Reminder to all Canadian Patent Applicants: Late National Phase Entry as of Right Soon Coming to an End

February 17, 2021
By Patricia Folkins and Dominique Lambert

Following ratification of the Patent Law Treaty (PLT) by Canada, new Patent Rules came into force on October 30, 2019 primarily to amended Canadian patent practices to comply with this treaty. See our articles here which describe in detail the changes brought in by the new Rules. Since their coming into force (CIF), we have seen a series of changes such as shortened deadlines, new correction procedures, submission of certified copies of priority documents, overhauled abandonment and reinstatement procedures and a requirement for a showing of due care for some reinstatements.

Transitional provisions are included in the Patent Rules for applications having a filing date prior to the CIF. Those applications are defined by one of three categories. Of note for this article are those applications which belong to Category 3, which is defined as:

an application for a patent for which the filing date is on or after October 1, 1996 but before the coming-into-force date.

Applicants need to keep in mind that there are key transitional provisions for Category 3 applications that will soon come to an end.

End of “Late national phase entry” as of right

Patent Cooperation Treaty (PCT) applications with a filing date on or after October 30, 2019, will have to meet the requirements of Section 154(3) of the new Patent Rules which states that, if the Applicant does not file the national phase application in Canada on or before 30 months from the priority date, they may still file the national phase application if, no later that 12 months after the 30 month due date, they submit a request that the application be reinstated along with a statement that the failure to timely file the application was unintentional.

The 30-month national entry deadline of an application filed October 30, 2019 with a priority date of October 30, 2018 will be April 30, 2021.1 Therefore, for the majority of late national phase entry applications being filed on or after May 1, 2021, the Applicant will not only have to request reinstatement (and pay an additional late fee), they will also have to make the statement that the reason they were late, was due to an unintentional failure to file by the due date.

It is still not clear what circumstances might constitute an “unintentional” failure. The Rules and the Canadian Patent Office’s Manual of Patent Office Practice (MOPOP) appear to suggest that a simple statement will be acceptable, but it will be interesting to see how this develops in the future.

Transitional provisions will continue to apply for some international applications still satisfying the prescribed requirements (filed before October 29, 2019). Meaning that the latest possible date for provisions allowing a late national phase application as of right to apply will be April 29, 2023 (42 month for an application filed October 29, 2019 with no priority claim). However, care should be taken as many applications will fall under the new provisions and will need to meet the “unintentional” requirements.

End of old amendment after allowance procedure

Under the previous Rules the only mechanism to make substantial amendments to the specification (i.e. other than to correct a clerical error) after a Notice of Allowance, required Applicants to allow the application to become abandoned by failing to pay the final fee and then subsequently submit the desired amendments along with the request for reinstatement. Under the transitional provisions of the new Rules, this procedure continues to apply for category 3 application for which a notice of allowance was sent before October 30, 2019. 

If the Notice of Allowance was issued on the last day possible, i.e. October 29, 2019, the deadline to pay the final fee, which was then 6 months, fell on April 29, 2020, which was extended to August 31, 2020 by the designated days due to the COVID pandemic. As such, the latest possible date to use the former procedure for amendments after allowance will be August 31, 2021.

Under the new Rules, for applications for which a Notice of Allowance was sent after the CIF, the only option to amend an application (other than correcting an obvious error) is to request withdrawal of the Notice of Allowance under Rule 86(14). The application would then be returned to prosecution and any regular actions may be taken.

In summary, as some key transitional provisions of the revised Canadian Patent Rules are soon coming to an end (including late national phase entry as of right) and other new provisions will begin to apply, care should be given to ensure that the applicable Rules are followed. If you have any questions regarding these provisions and how they may apply to your Canadian patent application, one of our Patent Professionals will be happy to assist.

1 Note that for any PCT application filed on or after October 30, 2019 in which a request for restoration of priority has been made based on the earliest possible priority date (i.e. 14 months before the PCT filing date), the due date for national phase entry will be February 28, 2021, and therefore any national phase application in these cases will also require a statement that the failure to timely enter national phase was unintentional. 

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