Introduction to Patent Term Adjustment (PTA) in Canada

The Canada-United States-Mexico Agreement, or CUSMA, came into effect on July 1, 2020. As a signatory to CUSMA, Canada not only promises to process Canadian patent applications in a timely manner, but also promises to provide term compensation to patent owners who unreasonably delay the issuance of Canadian patents. Under the new Canadian patent regulations that will take effect on January 1, 2025, Canada will compensate patent owners who unreasonably delay the granting of Canadian patents by proposing "additional terms", which is another major change in the Canadian patent system after the introduction of excess claim fees and RCE requests. Section 46.1 of the Canadian Patent Amendment Act, which provides for the statutory framework for "term compensation", provides that if

• (a) The patent was issued after the later of
  • (i) the fifth anniversary of the applicable date specified in clause (2)
  • (ii) the third anniversary of the date on which, without regard to section 35(4), a request for examination of an application for a patent was made under section 35 and the fee referred to in section 35(1) and, where applicable, the late payment fee referred to in paragraph 35(3)(a) were paid
• (b) the filing date of the patent application is on or after December 1, 2020; and
• (c) The patentee shall apply for time limit compensation in accordance with the regulations within 3 months after the date on which the patent is granted and pay the fee

Section 46.1(2) of the Canadian Patent Act defines "applicable date". Depending on the type of patent application in Canada, the term "applicable date" may be:

The applicant needs to file a request for extension of term and pay the prescribed official fee. If the extension of term is granted, the applicant needs to pay the necessary annual fee to maintain the rights. Starting from the 20th year, the annual fee will be the same each year.

The extension of the term is calculated by subtracting the number of days from the later of the fifth anniversary of the applicable date to the third anniversary of the request for examination and the date of grant of the patent, less the number of days to be subtracted as determined in accordance with the Implementing Regulations. The number of days to be subtracted under section 46.1(4) of the Canadian Patents Act is the sum of all days in the period or periods specified under rule 117.03(1) of the Patents Rules, including:

• Every day that the substantive examination is postponed
• Every day a patent application is abandoned
• For each day of extension of time used under section 3(1) of the Patents Rules
• each day from the date of the Notice of Grant or Notice of Conditional Grant until the date on which the final fee is paid (unless the notice is rescinded, the notice is withdrawn or the application is abandoned); and
• Every day after the annual fee late payment due date

The Certificate of Supplementary Protection (CSP) takes effect at the same time as any patent term extension that may be granted. That is, the term of the CSP takes effect upon the expiration of the term specified in Article 44 of the Patent Law, regardless of whether the patent term can be extended. The CSP provisions only apply to patents related to drug ingredients or combinations of drug ingredients.

In summary, a Canadian patent is not eligible for a term extension unless it was issued after the later of the following two dates:

• (i) Five years from the national entry date, filing date or application date
• (ii) Three years from the date of filing the request for substantive examination

CIPO will update the Manual of Patent Office Practice (MOPOP) regarding term extensions later in 2025.