Canada’s Intellectual Property Law Firm

The new Canadian Patent Rules will be in force October 30, 2019—get ready now for these two key requirements

As discussed in detail in our recent article, new Canadian Patent Rules, implementing requirements of the Patent Law Treaty, will come into force on October 30, 2019.

Two requirements under the new Rules warrant particular attention for new Canadian patent applications and national phase entries.

PCT national phase entry deadline

Under the current Rules, a Patent Cooperation Treaty (PCT) application may enter the Canadian national phase as a matter of right up to 42 months from the earliest priority date. If the application enters the national phase more than 30 months from the earliest priority date, a late fee of CAD $200 must be paid.

The new Rules place restrictions on the time for entry into the Canadian national phase for PCT applications having an international filing date on or after October 30, 2019.

Such applications can still enter the national phase in Canada up to 42 months from the earliest priority date, but new requirements are imposed for late national entry. If an application enters the national phase more than 30 months from the earliest priority date, a reinstatement fee of CAD $200 must be paid and the applicant must submit (1) a request that the rights of the applicant be reinstated and (2) a statement that the failure to meet the 30-month deadline was unintentional.

Applicants should plan now to ensure that applications under the new Rules enter the Canadian national phase within 30 months of the earliest priority date, so that reinstatement of rights is not required. In practice, assuming priority is claimed, this will largely first concern PCT applications entering the national phase starting in March or April 2021.

Requirement for certified copies of priority documents

Historically, a certified copy of a priority document was only required in response to a requisition by an examiner during prosecution of a Canadian patent application. This was a rare occurrence.

The new Rules establish a general requirement that certified copies of priority documents be available to the Patent Office shortly after filing in Canada or at entry into the Canada national phase.

Convention (non-PCT) applications

If the Canadian filing date is on or after October 30, 2019, the applicant must submit to the Patent Office a certified copy of each priority application, or make it available to the Patent Office from a digital library expected to be the World Intellectual Property Organization (WIPO) Digital Access Service.

If the certified copy or access is not provided within the prescribed period, which is typically 16 months of the earliest priority date, the Patent Office will issue a notice requiring the certified copy or access within two months of the date of the notice. No government fee is payable when responding to the notice.

Failure to comply with the notice results in the priority claim being considered to have been withdrawn.

Providing certified copies of priority documents with filing instructions will simplify the filing procedure.

PCT national phase applications

Under the new Rules, certified copies of priority documents will be required in only very limited circumstances in PCT national phase applications.

Certified copies of priority documents will not be required in the Canadian national phase if they were duly filed in the international phase in accordance with PCT Rule 17.1.

But, if the PCT international filing date is on or after October 30, 2019, in the rare event that a certified copy of the priority document was not duly filed in the international phase, a certified copy must be submitted to the Patent Office, or made available from a digital library expected to be the WIPO Digital Access Service.

If (when required) a certified copy of a priority document is not filed or made available at the time of national entry, the Patent Office will issue a notice requiring the certified copy or access within two months of the date of the notice. No government fee is payable when responding to the notice.

Failure to comply with the notice results in the priority claim being considered to have been withdrawn.

If certified copies of priority documents were not filed in the international phase, applicants would ideally highlight this in their filing instructions.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.