Today on IPcopy we have a guest post from Wendy Lamson of Perley-Robertson, Hill & McDougal LLP on the subject of national phase entry in Canada. This post has been reproduced with the permission of the author. 

Proposed rules in Canada make PCT late entry more difficult

Currently, the deadline for national phase entry in Canada can be extended to 42 months from the priority date.  A patent applicant simply needs to pay a late fee of $200.00 Cdn, together with the request for national phase entry.¹  No reasons for failure to meet the 30 month deadline are required.  However, this will soon change if proposed amendments to the Canadian Patent Rules are implemented that bring Canada into conformity with the Patent Law Treaty.

While the deadline of 42 months for late national phase entry will not change, the proposed Rules impose additional requirements for late entry.  According to proposed Rule 150(4)(a)(i), in order to effect national phase entry after 30 months from the priority date, an Applicant must submit a declaration that the failure was unintentional along with a statement of the reasons why the deadline was not met.²  As to what will specifically constitute “unintentional” is difficult to say at present.  The Office has indicated that the “unintentional” standard will not be difficult to meet,³ although only time will tell.  As well, the proposed Rules state that the Commissioner must make this determination.  These requirements are quite onerous and, depending on the facts, there is a real risk that an extension may not be granted by the Commissioner.  The Intellectual Property Institute of Canada (IPIC) has submitted comments as part of a public consultation process requesting that the requirements be relaxed.  However, based on the outcome of previous public consultations on different issues, it is unlikely that significant changes will be made to the proposed rules.

The amendments will likely come into effect sometime in 2019.  In preparation for the rule change, it might be advisable to generate a list of Canadian applications on your docket within the 30-42 month window from priority and advise clients that the 42 month deadline will not likely be available as of right in the near future.  If protection in Canada is sought, national phase entry should be commenced immediately.

Other changes

A number of other rule changes are proposed for alignment with the Patent Law Treaty.  Some of the more salient ones are summarized below:

Reinstatement of abandoned applications and lapsed patents

Current –Canada is now quite permissive with respect to reinstatement.  An abandoned application or lapsed patent can be reinstated within 12 months of the date of abandonment/lapse by simply paying a reinstatement fee, taking the action that led to abandonment and making a request for reinstatement.  No reasons for the missed deadline need to be provided.

Future – Under the proposed changes, a due care standard will apply if reinstatement is effected more than six months from the original deadline.  The applicant must state the reasons for the failure to take the action that led to abandonment, and the Commissioner must determine that “the failure occurred in spite of the due care required by the circumstances having been taken.”

Shortened deadlines for certain actions

Current – The deadline for requesting examination is now 5 years from the filing date (typically the international filing date).  A response to an Examiner’s Report is due 6 months from the date of mailing.  There is currently a 6 month period from the Notice of Allowance to pay the final fee.

Future – The term for requesting examination will be three years from the filing date.  Examiner’s Reports will have a shortened term for response of four months.  The final fee will be due four months from the Notice of Allowance.

Amendments after allowance

Current – After receiving a Notice of Allowance, prosecution on the merits is closed – essentially only minor changes can be made to a patent application that do not necessitate a further search of the prior art.  In order to re-open prosecution, it is necessary to intentionally abandon the application by failing to pay the final fee, followed by reinstating the application.  An application that is abandoned and reinstated in this way can be amended in the regular manner.

Future – These procedures will be simplified.  The Notice of Allowance can be withdrawn and prosecution re-opened simply upon payment of a fee within four months of the date of allowance.

Wendy Lamson 10 August 2018

¹ With payment of a basic national fee of $400.00 (large entity) and payment of maintenance fees due at the time of national phase entry.

² See Proposed Patent Rules, Rule 150 available at https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04281.html#toc-150.

³ See Intellectual Property Institute of Canada (IPIC) Submission on Proposed Amendments to Patent Rules, September 12, 2017, available at << https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/vwapj/patentrulesconsultation-IPIC.pdf/$file/patentrulesconsultation-IPIC.pdf at 55.