Canadian Lawyer InHouse

11 CANADIANLAWYERMAG.COM/INHOUSE MAY/JUNE 2019 Canada effectively provides a one-year grace period that permits national phase entry in Canada up to 42 months on payment of a fee. While this grace period will still be available, applicants under the amended Rules must now include a statement that their failure to meet the 30-month dead - line was "unintentional." It is unclear what the threshold will be. EXAMINATIONDEADLINES WILLBESHORTENED Deadlines during the examination pro- cess have been reduced in an attempt to speed up patent prosecution. For example, the deadline to request examination is re- duced to four years from five years after filing. Likewise, the time to respond to an office action will be reduced to four months from six months (although a two- month extension can be obtained). The time to pay the issue fee has also been re - duced to four months from six months. CERTIFIEDCOPIESOFPRIORITY DOCUMENTSWILLBEREQUIRED Certified copies must now be provided for all priority documents or made available to the commissioner via a digital library. This requirement will not apply to PCT applications where priority documents have already been submitted to WIPO. FILEWRAPPERESTOPPELISNOW INEFFECTINCANADA Finally, although not required to satisfy the requirement of the PLT, an omnibus budget bill has brought "file wrapper es- toppel" to Canada. This reverses nearly 20 years of case law and is already effective as of Dec. 13, 2018. Under the doctrine of file wrapper es- toppel, statements made about an inven- tion during examination can influence future claim construction. For example, if the applicant argues that a claim has a cer- tain meaning in order to avoid cited prior art, those statements can be introduced as evidence in future litigation to rebut an at- Dan Raymond is an associate in the Ottawa office of Ridout & Maybee LLP. tempt to provide a different construction of the claim at trial. These changes will better harmonize Canada's patent legislation with its trading partners. Although this will mostly be positive, care must be taken to avoid pitfalls created by the less helpful changes. IH Bright minds protecting bright ideas since 1893 Ranked as one of Canada's top IP law firms in both Canadian and international surveys of in-house counsel, we understand the business of innovation and the vital role that IP plays in today's competitive, market-driven economy. ridoutmaybee.com TORONTO | OTTAWA | BURLINGTON PATENTS | TRADEMARKS | INDUSTRIAL DESIGNS | COPYRIGHT | IP LITIGATION ntitled-4 1 2019-02-12 10:10 AM

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