On May 18th, 2024, the proposed regulations to enact the patent term adjustment (PTA) system were published for commentary.

Understanding Patent Term Adjustment (PTA)

The PTA system is a regulatory mechanism designed to compensate patent holders for delays in the patent granting process. When a patent’s issuance is delayed beyond a reasonable timeframe, the PTA system extends the patent’s life, ensuring that innovators do not lose valuable time to commercialize their inventions due to administrative setbacks.

Eligibility

To be eligible for an additional patent term, the patent must be based on an application filed on or after December 1, 2020.  The additional patent term only applies to patent applications that do not issue within a reasonable time frame.  The following criteria set out reasonable time frames:

• Convention or First Filed Patent Applications: A patent must be issued no later than the later of either five years from the filing date of the application or three years from the date of the request for examination.
• Patent Cooperation Treaty (PCT) National Phase Applications: For these applications, the patent must be issued no later than the later of either five years from the national phase entry date or three years from the date of the request for examination.
• Divisional Applications: For divisional applications, the patent must be issued no later than the later of either five years from the presentation date of the divisional application or three years from the date of the request for examination.

If these time frames are not met, then there may be an opportunity to request a Patent Term Adjustment.

Duration:

However, the duration of the additional term is determined by subtracting certain days from the total delay in issuing the patent. These subtracted days include periods not attributable to the Canadian Intellectual Property Office (CIPO), such as delays caused by the patent applicant, and overlapping periods are only counted once. The time taken to respond to an Examiner’s report or pay the final fee are considered delays caused by the patent applicant.  The additional term of the PLA begins after the standard 20-year patent term expires and only if the patent remains valid and is not void before that expiry.

Application Process:

An application for an additional term must be submitted in writing by the Patentee/Applicant, indicating the patent number, and accompanied by the prescribed fee of $2,500 for a standard entity. The process involves an initial assessment of eligibility, a preliminary determination of the additional term’s duration by the Patent Office, a two-month observation period for submissions, and a final determination by the Commissioner. If granted, a certificate outlining the duration of the additional term will be issued.  Further, additional maintenance fees will be due on any extended term.

Next Steps

The proposed amendments, subject to any changes resulting from the consultation on these amendments, are expected to come into force on January 1, 2025. The initial date when patents can qualify for an additional term is on or after December 2, 2025.

Conclusion

The time limits set by the Patent Office and the number of subtracting delay days included in the calculation of the PTA both favor the Patent Office.  This together with the onus on the Patent holder to initiate and pay for a review of the PTA, leads me to believe that very few PTA requests will be initiated by patent holders.

For more information please see the Canadian Gazette, Part 1: Vol. 158 (2024)