In accordance with its obligations under the Canada-United States-Mexico Agreement (CUSMA), Canada has introduced a new patent term adjustment (PTA) practice to account for delays caused by the Canadian Patent Office (CIPO) during prosecution. The relevant amendments to the Patent Act^[1] and Patent Rules^[2] came into force on January 1, 2025.

Canadian patents have a standard term of twenty years, reflecting a long-established balance between rewarding inventors for innovations and allowing public access to inventions. The patent prosecution process consumes patent term and reduces the exclusive period within which an inventor can eventually capitalize on an invention. PTA is a means by which the term of a Canadian patent can be extended beyond the standard twenty years to compensate for significant prosecution delays caused by CIPO.

Understanding the PTA rules is critical for patent applicants and patentees who may wish to take advantage of this new tool for extending the life of a patent.

Key Features of Canada's PTA Regime

• Eligibility: Only patents with a filing date on or after December 1, 2020 may be eligible for PTA. Furthermore, a patent will not be eligible for PTA unless it takes more than five years from filing or three years from requesting examination for the patent to issue.^[3]
• Determination of PTA: In essence, the calculation of PTA requires a determination of the number of days between patent grant and the later of five years from filing or three years from requesting examination minus the number of days of delay attributable to the patent applicant or otherwise not directly attributable to CIPO. The types of delay that are subtracted from the PTA calculation are set out in an exhaustive set of rules^[4] and generally fall within the following categories: (i) days when CIPO is waiting for a response or fee payment from the applicant; (ii) extensions of time granted by the Commissioner; (iii) days between the issuance of a third office action and payment of the final fee; (iv) days when the patent application is deemed abandoned; and (v) periods when the patent application is under appeal or judicial review.
• Deadline: PTA must be requested within three months after the day on which the patent is issued.^[5]
• Cost: The fee to apply for PTA is $2,500. This fee can be refunded if the PTA application is dismissed for failing to meet the prescribed administrative requirements. If PTA is granted, additional maintenance fees of $1,000 will be due on the 20^th anniversary after the filing date and each subsequent anniversary thereafter for the duration of the additional patent term.
• Reconsideration: Any person may apply to CIPO for reconsideration of the duration of an additional patent term granted by PTA. The fee for a request for reconsideration is $2,500. While the revised Patent Act refers to "reconsideration" in the general sense, it seems from the legislative amendments, taken as a whole, that applications for reconsideration are intended to shorten, not lengthen, the duration of the PTA calculated by CIPO.

Implications for Patent Holders

CIPO historically grants between 20,000 and 25,000 patents per year.^[6] It is estimated that only 1129 patents could qualify for PTA between 2025 and 2035. Therefore, it appears that fewer than 1% of issued patents will be eligible for PTA within the next ten years.

It will be crucial for patent applicants to understand the specific causes of prosecution delays, and maintain detailed records, if they wish to apply for PTA upon patent grant. However, given the complexity of the new rules and the possibility that PTA may only provide a meaningful addition to patent term in cases of unusual delay by CIPO, the new PTA regime may hold little interest for most patent applicants.

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^[1] Budget Implementation Act, 2023, No. 1 (S.C. 2023, c. 26), section 493

^[2] Regulations Amending the Patent Rules and Certain Regulations Made Under the Patent Act: SOR/2024-241

^[3] Patent Act, subs. 46.1(1)

^[4] See paras. 117.03(1)(a)-(z.12) of the Patent Rules

^[5] Patent Act, para. 46.1(1)(c)

^[6] https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/canadian-intellectual-property-statistics/patent-statistics-2023-2024