Late PCT national phase entry in Canada as of right will soon come to an end

Smart & Biggar

As we have reported previously, substantial amendments to the Canadian Patent Act and new Patent Rules came into force on October 30, 2019.

A significant change concerns the deadline for entering the Canadian national phase of a Patent Cooperation Treaty (PCT) application. Historically, a PCT application could enter the Canadian national phase up to 42 months from the earliest priority date as a matter of right, provided a CAD $200 late fee was paid if national phase entry occurred more than 30 months from the earliest priority date.

Under the new provisions, if the international filing date is on or after October 30, 2019, an application can still enter the national phase in Canada up to 42 months from the earliest priority date. But if the 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 a request that the rights of the applicant be reinstated and a statement that the failure to meet the 30-month deadline was unintentional.

It appears that the earliest date this new provision can apply in the Canadian national phase is February 28, 2021, i.e. 30 months after the earliest priority date of a PCT application filed on October 30, 2019, in which priority is claimed to an application filed 14 months previously, the right of priority having been restored under Rule 26bis.3 of the Regulations under the PCT. Until then, if no more than 42 months from the earliest priority date have passed, an applicant can enter the Canadian national phase late as a matter of right merely by paying a late fee. In the routine case, where priority is claimed but it has not been necessary to make use of the right of restoration of priority, applicants typically will need to be concerned about this new requirement starting in May 2021.

The Manual of Patent Office Practice (MOPOP) does not discuss what circumstances might constitute an “unintentional” failure to meet the 30-month national entry deadline. However, the MOPOP refers to the PCT Receiving Office Guidelines for guidance as to meeting the “due care” criterion, which applies to certain other missed deadlines under the amended Patent Act and new Patent Rules. The PCT Receiving Office Guidelines discuss “unintentionality” in the context of restoration of priority, stating at paragraph 166I:

The applicant satisfies this criterion if he demonstrates that he did not deliberately refrain from filing the international application within the priority period and that he had a continuing underlying intention to file the international application within the priority period. The receiving Office should focus on the applicant’s intent at the time when the priority period expired, irrespective of any changes in the applicant’s intent before or after the expiration of the priority period.

Analogizing to unintentional failure to meet the 30-month national entry deadline in the Canadian national phase, this may suggest that, as of the 30-month date, the applicant did not “deliberately refrain” from entering the Canadian national phase and also that the applicant had a “continuing underlying intention” to enter the Canadian national phase.

In any event, the new Patent Rules require no more than that the applicant “submits to the Commissioner “a statement that the failure [to enter the national phase] was unintentional.” Moreover, the amended Patent Act and new Patent Rules do not provide any means for the applicant’s statement of unintentionality to be scrutinized either by the Patent Office or by the courts. The legislation also does not set out any consequence with respect to the validity of national phase application if the applicant’s statement is false. Nevertheless, the Patent Act does contain provisions concerning knowingly making false representations, which is punishable by fine or imprisonment.

Given that the new unintentionality requirement will be in effect soon, applicants should plan now to meet the 30-month Canadian national phase entry deadline in their PCT applications.

If you have any questions about these changes and how they may affect you or your organization, please contact a member of our Patents practice group.

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.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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