Patent Rules (SOR/96-423)

Regulations are current to 2016-08-15 and last amended on 2014-05-01. Previous Versions

International Phase

[SOR/2003-208, s. 4]

 Where an international application is filed with the Commissioner and the applicant or, where there is more than one applicant, at least one of the applicants is a national or resident of Canada, the Commissioner shall act as a receiving Office as defined in Article 2(xv) of the Patent Cooperation Treaty.

 An international application, in order to be filed with the Commissioner, shall be written in either English or French.

 The Commissioner shall act as an International Searching Authority and an International Preliminary Examining Authority in accordance with the Patent Cooperation Treaty and the Regulations under the PCT.

  • SOR/2003-208, s. 5.
  •  (1) Correspondence addressed to the Commissioner in respect of an international application may be physically delivered to the Patent Office during ordinary business hours of the Office and shall be considered to be received by the Commissioner on the day of the delivery.

  • (2) For the purposes of subsection (1), where correspondence addressed to the Commissioner in respect of an international application is physically delivered to the Patent Office outside of its ordinary business hours, it shall be considered to have been delivered to the Office during ordinary business hours on the day when the Office is next open for business.

  • (3) Correspondence addressed to the Commissioner in respect of an international application may be physically delivered to an establishment that is designated by the Commissioner in the Canadian Patent Office Record as an establishment to which correspondence addressed to the Commissioner may be delivered, during ordinary business hours of that establishment, and

    • (a) where the delivery is made to the establishment on a day that the Patent Office is open for business, the correspondence shall be considered to be received by the Commissioner on that day; and

    • (b) where the delivery is made to the establishment on a day that the Patent Office is closed for business, the correspondence shall be considered to be received by the Commissioner on the day when the Office is next open for business.

  • (4) For the purposes of subsection (3), where correspondence addressed to the Commissioner in respect of an international application is physically delivered to an establishment outside of ordinary business hours of the establishment, it shall be considered to have been delivered to that establishment during ordinary business hours on the day when the establishment is next open for business.

  • (5) Correspondence addressed to the Commissioner in respect of an international application may be sent at any time by electronic or other means of transmission specified by the Commissioner in the Canadian Patent Office Record.

  • (6) For the purposes of subsection (5), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is open for business, it shall be considered to be received by the Commissioner on that day.

  • (7) For the purposes of subsection (5), where, according to the local time of the place where the Patent Office is located, the correspondence is delivered on a day when the Office is closed for business, it shall be considered to be received by the Commissioner on the day when the Office is next open for business.

  • SOR/99-291, s. 4.
  •  (1) Fees payable pursuant to Rules 15 and 57 of the Regulations under the PCT shall be paid in Canadian currency.

  • (2) Money received under Rules 15 and 57 of the Regulations under the PCT shall be deposited in the account entitled the Patent Cooperation Treaty Fund within the account entitled the Canadian Intellectual Property Office Revolving Fund and shall be paid out of that account for purposes in accordance with those Rules.

  • SOR/2003-208, s. 6.

National Phase

[SOR/2003-208, s. 7]

 Where an international application in which Canada is designated is filed, the Commissioner shall act as the designated Office as defined in Article 2(xiii) of the Patent Cooperation Treaty.

 Where an international application in which Canada is designated is filed and the applicant has elected Canada as a country in respect of which the international preliminary examination report referred to in Article 35 of the Patent Cooperation Treaty shall be established, the Commissioner shall act as an elected Office as defined in Article 2(xiv) of the Patent Cooperation Treaty.

  •  (1) An applicant who designates Canada, or who designates and elects Canada, in an international application shall, within the time prescribed by subsection (3),

    • (a) where the International Bureau of the World Intellectual Property Organization has not published the international application, provide the Commissioner with a copy of the international application;

    • (b) where the international application is not in English or French, provide the Commissioner with a translation of the international application into either English or French; and

    • (c) pay the appropriate basic national fee prescribed by subsection 3(5).

  • (2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date shall, within the time prescribed by subsection (3), pay any fee set out in item 30 of Schedule II that would have been payable in accordance with section 99 or 154 had the international application been filed in Canada as a Canadian application on the international filing date.

  • (3) An applicant shall comply with the requirements of subsection (1) and, where applicable, subsection (2) not later than on the expiry of

    • (a) the 30-month period after the priority date; or

    • (b) if the applicant pays the additional fee for late payment set out in item 11 of Schedule II before the expiry of the 42-month period after the priority date, the 42-month period after the priority date.

  • (4) If the applicant provides a translation of the international application into either English or French in accordance with paragraph (1)(b) and the Commissioner has reasonable grounds to believe that the translation is not accurate, the Commissioner shall requisition the applicant to provide either

    • (a) a statement by the translator to the effect that, to the best of the translator’s knowledge, the translation is complete and faithful, or

    • (b) a new translation together with a statement by the translator to the effect that, to the best of the translator’s knowledge, the new translation is complete and faithful.

  • (5) Where the applicant who complies with the requirements of subsection (1) is not the applicant originally identified in the international application, the Commissioner shall requisition evidence that the applicant who complies with the requirements of that subsection is the legal representative of the originally identified applicant where the documents already in the Patent Office do not provide such evidence.

  • (5.1) Where the applicant who complies with the requirements of subsection (1) does not comply with a requisition made by the Commissioner pursuant to subsection (5) within three months after the requisition is made, that applicant shall be deemed never to have complied with the requirements of subsection (1).

  • (5.2) The Commissioner is not authorized under subsection 26(1) to extend the time prescribed by subsection (5.1) beyond the later of the expiry of the 6-month period after the requisition is made and the expiry of the 42-month period after the priority date.

  • (6) For the purposes of subsection (2), international filing date means the date accorded to an international application by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty.

  • (7) Subsection 26(1) does not apply in respect of the times specified in subsection (3).

  • (8) Article 48(2) of the Patent Cooperation Treaty does not apply in respect of the times specified in subsection (3) of this section or in respect of any time limit applicable to a PCT national phase application.

  • (9) An international application may not become a PCT national phase application where:

    • (a) before April 1, 2002, the 32-month period after the priority date has expired;

    • (b) the applicant had not complied with the requirements of subsection (1) and, where applicable, subsection (2) before the expiry of that period; and

    • (c) an election of Canada was not made before the expiry of the nineteenth month after the priority date.

  • (10) Once an international application becomes a PCT national phase application, it may not become a further PCT national phase application unless the earlier PCT national phase application has been withdrawn.

  • SOR/99-291, s. 5;
  • SOR/2002-120, s. 1;
  • SOR/2007-90, s. 10.

Application of Canadian Legislation

 When an international application becomes a PCT national phase application, the application shall thereafter be deemed to be an application filed in Canada and the Act and these Rules shall thereafter apply in respect of that application.

 For greater certainty, for the purpose of section 8 of the Act, an international application is deemed to be an instrument of record in the Patent Office only when it becomes a PCT national phase application.

  • SOR/99-291, s. 6.
  •  (1) For greater certainty, in respect of an international application that has become a PCT national phase application, for the purposes of the Act and these Rules,

    • (a) information or notices included in the international application as filed shall be considered to have been received by the Commissioner on the filing date accorded to the application by a receiving Office pursuant to Article 11 of the Patent Cooperation Treaty; and

    • (b) information or notices furnished in accordance with the requirements of the Patent Cooperation Treaty before the application has become a PCT national phase application shall be considered to have been received by the Commissioner on the date that they were so furnished.

  • (2) Paragraph (1)(b) does not apply in respect of sequence listings that do not form part of the international application.

  • SOR/99-291, s. 6;
  • SOR/2007-90, s. 11.
 
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