Patent Rules (SOR/2019-251)

National Phase

Marginal note:Designated Office

152 If an international application in which Canada is designated under the Patent Cooperation Treaty is filed, the Commissioner must act as the designated Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.

Marginal note:Elected Office

153 If an international application in which Canada is designated under the Patent Cooperation Treaty is filed and the applicant has elected Canada under Article 31 of the treaty, the Commissioner must act as an elected Office in accordance with the Patent Cooperation Treaty, the Regulations under the PCT and the Administrative Instructions under the PCT.

Marginal note:Requirements

• 154 (1) An applicant who designates Canada in an international application must, not later than 30 months after the priority date,

  • (a) if the International Bureau of the World Intellectual Property Organization has not published the international application, submit to the Commissioner a copy of the international application;

  • (b) if the description contained in the international application, other than any sequence listings, is entirely in a language other than English or French, submit to the Commissioner an English or French translation of the description other than any sequence listings;

  • (b.1) if the claims contained in the international application are entirely in a language other than English or French, submit to the Commissioner an English or French translation of the claims; and

  • (c) pay the basic national fee, which is

    • (i) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and

    • (ii) in any other case, the standard fee set out in that item.

• Marginal note:Fee

  (2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date must, not later than 30 months after the priority date, pay

  • (a) the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3); and

  • (b) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent.

• Marginal note:Reinstatement of rights

  (3) An applicant who fails to comply with the requirements of subsection (1) and, if applicable, subsection (2) not later than 30 months after the priority date, is considered to have complied with those requirements within that time if

  • (a) not later than 12 months after that time, the applicant

    • (i) submits to the Commissioner a request that the rights of the applicant be reinstated with respect to that international application and a statement that the failure was unintentional,

    • (ii) complies with the requirements of paragraphs (1)(a) to (b.1),

    • (iii) pays the basic national fee, which is

      • (A) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and

      • (B) in any other case, the standard fee set out in that item, and

    • (iv) pays the fee for reinstatement of rights set out in item 22 of Schedule 2; and

  • (b) if the applicant complies with the requirements of paragraph (a) after the second anniversary of the international filing date, the applicant,

    • (i) on or before the third anniversary of the international filing date but not later than 12 months after the time referred to in subsection (1), pays

      • (A) if the small entity status condition set out in subsection 44(2) is met and if, on or before that third anniversary, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, and

      • (B) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent, or

    • (ii) after the third anniversary of the international filing date but not later than 12 months after the time referred to in subsection (1), pays

      • (A) if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second and third anniversary of the filing date of an application for a patent, and

      • (B) in any other case, the standard fee set out in that item for the second and third anniversary of the filing date of an application for a patent.

• Marginal note:Extension in case of attempted payment

  (4) If the applicant of an international application fails to comply with the requirements of subsection (1) and, if applicable, subsection (2), not later than 30 months after the priority date and if, before the end of a period of 12 months after that time, the Commissioner receives a communication clearly indicating the applicant’s intention to pay some or all of the fees required by subsection (3), but all of the fees required by subsection (3) are not paid before the end of that 12-month period, those fees are considered to have been paid on the day on which that communication is received if the unpaid fees, together with the additional fee for late payment set out in item 23 of Schedule 2, are paid after the end of that 12-month period but not later than two months after the day on which the communication is received.

• Marginal note:Fee considered paid

  (5) If the Commissioner has, under subsection 3(3), extended the time period for the payment of a fee prescribed by paragraph (1)(c), subsection (2) or subparagraph (3)(a)(iii) or (b)(i) or (ii) and the fee is paid before the end of the extended period, for the purposes of subsection (1), (2) or (3), as applicable, that fee is considered to have been paid on the day on which the small entity fee was paid.

• Marginal note:Fee considered paid — insufficient payment

  (5.1) If the Commissioner has, under subsection 3(4), extended the time period for the payment of a fee prescribed by paragraph (1)(c), subsection (2) or subparagraph (3)(a)(iii) or (b)(i) or (ii) and the fee is paid before the end of the extended period, for the purposes of subsection (1), (2) or (3), as applicable, that fee is considered to have been paid on the day on which the insufficient payment was made.

• Marginal note:Correction of error – naming of applicants

  (6) The Commissioner must, on request, correct an error in the records of the Patent Office with respect to the naming of applicants in respect of a PCT national phase application if the request contains a statement to the effect that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, and is made by the person who paid the basic national fee prescribed by paragraph (1)(c) or subparagraph (3)(a)(iii) not later than the earlier of

  • (a) the later of

    • (i) the day on which a period of three months after the national phase entry date of that application expires, and

    • (ii) if the Commissioner sends a notice under subsection (7) before the end of a period of three months after the national phase entry date of that application, the day on which a period of three months after the date of the notice expires, and

  • (b) if the Commissioner records a transfer of the application for a patent under section 49 of the Act, on or before the day on which the Commissioner received the request to record that transfer.

• Marginal note:Notice

  (7) If the Commissioner has reasonable grounds to believe that the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), is neither the applicant of the international application nor their legal representative, the Commissioner must by notice require that person to establish that they are either the applicant of the international application or their legal representative.

• Marginal note:Person considered never to have complied

  (8) If the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), fails to comply with the notice not later than three months after the date of the notice, that person is considered never to have complied with those requirements.

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

  (9) Subsection 3(1) does not apply in respect of the times referred to in subsection (1), (2), (3), (4) or (6).

• Marginal note:Exception to subsection 3(1)

  (10) Subsection 3(1) does not authorize the Commissioner to extend the time referred to in subsection (8) for complying with the notice beyond the later of the end of a period of six months after the date of the notice and the end of a period of 30 months after the priority date.

• Marginal note:Non-application of Article 48(2) of Patent Cooperation Treaty

  (11) Article 48(2) of the Patent Cooperation Treaty does not apply in respect of the times referred to in subsection (1), (2), (3) or (4) of this section or in respect of any time limit applicable to a PCT national phase application.

• Marginal note:Non-application of certain Rules under the PCT

  (12) Rules 49ter.1(f) and 49ter.2 of the Regulations under the PCT do not apply to a PCT national phase application.

• Marginal note:New PCT national phase application

  (13) Once an international application becomes a PCT national phase application, it may not become a new PCT national phase application unless the earlier PCT national phase application is withdrawn.

Marginal note:Application of Canadian legislation

• 155 (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

• 155.1 (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.