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General amendments to the Patent Act.

General Amendments to the Patent Act

Consumer and Corporate Affairs Canada, Ottawa

Parliament has passed a set of amendments to Canada's Patent Act that will: -- speed the transfer of technological innovation, increasing productivity and strengthening the nation's competitive position;

--introduce a prompt and low-cost system whereby the public can request the re-examination of a patent by means of an administrative procedure at any time during the life of a patent;

--harmonize Canada's patent system with most other nations, making it simpler for Canadians to acquire foreign patents.


The Patent Act has not been substantially amended since 1935. A number of studies, including that of the Ilsley Royal Commission, have examined the Canadian patent system since 1950. These studies led to the preparation, in 1976, of a departmental working paper on a complete revision of the Patent Act, but these efforts had not, until now, resulted in amendments to the Patent Act.

Canada's present Patent Act needs to be improved to make technical information more readily accessible to the Canadian business community and to bring the act into closer harmony with other industrialized countries. The amendments will simplify the patenting process in Canada while facilitating access to international patents.

The Canadian Patent Office is the largest repository of the latest technological information in Canada -- a resource which has been under-used by industry, researchers and government. More than 22,000 patents are granted each year by the office.

Patent protection rewards the inventor for his achievement by granting him exclusive rights for a limited period of time to produce and market the invention. In exchange, the inventor discloses his invention to the public instead of keeping it secret. The patent then becomes an effective vehicle for promoting transfer of technology.

More emphasis will be placed on the dissemination of technological information contained in patents in order to better serve the needs of small and medium-sized Canadian businesses. Approximately 70% of all patented information on new technologies throughout the industrial world is available only in patent documents. It is impossible to keep abreast of technological innovations without using patent information. The amendments will facilitate the exploitation and dissemination of this technological information, making the Canadian system more useful for Canadians in general and for small- and medium-sized businesses in particular.

Some of the many benefits of using the patent system include:

-- avoidance of duplication

-- solution of technical problems

-- chance to find and exploit foreign technology

-- a way to identify: new products, improvements, industry and research trends and alternative technology.

The transfer of technology to Canadian industries, universities and research centres is an important part of the work of the Patent Office. The office has vast quantities of scientific documentation, most of which cannot be obtained elsewhere. It includes information on the millions of inventions patented by Canadians and foreigners. Technology transfer has been recognized by the World Intellectual Property Organization (WIPO) as one of the main factors contributing to economic development. The Canadian Manufacturers' Association (CMA), the Economic Council and the Science Council have all recommended that we move in this direction.

The Amendments

The main benefits of the amendments to the Patent Act are to harmonize Canada's patent practices with those of most industrialized countries, to speed the transfer of technological information, to provide an administrative procedure for the re-examination of issued patents, and to simplify patenting procedures both for the applicant and for the Patent Office. The following is a brief description of the amendments to the Patent Act: * Ratification of the Patent Cooperation Treaty: The Patent Cooperation Treaty (PCT) is a mechanism by which a patent application can be made simultaneously in more than one country through filing at the Patent Office of a member country. Canada signed the treaty in 1970 but has not yet ratified it. Ratification of the PCT will standardize Canadian patents practices with those of our principal trading partners. It will facilitate access by Canadian applicants to foreign patents. The treaty standardizes minimum disclosure requirements and formalities prior to examination of applications. It will make it easier for Canadians to acquire foreign patents through standardized filing and searching of prior art. * Early Publication: The present system publishes or makes available to the public the contents of a patent only after it is granted. It usually takes three years between filing an application and granting of a patent. Early publication will permit the public and in particular small and- medium-sized businesses to have access to new technology at a much earlier date. * First to File: Canada now uses the first-to-invent system, which has proved costly and cumbersome because the Patent Office must determine which invention was first. This has led to much costly litigation. Under the first to file system, when two or more applications for the same invention are pending at the same time, the patent is granted to the first applicant who files the patent application rather than to the applicant who invented it first. * Absolute Novelty and Grace Period: The underlying fundamental requirement for an invention to be patentable is its novelty. Canada has been a relative novelty country, where an invention could be described in a printed publication for up to two years prior to the filing of a patent, without its novelty being affected. Most other countries are absolute novelty countries, where an invention cannot be patented if it is known before filing; some of these countries also provide for certain exceptions known as grace periods. Changes to the Patent Act will bring in absolute novelty provisions with a grace period of one year rather than the present two years. * Deferred Examination: Under the present Act, all applications are automatically examined. Under a deferred examination system, an application for a patent will only be examined upon submission of an examination request. This request must be made within a prescribed time, accompanied by an examination request fee. Failure to submit the request will result in the abandonment of the application. The advantages are twofold: firstly, the examiner can focus his attention on more important applications and will be relieved of examining applications, which would normally be abandoned after the prescribed time periods. Secondy, the applicant will be dealing with a more efficient system and will also be given an additional period of time to study the market and perfect the invention. * Term of Protection: The term of protection afforded to Canadian patents will be changed from the current 17 years from the date that the patent is granted to the international norm of 20 years from the date of filing. Essentially this change reflects the three years it normally takes for a patent to be granted and in practice will provide the same period of patent protection. * Renewal Fees: Renewal fees on patents will be paid periodically. Their main advantage is that they move inactive patents from the Patent Office files, thus enabling industry to use the technology contained in these patents which are more commercially viable bear a greater proportion of the costs than those which are abandoned. The present structure allows lower fees for small businesse; similar provisions will be applied to renewal fees. Canada is one of the last industrialized countries to implement renewal fees. * Re-examination of Patents: Under the present system a patent can be declared invalid only by the courts. The introduction of an administrative procedure for the re-examination of a patent will allow for a prompt and low-cost reconsideration of the validity of a patent on the basis of previously unconsidered prior-art documents. The re-examination, which will be conducted by a Board appointed by the Commissioner of Patents, can be initiated by the patentee or a third party at any time during the term of a patent.

Other Technical Amendments involving clairification of language and intent.
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Title Annotation:Canada
Publication:Canadian Chemical News
Date:Sep 1, 1989
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