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Patent Rules (SOR/2019-251)

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Regulations are current to 2020-09-09 and last amended on 2019-10-30. Previous Versions

PART 2Patent Cooperation Treaty (continued)

International Phase (continued)

Marginal note:Additional fee

 The amount of the additional fee for an international preliminary examination under Article 34(3)(a) of the Patent Cooperation Treaty is the fee set out in item 20 of Schedule 2.

National Phase

Marginal note:Designated Office

 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.

Marginal note:Elected Office

 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.

Marginal note:Requirements

  •  (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 international application, other than any text matter contained in a sequence listing, is partly or entirely in a language other than English or French, submit to the Commissioner a translation in English or French of any part of the international application, other than any text matter contained in a sequence listing, that is in a language other than English or French; 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) and (b),

      • (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:Correction of error in name of applicant

    (6) An error in the records of the patent office in the name of the applicant, who complied with the requirements of subsection (1) and, if applicable, subsection (2), that arises from inadvertence, accident or mistake, without any fraudulent or deceptive intention, must be corrected by the Commissioner on the request of the person who paid the basic national fee prescribed by paragraph (1)(c) or subparagraph (3)(a)(iii), if the request contains a statement that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention and the request is made 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.

 
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