Additional Patent Term Rules

Summary#

This is a proposal to change the Patent Rules and a few related regulations to put in place the new “additional term” for patents required by CUSMA. The rules set how patentees can apply for extra patent time when the government caused unreasonable delays. The changes would, if made, take effect on January 1, 2025.

What it does#

• Implements details for the new additional patent term created by recent amendments to the Patent Act (Royal Assent in June 2023).
• Sets a step-by-step process for how the Commissioner of Patents / CIPO will:
  • Accept one application for an additional term per patent.
  • Give a preliminary determination, allow a two-month observation period, then issue a final certificate or dismiss the application.
  • Allow anyone to apply for reconsideration of the additional-term length, with a similar notice-and-observation process.
• Defines which days count as “delay” and must be subtracted when calculating the extra time. Many kinds of applicant-driven delays and Office disruptions are included, but overlapping days are only counted once.
• Adds fees:
  • Application for an additional term: standard $2,500, small entity $1,000.
  • Reconsideration application: same amounts as above.
  • Annual maintenance for a patent during the additional term (for the 20th anniversary and later): standard $1,000, small entity $400.
  • Late fee $150 and an additional fee $289.19 for certain restorations.
• Makes related, small changes to:
  • Patented Medicines (Notice of Compliance) Regulations
  • Certificate of Supplementary Protection Regulations
  • Patented Medicines Regulations These changes ensure expiry dates on government lists match any granted additional term.
• Includes other administrative “housekeeping” fixes to how CIPO communicates, counts fees, and handles certain procedural situations.
• Sets service standards for CIPO aims, including preliminary determinations within one year, and database updates within two weeks (electronic payments) or nine weeks (other payments).

Note: This is a proposed regulatory package and was published for public comment (comment period described below). It is not law until finalized.

Who's affected#

• Patent applicants and patent owners (patentees). This is the main group that will use or pay for the new process.
• Small businesses and individual inventors who qualify as “small entities.” The rules offer reduced fees (40% of standard).
• The Canadian Intellectual Property Office (CIPO) and Innovation, Science and Economic Development Canada (ISED) — they will run the new process and incur implementation costs.
• Pharmaceutical and medical device companies — the proposal makes small changes to medicines-related regulations so expiry dates on lists reflect any additional term.
• Foreign applicants and rights holders (a large share of fee revenue is expected from non‑Canadian filers).
• The general public and consumers — indirectly, because longer protection can delay generic or competing products.

If it is unclear who will be affected in a specific case (for example, where ownership or small‑entity status is complex), patentees and agents should check the detailed rules.

Why it matters#

• It follows an international trade commitment (CUSMA) to compensate patentees when the patent office causes long delays. That can make Canada more aligned with major markets and more predictable for investors.
• For inventors and companies that genuinely faced long Office delays, it can extend the time they have exclusive rights and revenue from their invention.
• For consumers and downstream businesses, extra patent time can delay competition and may keep prices higher for longer on some products (especially medicines).
• The package adds new fees and administrative steps. The government estimates:
  • About 1,129 additional-term applications and 51 reconsideration applications over a 10‑year forecasting period.
  • Fee revenue about $2,076,796 (present value) and government implementation costs about $3,441,392, producing a net cost of about -$1,537,155 over 10 years under the analysis cited.
• Key dates and limits to watch:
  • The additional term applies only to patent applications filed on or after December 1, 2020.
  • The proposed regulations would come into force on January 1, 2025, and the earliest patents could receive an additional term would be December 2, 2025 or after.
  • The public comment window for the proposal was 45 days from publication.

If you are a patent owner, agent, or company that relies on off-patent competition, these changes could affect strategy and costs. If you need to respond to the proposal, check the Canada Gazette notice for the official comment instructions.