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Patent Rules (SOR/2019-251)

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Regulations are current to 2022-11-16 and last amended on 2022-10-03. Previous Versions

PART 2Patent Cooperation Treaty (continued)

National Phase (continued)

Marginal note:Application of Canadian legislation

  •  (1) If an international application becomes a PCT national phase application, the application is considered, beginning on its national phase entry date, to be an application for a patent filed in Canada and, subject to sections 157 to 163, the Act and these Rules apply beginning on that date in respect of that application.

  • Marginal note:National phase entry date

    (2) Subject to section 210, the national phase entry date of an application for a patent is

    • (a) if the applicant has not complied with the applicable requirements of subsection 154(3), the day on which the applicant complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2) or, if the applicant complied with those requirements on different days, the latest of those days; and

    • (b) if the applicant has complied with the applicable requirements of subsection 154(3), the day on which the applicant complied with those requirements or, if the applicant complied with those requirements on different days, the latest of those days.

  • Marginal note:Small entity declaration

    (3) For the purpose of subsection (2), an applicant is not considered to have paid the fee referred to in subparagraph 154(1)(c)(i), paragraph 154(2)(a) or clause 154(3)(a)(iii)(A) or 154(3)(b)(i)(A) or (ii)(A) until the small entity declaration has been filed.

  • (4) [Repealed, SOR/2022-120, s. 33]

  • (5) [Repealed, SOR/2022-120, s. 33]

Marginal note:Translation — part of description or claims

  •  (1) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any part of the description — other than any sequence listings — and any part of the claims that are in a language other than English or French.

  • Marginal note:Translation — abstract, request or statement

    (2) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any of the following elements, or any part of the following elements, that are in a language other than English or French:

    • (a) any language-dependent free text contained in a sequence listing that does not also appear in English or French;

    • (b) any text matter in a drawing;

    • (c) the abstract;

    • (d) the request referred to in article 4 of the Patent Cooperation Treaty, except if the International Bureau of the World Intellectual Property Organization has published the international application on or before the national phase entry date; and

    • (e) any statement made under Article 19 of the Patent Cooperation Treaty.

Marginal note:Error in translation — notice

  •  (1) If the Commissioner, before a request for examination is made, or an examiner, in the course of examining an application for a patent, has reasonable grounds to believe that a translation submitted under paragraph 154(1)(b) or (b.1) or section 155.1 contains an error, the Commissioner or the examiner, as the case may be, must by notice inform the applicant of the error.

  • Marginal note:Error in translation — correction

    (2) An applicant may correct a translation submitted under paragraph 154(1)(b) or (b.1) or section 155.1 that contains an error by submitting the following to the Commissioner before the day on which a notice of allowance or a conditional notice of allowance is sent or, if that notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), before the day on which a notice of allowance or a conditional notice of allowance is sent again:

    • (a) the corrected translation;

    • (b) a request that the corrected translation replace the original translation; and

    • (c) a statement to the effect that

      • (i) at the time the original translation was submitted, it would have been obvious to a skilled translator fluent in both the original language and the language of translation that the original translation contained an error and that the corrected translation is an accurate translation,

      • (ii) the error in the original translation occurred despite due care having been taken in its preparation, and

      • (iii) the request is being made within a reasonable time after the applicant became aware of the error.

  • Marginal note:Date of replacement

    (3) Subject to subsection (4), a corrected translation submitted in accordance with subsection (2) replaces the original translation and is considered to have been submitted on the day on which the original translation was submitted.

  • Marginal note:Open to public inspection — date

    (4) For the purposes of subsection 55(2) of the Act, if a corrected translation of any part of the specification contained in an application for a patent is submitted under subsection (2) after the application became open to public inspection, in English or French, under section 10 of the Act, the specification is considered to have become open to public inspection, in English or French, on the day on which the applicant submits the corrected translation or, if more than one corrected translation of the specification is submitted, on the last day on which a corrected translation is submitted.

Marginal note:Restriction — translation of specification or drawings

 A translation or corrected translation, submitted under section 155.1 or subsection 155.2(2), respectively, of all or part of the text matter in a specification or a drawing must not contain any matter not reasonably to be inferred from the specification or the drawings contained in the application on its filing date.

Marginal note:Complete copy

  •  (1) An applicant who submits a translation under section 155.1 or a corrected translation under subsection 155.2(2) must, at the same time, submit the following to the Commissioner:

    • (a) in the case of a translation referred to in subsection 155.1(1) or a correction to that translation, a complete copy of the description — other than any sequence listings — or the claims, as the case may be, that contains the translated text matter and the text matter that already appeared in English or French;

    • (b) in the case of a translation referred to in paragraph 155.1(2)(a) or a correction to that translation, a complete copy of the sequence listing that contains the translated text matter and the text matter that already appeared in English or French;

    • (c) in the case of a translation referred to in paragraph 155.1(2)(b) or a correction to that translation, a complete copy of the drawing that contains the translated text matter and the text matter that already appeared in English or French; and

    • (d) in the case of a translation referred to in paragraph 155.1(2)(c), (d) or (e) or a correction to that translation, a complete copy of the abstract, request or statement, as the case may be, that contains the translated text matter and the text matter that already appeared in English or French.

  • Marginal note:Integrated translation

    (2) For the purposes of section 155.1 and subsection 155.2(2), if a complete copy is submitted in accordance with subsection (1), the applicant need not submit the translation or corrected translation as a separate document.

Marginal note:Translation replaces original — description

  •  (1) If a translation is submitted under paragraph 154(1)(b), the translation replaces the entirety of the description other than any sequences listings.

  • Marginal note:Translation replaces original — claims

    (2) If a translation is submitted under paragraph 154(1)(b.1), the translation replaces the entirety of the claims.

  • Marginal note:Translation replaces original — element of application

    (3) If a translation is submitted under section 155.1, the translation replaces the corresponding text matter in the PCT national phase application.

  • Marginal note:Failure to provide translation — certain elements

    (4) If the applicant fails to provide a translation of a part of the description or claims or of any text matter in a drawing, in accordance with subsection 155.1(1) or paragraph 155.1(2)(b), respectively, the corresponding untranslated text matter in the PCT national phase application must not be taken into account for the purpose of interpreting the scope of protection sought or obtained.

  • Marginal note:Failure to provide translation — statement

    (5) If the applicant fails to provide a translation of all or part of the statement referred to in paragraph 155.1(2)(e) in accordance with that paragraph, the statement may be disregarded by the Commissioner.

  • Marginal note:Failure to provide translation or complete copy

    (6) If the applicant fails to provide a translation in accordance with paragraph 155.1(2)(c) or (d) or a complete copy in accordance with paragraph 155.4(1)(a), (b) or (c), the Commissioner may by notice require the applicant to provide the translation or complete copy no later than three months after the date of the notice.

Marginal note:Amendments to specification and drawings

  •  (1) If all or part of the text matter of the specification or the drawings contained in an international application on its international filing date is in a language other than English or French, the specification and the drawings contained in the PCT national phase application must not be amended to add matter not reasonably to be inferred from both

    • (a) the specification or the drawings contained in the international application on its international filing date; and

    • (b) the specification or the drawings contained in the international application immediately after it became a PCT national phase application, excluding any text matter that is not in English or French other than text matter in a sequence listing that is not language-dependent free text.

  • Marginal note:Sequence listing

    (2) For the purposes of paragraph (1)(a), if the international application contains, on its international filing date, text matter in a sequence listing that is both in English or French and in a language other than English or French, the text matter that is in a language other than English or French is considered not to have been included in the application on that date.

  • Marginal note:Divisional application

    (3) The specification and the drawings contained in a divisional application resulting from the division of a PCT national phase application must not be amended to add matter that may not be or could not have been added — under subsection 38.2(2) of the Act, subsection (1) of this section or this subsection — to the specification and the drawings contained in the application for a patent from which the divisional application results.

  • Marginal note:Non-application of subsections (1) and (3)

    (4) Subsections (1) and (3) do not apply if it is admitted in the specification contained in the divisional application that the matter is prior art.

Marginal note:Clarification — divisional application

 For greater certainty, the specification and the drawings contained in a divisional application resulting from the division of a PCT national phase application must not contain matter that is not in the specification and the drawings contained in the original application on its filing date, or if the original application is itself a divisional application, on its presentation date, unless

  • (a) the matter may be or could have been added — under section 155.6 of these Rules and subsection 38.2(1) and paragraph 38.2(3.1)(b) of the Act, without taking into account subsection 155.6(4) of these Rules or subsection 38.2(4) of the Act — to the specification and the drawings contained in the original application; or

  • (b) it is admitted in the specification contained in the divisional application that the matter is prior art.

Marginal note:Clarification

  •  (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) documents or information included in the international application as filed are deemed to have been received by the Commissioner on the international filing date; and

    • (b) documents or information, other than the documents or information referred to in paragraph (a), furnished in accordance with the requirements of the Patent Cooperation Treaty before the application became a PCT national phase application are deemed to have been received by the Commissioner on the day on which they were so furnished.

  • Marginal note:Exception — sequence listings

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

Marginal note:Application considered open to public inspection

 If an international application is published in English or French by the International Bureau of the World Intellectual Property Organization under Article 21 of the Patent Cooperation Treaty on or before its national phase entry date, the application is considered to be open to public inspection under section 10 of the Act beginning on the date of that publication.

Marginal note:Non-application of subsection 27(2) of Act

 The requirements of subsection 27(2) of the Act regarding the petition and the application fee do not apply in respect of a PCT national phase application.

Marginal note:Non-application of certain provisions of Act

  •  (1) Subsection 27(7), sections 27.01, 28 and 28.01, subsections 38.2(3) and 78.1(2) and section 78.2 of the Act do not apply in respect of a PCT national phase application.

  • Marginal note:Non-application of paragraph 38.2(3.1)(a) of Act

    (2) Paragraph 38.2(3.1)(a) of the Act does not apply in respect of a divisional application resulting from the division of a PCT national phase application.

Marginal note:Non-application of section 78 of Act

 Section 78 of the Act does not apply in respect of a time period referred to in that section that ends before the national phase entry date of a PCT national phase application.

Marginal note:Filing date

 The filing date of a PCT national phase application is the international filing date.

Marginal note:Filing date deemed to be within 12 months

 For the purposes of paragraph 28.1(1)(b) of the Act and subparagraphs 28.2(1)(d)(iii) and 28.4(5)(a)(i) and (ii) of the Act, even if the conditions referred to in paragraph 28.4(6)(b) of the Act are not met, the filing date of the pending application or the co-pending application, as the case may be, shall be deemed to be within 12 months after the filing date of the previously regularly filed application if

  • (a) the filing date of the pending application or the co-pending application, as the case may be, is more than 12 months after the filing date of the previously regularly filed application, but within two months after the end of those 12 months;

  • (b) the pending application or the co-pending application, as the case may be, is a PCT national phase application or a divisional application resulting from the division of a PCT national phase application; and

  • (c) the right of priority, in respect of the previously regularly filed application, was restored under Rule 26bis.3 of the Regulations under the PCT and that restoration is, under Rule 49ter.1 of those Regulations, effective in Canada.

 
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