Canadian Patent Office finalizes patent term adjustment rules

On January 1, 2025, Canada will implement a patent term adjustment (PTA) system to compensate the Canadian Intellectual Property Office (CIPO) for unreasonable delays in the examination process of patent applications. The final regulations were published on December 18, 2024.

• Only a small number of patents are eligible for PTA. Applicant delays have minimal impact on PTA.
• Since the issuance of a third office action or the filing of a request for continued examination (RCE) effectively terminates potential PTA accumulation, applicants should consider making amendments as early as possible, including proactive amendments when requesting examination or the first examiner's report, to keep the patent application process compact and increase the possibility of PTA.
• CIPO will not initiate PTA calculation unless a PTA application is filed within 3 months after patent grant and a fee of US$2,500 is paid.
• The PTA only applies to granted patents with a filing date on or after December 1, 2020.
• Only patents granted after December 1, 2025 are eligible for PTA application, and no PTA application expires before March 2026.
• If the PTA is approved, annual maintenance fees are required to keep the patent valid for an additional period beyond the original 20 years of the patent.
• Postponing the request for substantive examination and the payment of fees until the end of the substantive examination period as much as possible can increase the possibility of obtaining a PTA and minimize the fees deducted from the PTA.