Out with the Old? Old Act Patents Still Relevant Twenty Years After the Coming Into Force of the New Patent Act 

publication 

Winter 2009 - (Intellectual Property Brief Fall 2009)

Intellectual Property Brief Fall 2009

October 1, 2009 marked the twentieth anniversary of the coming into force of several major revisions to the Canadian Patent Act , colloquially referred to as the "New Act," in contrast to the "Old Act" that existed prior to that date. The most significant changes introduced in the New Act included a change to the term of patents from seventeen years from the issue date to twenty years from the filing date, a change from the first-to-invent system to the first-to-file system, and the introduction of published applications.

There were nineteen applications filed on October 2, 1989, the first business day of the New Act. While a number of these did issue to patent, only two were maintained throughout the term of the patent, and became the first of the New Act patents to expire on October 1, 2009. In classic Canadian fashion, these included an English language patent, Canadian Patent number 2,000,001 to Panametrics, Inc., entitled "Oxygen Sensing Method and Apparatus" and a French language patent, patent number 2,000,015 to Institut Francais Du Petrole, entitled (in English) "Catalytic Reforming Process."

It is also noteworthy that on September 29, 2009, Canadian patent number 1,341,598, entitled "Acid-Labile Sub-Unit (ALS) of Insulin-Like Growth Factor Binding Protein Complex" issued following Commissioner's Decision 1283. Just two days shy of the anniversary of the expiry of the first New Act patents, an Old Act application issued to patent, and as applicable under the Old Act, will expire seventeen years from the issue date, on September 29, 2026. This may not be the last of these patents issuing under the Old Act to emerge either.

According to the CIPO Annual Report 2007-08, there are at least seven conflict proceedings still before the patent office, and the resolution of these may lead to the issuance of additional Old Act patents. As patent applications were not published under the Old Act, the subject matter of these is still unknown. The same holds true for Commissioner's Decisions resulting in abandonment of Old Act applications. These Commissioner's Decisions are generally not published, unless the application issues to patent.

According to the 2008 Canadian Patent Office Record, twenty-one Old Act applications issued to patent in 2008, and thus far in 2009, eleven have issued, including the aforementioned '598 patent following Commissioner's Decision 1283. The thought of a twenty year prosecution process for a patent application is astounding. It would have been hard to imagine, back in 1989, that there would be Old Act cases pending when the first of the New Act patents expired. Not surprisingly, the overwhelming majority of Old Act applications issuing recently are in the biotechnology arts. Accordingly, there is still a ways to go before the Old Act is finally put to rest, as litigation arising from these recently issued cases may be ongoing for some time to come.

This article appeared in Lang Michener's Intellectual Property Brief Fall 2009.