March 10, 2021
For many of our foreign clients, when deciding whether to file in Canada a national phase application of an earlier filed PCT application, Canada's late entry regime often provides an option of making a decision as late as 42 months from the earliest priority date, instead of 30 months for most of the other countries. This option will end very soon.
As is generally the case, a PCT (Patent Cooperation Treaty) application gives its applicant the option to delay the filing of national applications. The delay is computed from the earliest priority date. Under PCT and for most countries, the total length of delay is 30 months from the earliest priority date. Therefore, for example, if a PCT application was filed about one year (i.e., 12 months) from the filing date of the earliest priority application, the PCT application will have about 18 months from the filing date of the PCT application to enter national phase. If no priority is claimed, this period from the PCT application's filing date will be longer. It will be 30 months from the PCT application's filing date, so that the total delay from the earliest priority date, in this case, the PCT application’s own filing date, is still 30 months.
Before October 30, 2019, the total delay in Canada for a PCT application to enter national phase can be as long as 42 months. If a PCT application enters Canada between 30 months and 42 months from the earliest priority date, a late fee is payable, but the applicant may file the national phase application during this period "as of right". Canada changed its patent law which came into force on October 30, 2019 (CIF date). After the CIF date, this "as of right" option is no longer available. All PCT applications entering Canada are required to enter national phase by the 30-month deadline, with one exception discussed below.
After the CIF date, a PCT application may still enter national phase in Canada between 30 months and 42 months from the earliest priority date. However, different from the pre-CIF regime, an application cannot enter national phase in Canada "as of right" during this period under the new regime. Under the new regime, the late entry will be treated similar to abandonment and reinstatement. The applicant must make a request to reinstate the right, pay a reinstatement fee, and submit a statement that the failure to meet the 30-month deadline was "unintentional".
It is still too early to tell how this new regime may impact a late entry request. It is not clear how CIPO (Canadian Intellectual Property Office) will examine the statement of "unintentional" failure, what documentation will be required to support such a statement, to what degree the Commissioner will exercise its discretion in granting late entry request based on "unintentional" failure, or more importantly, during litigation, how a court will examine this issue when the validity of the patent is challenged even though CIPO has accepted the statement of "unintentional" failure. Because of these uncertainties, we recommend that all national phase applications in Canada under the new regime be filed within the 30-month deadline.
As a reminder, the first PCT applications that will be subject to the new regime are those filed on or after October 30, 2019. If a PCT application was filed at the anniversary of the earliest priority date, those PCT applications with a 30-month deadline of April 30, 2021 to enter national phase will be the first ones that will be subject to the new regime, unable to enjoy the 42-month late entry deadline in Canada, "as of right".
If you have any questions about patent applications in Canada, please contact us.
Dr. Sean X. Zhang is an IP Partner at Dale & Lessmann LLP, a full service business law firm in Canada. To speak with Dr. Zhang, please call 416-369-7808 or send an e-mail message to him at firstname.lastname@example.org.