CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
ing party will be notified of the result and that is the end of the process. If they determine that the request does raise a substantial new ques - tion of patentability, the patentee will be noti- fied and given the opportunity to reply and to participate in the re-examination proceeding. A re-examination proceeding may result in claims being confirmed, cancelled or amended. After filing the request for re-examination, the request- ing party is not involved in the proceeding apart from being notified of the result. 1.8 Remedies Against Refusal to Grant an Intellectual Property Right Where a patent examiner concludes that an application should be refused they will issue a final action rejecting the application. If an appli- cant does not withdraw their application, they may seek recourse before the Patent Appeal Board. The Patent Appeal Board will consider the examiner’s grounds for rejecting the appli- cation and the applicant will be given an oppor- tunity to be heard, which can include an oral hearing. The Patent Appeal Board will provide a recommendation to the Commissioner of Pat- ents who may decide to maintain the rejection, allow the application or incorporate any neces- sary amendments proposed by the applicant. If the Commissioner ultimately refuses to grant the patent, the applicant may appeal to the Federal Court of Canada. 1.9 Consequences of Failure to Pay Annual Fees Annual maintenance fees are required to main- tain patent applications and issued patents. Maintenance fees must be paid for each one- year period from the second anniversary of the filing date of the application. If a maintenance fee is not paid, a notice will be issued setting a deadline for payment of the missed fee and a late fee penalty. If these fees are not paid by the
set deadline, then the application will be deemed abandoned or, if the patent has issued, the pat- ent will be deemed expired. A patent application that is deemed abandoned can be reinstated if certain requirements are met, including by demonstrating that the appli- cant took due care in complying with the official requirements despite not paying the mainte- nance fee. If a patent is deemed to have expired, it is possible to make a request to the Commis- sioner of Patents to reverse the deemed expiry. The time limit for a patentee to request the rever- sal of a deemed expiry of a patent is 12 months after the end of six months after the applicable maintenance fee due date. The Commissioner will only reverse the deemed expiry if it is deter- mined that the failure to pay the fees occurred despite due care having been taken. Like patents, a maintenance fee must be paid to maintain industrial design registrations. This fee must be paid by the end of five years from the registration date. If this deadline is missed, the fee may be paid up to six months after the deadline, provided a late fee is also paid. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights There are several mechanisms by which a pat- entee can amend their rights once a patent is granted. For a period of 12 months after the issue of a patent, a patentee may request that the Patent Office correct any obvious mistakes in the specification or drawings in the patent. A patentee may also request re-examination of their patent. This involves the same procedure discussed in 1.7 Third-Party Rights to Partici- pate in Grant Proceedings with respect to third parties. This procedure may be used by a paten- tee to amend their claims to avoid prior art that
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