A Practical Guide to the transition to Canada’s new Patent Act and Rules Part II

September 12, 2019
By Stephen Beney and Denver Bandstra

In 2014, Canada’s patent law was amended to comply with Canada’s obligation under the Patent Law Treaty (PLT), but implementation required amending the Patent Rules. The Patent Rules have now been finalized, and amendments to both the Patent Act and Rules will come into force on October 30, 2019 (CIF).

As mentioned in the first article, this series of articles will cover the most significant amendments that affect users of the system, and in the transition to the new regime, will discuss options available to Applicants.

National Phase Entry of PCT Applications

This article discusses National Phase Entry of PCT applications under the new Act and Rules, and introduces how “unintentional” enters the picture in terms of “late” National Phase Entry of PCT Applications.

The filing requirements for National Phase Entry of PCT applications under the new Patent Rules remain substantially the same as those of the current Rules. For example, under both the new Rules and current Rules, when entering the National Phase, an applicant must submit an English or French translation of the international application at the time of National Phase Entry if the international application is not entirely in English or French and pay the basic national fee. The new Rules differ from the current Rules when an applicant is “late” entering the National Phase.

Under the current Patent Rules, an applicant has 30 months from the priority date of their PCT application to enter the National Phase in Canada.  If the 30-month deadline is missed, the applicant, as of right, may extend the period to enter the National Phase in Canada to 42 months by paying a late fee.

Under the new Patent Rules, an applicant can no longer choose to extend the National Phase Entry period to 42 months as of right for all PCT applications having an international filing date on or after October 30, 2019. The new Patent Rules require the applicant to request reinstatement by submitting a statement that the failure to meet the 30-month deadline was unintentional. In addition to the statement, the applicant must also pay a reinstatement fee. Note the requirement for a statement that the failure to meet the 30-month deadline was unintentional does not apply to National Phase Entry applications filed on or after October 30, 2019, so long as the international filing date is before October 30, 2019.

What exactly will be considered “unintentional” is not clear as there is no definition of that term in the new Act or Rules. Accordingly, it is not yet known how the Canadian Intellectual Property Office (CIPO) will interpret this term when deciding if a PCT application should be reinstated.

For guidance, one can look to other jurisdictions that include a similar “unintentional” concept in their patent law. For example, in the U.S., the unintentional standard can be, at times, quite lenient. Often, a prompt request for reinstatement stating “the delay was unintentional” is likely to be deemed sufficient by the USPTO to revive an application. However, the longer the delay, the more likely it is that the USPTO will not accept such a simple statement and will request additional explanation that the delay truly was unintentional.

Moreover, since “unintentional” is not defined in the new Rules, it is foreseeable that Canadian Courts will be asked to review what is “unintentional” during a proceeding that seeks to invalidate a reinstated patent on that ground. Only time will tell if the Courts will give deference to an initial reinstatement decision by CIPO, or if they will define and routinely review “unintentional” reinstatements of National Phase Entries and allow patents to be invalidated on a finding that the reinstatement of the National Phase Entry was not “unintentional”. That being said, when looking again to the U.S. for guidance, the U.S. Courts, when asked to invalidate a patent, have been very unwilling to consider whether an abandonment was truly “unintentional” after such a finding by the USPTO.

Regardless of how “unintentional” will be defined or handled by CIPO or the Courts, if you want to preserve the 42-month National Phase Entry late period and avoid the “unintentional” issue, ensure your PCT application is filed before the new Rules come into force, that is, before October 30, 2019.

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