Related IP Law and Transitional Provisions
This domain tests how patent law interacts with other IP regimes and how the 2019 amendments and earlier transitions apply to applications and patents. Questions often present an application filed before 30 October 2019 and ask which version of the Rules applies.
Related IP regimes
- Copyright: software may be protected by copyright; patent protection requires a technical effect. The two can coexist.
- Trade-marks: a product shape may be protected by trade-mark but not if it is functional; patent and trade-mark protection can overlap.
- Industrial designs: protect ornamental appearance; a design may be registered alongside a patent for the functional aspects.
- Plant Breeders' Rights: separate regime under the Plant Breeders' Rights Act; not a patent.
- Integrated circuit topographies: separate regime.
Transitional provisions (2019 amendments)
- The Patent Rules (SOR/2019-251) came into force 30 October 2019. Applications filed before that date are generally governed by the former Rules, with transitional provisions in the new Rules.
- Section 28.2 was amended to codify the problem-solution approach; the amendment applies to applications with a claim date on or after 30 October 2019.
- Section 41 was amended to provide appeal to the Federal Court; the former route was to the Commissioner and then to the Federal Court.
- Rule 86 replaced the former 6-month response period with 4 months, extendable.
- Small entity rules and fee changes apply from the in-force date.
Worked example
An application was filed on 15 June 2018 and is still pending. The examiner issues an examiner's report in 2024. Analysis: the application is governed by the transitional provisions; the response period and amendment rules depend on whether the application is a "transitional application" under the new Rules. Generally, the new Rules apply to steps taken after 30 October 2019, but the substantive law (e.g., s. 28.2) applies as of the claim date. If the claim date is before 30 October 2019, the pre-amendment obviousness law applies.
Traps
- Applying the new Rules retroactively to steps completed before 30 October 2019.
- Confusing the claim date (substantive law) with the filing date (procedural law).
- Assuming the 2019 s. 28.2 amendment applies to all pending applications.
- Overlooking the separate regimes for plant varieties and integrated circuit topographies.