evgenia Apelfield

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: lallard@mbm.com

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: