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21 October 2019
The new Patent Rules, implementing requirements of the Patent Law Treaty, will come into force on 30 October 2019 (for further details please see "Detailed overview of deadlines and requirements under new Patent Rules").
Two requirements under the new rules warrant particular attention for new Canadian patent applications and national phase entries: the Patent Cooperation Treaty (PCT) national phase entry deadline and the requirement for certified copies of priority documents.
Under the current rules, a 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 C$200 must be paid.
The new rules restrict the time for entry into the Canadian national phase for PCT applications with an international filing date on or after 30 October 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 C$200 must be paid and the applicant must submit:
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 will not be required. In practice, assuming that priority is claimed, this will largely first concern PCT applications entering the national phase in March or April 2021.
Historically, a certified copy of a priority document was required only 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 on entry into the Canadian national phase.
If the Canadian filing date is on or after 30 October 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, which is expected to be the World Intellectual Property Organisation (WIPO) Digital Access Service.
If the certified copy or access is not provided in the prescribed period, which is typically 16 months from 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.
Under the new rules, certified copies of priority documents will be required only in limited circumstances in PCT national phase applications.
Certified copies of priority documents will not be required in the Canadian national phase if they are duly filed in the international phase, according to PCT Rule 17.1.
However, if the PCT international filing date is on or after 30 October 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:
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 will result in the priority claim being considered to have been withdrawn.
If certified copies of priority documents are not filed in the international phase, applicants should highlight this in their filing instructions.
For further information on this topic please contact David Schwartz at Smart & Biggar by telephone (+1 613 232 2486) or email (email@example.com). The Smart & Biggar website can be accessed at www.smart-biggar.ca.
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