National phase entry of PCT applications represent a large percentage of total patent application filings in Canada, and accounted for about 79% of total filings with the Canadian Intellectual Property Office (CIPO) in 2018. With the amendments to Canada's Patent Act and the new Patent Rules coming into force on October 30, 2019, this article provides a brief overview of how the changes will affect the timing requirements for PCT applications entering the national phase in Canada.
Changes to National phase entry practice
The current time limit for entering national phase of a PCT application in Canada is 30 months from the earliest priority date, which is extendible up to 42 months as of right with payment of a late fee to the government of $200 CAD.
Under the new Patent Rules, a national phase entry PCT application must be filed in Canada by a deadline of not later than 30 months from the earliest priority date. After the 30 month deadline, it is still possible for a PCT application to enter national phase in Canada up to 42 months from the earliest priority date, but the Applicant must submit 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 to enter national phase in Canada by the deadline of 30 months was unintentional. A fee for the reinstatement of rights of $200 CAD must also be paid at this time.
Transitional provisions
So, what does this mean for PCT applications having International Filing Dates before October 30, 2019?
The current time limits are available for PCT applications having an International Filing Date before October 30, 2019.
That is, Applicants can extend the time limit for entering national phase in Canada up to 42 months from the earliest priority date without having to submit a statement that the failure to enter national phase by the deadline of 30 months was unintentional.
Summary
If your PCT application has an International Filing Date before October 30, 2019, the option of late national phase entry in Canada up to 42 months is still available after the earliest priority date with payment of a fee for reinstatement of rights. However, if your PCT application has an International Filing Date on or after October 30, 2019, you must enter national phase in Canada not later than 30 months from the earliest priority date, otherwise before the 42-month deadline you will have to submit a request to the Commissioner that the rights with respect to the international application be reinstated and a statement that the failure to enter national phase in Canada by the deadline of 30 months was unintentional.
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