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26 October 2020
Substantial amendments to the Patent Act and new Patent Rules came into force on 30 October 2019 (for further details please see "Detailed overview of deadlines and requirements under new Patent Rules" and "New Patent Rules in force").
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 that a C$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 30 October 2019, an application can still enter the national phase in Canada 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 reinstatement fee of C$200 must be paid and the applicant must submit a request that its rights be reinstated and a statement that the failure to meet the 30-month deadline was unintentional.
It appears that the earliest date on which this new provision can apply in the Canadian national phase is 28 February 2021 (ie, 30 months after the earliest priority date of a PCT application filed on 30 October 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 will typically 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 that:
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.
Analogising 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 provide no means for the applicant's statement of unintentionality to be scrutinised by the Patent Office or the courts. The legislation also sets out no consequence with respect to the validity of a national phase application if the applicant's statement is false. Nevertheless, the Patent Act contains 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.
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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