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Patent Rules (SOR/2019-251)

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Regulations are current to 2020-06-28 and last amended on 2019-10-30. 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.

  • Marginal note:Translation replaces original

    (4) If a translation of the international application has been submitted under paragraph 154(1)(b), the translation replaces the text of the PCT national phase application.

  • Marginal note:Restriction

    (5) The specification and the drawings contained in a PCT national phase application as a result of the replacement referred to in subsection (4) must not contain any matter not reasonably to be inferred from both

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

    • (b) the specification or the drawings contained in the application immediately before the replacement.

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

 Subsection 27(7), sections 27.01, 28 and 28.01, subsection 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 section 78 of Act

  •  (1) Section 78 of the Act does not apply in respect of a period of time fixed under the Act for furnishing to the Commissioner, in relation to an international application that has become a PCT national phase application, a document or information in accordance with the Patent Cooperation Treaty before that international application became a PCT national phase application.

  • Marginal note:Extension in accordance with Regulations under the PCT

    (2) If the period referred to in subsection (1) ended in respect of the application referred to in that subsection on a day referred to in an item of Rule 80.5 of the Regulations under the PCT, that period is extended to the next day that is not such a day.

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.

Marginal note:Application considered not to be referred to in paragraph 28.2(1)(c) or (d) of Act

 An international application is considered not to be an application for a patent referred to in paragraph 28.2(1)(c) of the Act or not to be a co-pending application referred to in paragraph 28.2(1)(d) of the Act, unless it has become a PCT national phase application.

Marginal note:Patent not invalid

 A patent that was granted on the basis of an international application must not be declared invalid by reason only that a fee referred to in section 154 was not paid.

PART 3Transitional Provisions

DIVISION 1Interpretation

Marginal note:Definitions

  •  (1) The following definitions apply in this Part.

    application preceding the coming-into-force date

    application preceding the coming-into-force date means an application for a patent for which the filing date is before the coming-into-force date. (demande antérieure à la date d’entrée en vigueur)

    category 1 application

    category 1 application means an application for a patent for which the filing date is before October 1, 1989. (demande de catégorie 1)

    category 2 application

    category 2 application means an application for a patent for which the filing date is on or after October 1, 1989 but before October 1, 1996. (demande de catégorie 2)

    category 3 application

    category 3 application means an application for a patent for which the filing date is on or after October 1, 1996 but before the coming-into-force date. (demande de catégorie 3)

    coming-into-force date

    coming-into-force date means the day on which section 121 of the Economic Action Plan 2014 Act, No. 2 comes into force. (date d’entrée en vigueur)

    former Rules

    former Rules means the Patent Rules as they read immediately before the coming-into-force date. (anciennes règles)

  • Marginal note:Interpretation

    (2) If the filing date of an application for a patent, other than a PCT national phase application, as determined in accordance with section 78.2 of the Act, precedes the coming-into-force date, the filing date of that application is, for the purposes of these Rules, the filing date determined in accordance with that section.

Marginal note:Reissued patents

 For greater certainty, for the purposes of this Part, a reissued patent is considered to be issued on the basis of the original application.

Marginal note:Application of subsection 3(1)

 For greater certainty, subsection 3(1) applies in respect of any time limit fixed by the former Rules that continues to apply under these Rules.

DIVISION 2Rules in Respect of Category 1 Applications

Marginal note:Non-application of certain provisions of these Rules

  •  (1) Sections 14, 47 to 51, 55, 56, 58 to 63, 65, 74 and 93 to 96, subsections 97(2) and (3) and sections 98 and 104 do not apply in respect of a category 1 application.

  • Marginal note:Non-application of subsection 86(14)

    (2) Subsection 86(14) does not apply in respect of a category 1 application at any time at which it is forfeited under subsection 73(1) of the Act, as it read immediately before October 1, 1989.

  • Marginal note:Application of section 100

    (3) Section 100 applies in respect of a category 1 application only if a notice of allowance is sent on or after the coming-into-force date.

 
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