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Late National Phase Entry in Canada

November 26, 2019

On October 30, 2019, the new Canadian Patent Rules came into force.  The new Patent Rules include a number of significant changes.  One such change relates to the possibility of late national phase entry for PCT applications.  Canada requires national phase entry from PCT applications within thirty (30) months of the priority date, but has long offered the peculiar option of “late” national phase entry up to a year after the original deadline, i.e. by forty-two (42) months.  That option has effectively been eliminated for new PCT filings.

 

Applications filed before October 30, 2019

For PCT applications having an international filing date before October 30, 2019, Applicants may still, as a matter of right, use late national phase entry.  The old regime remains in place for those PCT application filed before October 30, 2019, meaning the national phase deadline can be extended up to forty-two (42) months from the priority date upon payment of a late national phase entry fee. 

 

Applications filed on or after October 30, 2019

For PCT applications having an international filing date on or after October 30, 2019, it still remains possible to file a late national phase entry application in Canada up to forty-two (42) months from the priority date, however under the new Patent Rules this is no longer a matter of right.  Should the thirty (30) month national phase entry deadline be unintentionally missed, the Applicant must request reinstatement of the application by submitting a statement indicating that the failure to meet the thirty (30) month deadline was unintentional.  The Applicant must also pay a reinstatement fee. 

The term unintentional is not defined in the new Patent Rules and as such it is not clear how the Canadian patent office will handle requests of this nature.  The Office has unofficially indicated that they may accept an Applicant’s assertion without evidence; however, Canadian courts are likely to eventually impose a much more stringent standard for what constitutes “unintentional” failure to meet the deadline.  Accordingly, it is recommended that Applicants take measures to ensure national phase entry applications are filed in Canada by the thirty (30) month deadline.

 

Information in this article is for information only.  It is not, and should not be taken as, legal advice.  If you have any questions relating to the issues discussed in this post, or any other intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.