The Canadian patent system is governed by the Patent Act and administered by the Canadian Intellectual Property Office (CIPO). Canada is also a signatory in international treaties that address intellectual property concerns. This includes the Patent Cooperation Treaty (PCT) and the Canada-United States-Mexico Agreement (CUSMA).
Most recently, Canada has approved the Patent Term Adjustment system, which was approved on January 1, 2025. Using this system, those who have pending applications for a patent have the benefit of extended time. Of course, that’s assuming that they meet the requirement set by law.
In this article, we’ll talk more about this topic.
How does Canada approach patent law?
Canada’s patent law gives inventors' sole rights to their inventions for a specific time. Typically, this is 20 years from the filing of the application. For approval, the invention must be new, useful, and not obvious. It must also include a detailed description that lets others understand and possibly use the invention once the patent expires.
The process involves a formal examination. During this time, CIPO reviews the application to ensure it meets all legal requirements. Unfortunately, this process can take years, which can be a problem for inventors. To illustrate, if an inventor files an application in 2020 and it takes five years to get approval, he only has 15 years of exclusivity over the invention.
This is exactly what recent reforms are trying to address. Specifically, the patent term adjustment (PTA) system is a way to make up for unreasonable delays in the patent process. This new law is enforced on top of other Canadian legislation on patent.
How does patent term adjustment work in Canada?
Patent term adjustment provides additional patent term beyond the standard 20 years. Under this system, an inventor who has pending patent may apply for extra time if either the:
- patent grant process takes more than five years from the filing date
- grant takes more than three years from date of examination request
PTA only applies for delays caused by or because of CIPO. This is why the amount of time it takes to prepare the documents for application is not included. Any periods of applicant delay, such as late responses or incomplete filings, are taken out of the time computation.
Here are some additional requirements for patent term adjustment:
- application filing must be on or after December 1, 2020
- grant must be after December 1, 2025
- the inventor must apply within three months from grant of the patent and payment of the fee
- the added time is placed at the end of the 20-year period
- the patent must remain in force throughout the 20-year period and the added time
- accrual of patent term adjustment stops if a Request for Continued Examination is filed or if a third Examiner’s Report is made available.
Our Lexpert-ranked best intellectual property lawyers in Canada can offer more targeted information on patent term adjustment.
What are the chances of getting PTA?
Currently, the CIPO’s process period for patents is well within the required timeframe. From time of application filing to CIPO’s decision, it only takes around 32 months to get an answer. In these cases, PTA is unlikely because it does not fall under the definition of “unreasonable delay.” More specifically, the delay must be at least five years.
So, not a lot of inventors can actually make use of this legal benefit. At the same time, Canada is positioning itself to make sure that in case of unreasonable delays, additional protection is available for inventors. This helps encourage them to file for patents and essentially ensure that valuable information is made available.
Who grants patent term adjustment?
The CIPO reviews applications for PTA and calculates any extra time that may be added. Based on the rules, CIPO issues a certificate of additional term if the adjustment is approved. If there are disagreements, the Commissioner of Patents may review and reconsider the duration of the additional term.
A case may also be filed before the Federal Courts in case of disputes. Note though that in Federal Courts, the term may only be shortened. The Commissioner, however, has the authority to lengthen a PTA if the situation requires it.
Why does term adjustment matter?
Patent term adjustment helps inventors ensure they receive the full value of their exclusive rights. This is even if the patenting process is delayed through no fault of their own. Without PTA, administrative delays could eat into the 20-year period, decreasing the inventor’s ability to benefit from their invention.
This adjustment is especially significant in industries where regulatory requirements are strict. For example, pharmaceuticals or biotechnology industries require extensive study by the government before being approved for sale. In these fields, even a few lost months of patent protection can mean a substantial loss of revenue or competitive advantage.
The PTA essentially helps level the playing field by making sure that the inventors’ period of exclusivity is not unfairly shortened because of factors outside their control.
When does protection for patents start?
The real protection that a patent offers begins only after the patent is officially granted by CIPO. Before this, even though your invention is marked as “patent pending,” you don’t have the authority to stop others from benefitting from your idea. The “patent pending” label is mainly a warning to others that you’ve started the process.
There is a small exception. If your patent application is published and someone uses your invention before the patent is granted, you might be able to seek compensation later. However, this is only possible if the final granted patent closely matches the publication.
Does patent term adjustment apply to continuation?
Continuation application is a concept common in the US. However, it does not exist in Canada. Instead, what we have are “divisional” applications, which are filed when an original application contains more than one invention. When it comes to patent term adjustment, the rules focus on the filing date of the earliest application in the family.
If a divisional application is filed, PTA is based on the filing date of the parent application. This means that for a divisional application, the parent application must meet the requirements set out above. The calculation of any extra patent term will also be based on this earliest filing date.
Here’s an overview of divisional patent:
Looking for legal guidance on the divisional patent process? Our Lexpert-ranked best intellectual property law firms in Canada can help.
Possible pitfalls of patent term adjustment
The PTA system is a recent development. Because the law is still new, there’s very few case laws to guide applicants and counsel through the process. As a result, many aspects of term adjustment remain untested. Despite this, it’s possible to anticipate several potential challenges that inventors may encounter.
Pinning CIPO delay
A possible challenge is accurately pinpointing delays because of CIPO. Since only CIPO’s delays count toward patent term adjustment, inventors must carefully document every action and inaction so that applicant delays are excluded from the calculation. Misattributing delays can lead to incorrect estimation and potential loss of rights.
Computing cost and benefit
The cost of a PTA application is around $2,500, which is a substantial amount. For a small entity, the amount is around $1,000. This requires patent lawyers to assess whether pursuing PTA is worth it. This would be done by comparing the economic benefit of the added time versus the cost of the fee.
Keep in mind that PTA application is done at the tail end of the 20-year period. This should be enough time for inventors to figure out if the economic benefit is substantial. In some cases, the tacked-on term is also minimal since CIPO is on target in producing patent approvals.
Timing maintenance costs
Ideally, a patent lawyer is also responsible for keeping track of important dates. Specifically, timing when maintenances fees need to be paid and ensuring that they’re paid. Patent fees fall into several categories, including late fees, reinstatement fees, examination fees, and so on.
Application for PTA is only possible if the primary patent is active. This means that the owner must pay the maintenance fees consistently throughout that 20-year period. If you miss and the patent is not “maintained,” then there’s really nothing to extend within the meaning of PTA.
But what if the 20-year period runs out before a PTA decision? No precise answer is available yet due to the lack of case laws available. In theory though, the patent is still enforceable subject to the approval of the PTA. If the PTA is rejected, then the expiration of the patent would retroact on the last day of the 20-year period.
Reconsideration and appeal
If CIPO’s determination is challenged, inventors, with the help of lawyers, may need to represent clients before the agency concerned. These proceedings can be complex, requiring detailed legal arguments and evidence to support the client’s position on the appropriate extension of time.
Avoid triggering events
Accumulation of additional days ends with the issuance of a third Examiner’s Report or the filing of a Request for Continued Examination (RCE). Lawyers can help clients make smart choices during the patent process. For example, they can guide them in avoiding actions that would stop the extra patent time from building up.
How patent lawyers can help
Intellectual property lawyers or those specializing in patent law can help in different stages of the patent application process. Perhaps one of the most critical ways they can help is in the preparation stage. At this point, the inventor needs to prepare multiple documents to show and prove that their invention is unique or novel.
Often, this involves doing a patent search to look through all other products globally. By comparing products in the same industry, lawyers can determine if the item would pass CIPO’s patent checking process. With sufficient documentation, CIPO’s patent search process could be cut short since most of the work is already done.
Here’s how a paten search usually works:
Rejection of a patent application can also be refiled for reconsideration. In these cases, a poorly made application could be “cured” with the help of a professional. This is because more often than not, a rejection is due to documentary lapses at the initial filing.
Patent lawyers also play a role during the examination and prosecution stages. They can respond to examiner’s reports and make amendments to resolve any objections raised by the patent office. Their legal expertise helps ensure that the application is compliant with legal requirements while maximizing the chances of approval.
Taking advantage of patent term adjustment
Ultimately, patent term adjustment is a new legislation designed to help investors against patent infringement. With the newness of the law, however, having the help of a legal professional can help ensure that its intended purpose is achieved. Note though – PTA is only available if a patent application is already filed, so make sure to place the application immediately!
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