PCT Applications  –  The Canadian National Phase

1.  Deadlines for National Entry

The regular deadline for Canadian national entry is 30 months from the priority date or, if priority has not been claimed, from the international filing date.  However, Canada is unique in permitting national entry up to 12 months late, that is up to 42 months from the priority date or, if priority has not been claimed, from the international filing date.  Nothing need be done in advance to preserve the ability to enter the national phase between the 30th and 42nd months; the Government late-entry fee is paid when national entry is effected.

2.  Effecting National Entry

We can execute all required documents on the applicant’s behalf; the applicant need not sign a power of attorney or any other document in order to effect Canadian national entry.

If the PCT application has been published, we require sufficient particulars of the PCT application to access WIPO’s online record for the case.

If the PCT application has not yet been published, we require a copy of the as-filed PCT application, as such a copy must be filed to effect Canadian national entry.

If the PCT application is not in English or French, we require a translation of the application (preferably into English as that is the working language of our firm), as such a translation must be filed to effect Canadian national entry.

If the PCT application has been amended, please provide copies of the amendments and any related submissions filed during the international phase.   If the originals of any such materials were not in English, please provide English translations.

3.  Maintenance Fees

Maintenance fees are payable on Canadian patent applications, with the first maintenance fee due by the second anniversary of the filing date (i.e., deemed to be the international filing date).  If national entry is effected two years or longer after the international filing date (e.g., if the PCT application does not claim priority and/or national entry is effected late), then the accrued maintenance fees (i.e., the maintenance fees that would have been payable if the application had actually been filed in Canada on the international filing date), are due on national entry.

4.  Applicant’s Entitlement to Apply for a Canadian Patent

The Canadian Patent Office will accept and record the inventor and applicant information set out in the originally filed PCT application without requiring supporting evidence of a transfer if the applicant is different from the inventor(s).  However, if the applicant on Canadian national entry is different from the original PCT applicant, the Patent Office will request suitable evidence of the applicant’s entitlement (e.g., an assignment document), unless such evidence is already of record (i.e., recorded during the international phase or submitted with the national entry documents).

5.  Reduced Government Fees for Small Entities

The Canadian Patent Office charges reduced fees to applicants who qualify as “small entities”.  For example, the regular national-entry fee is currently $400, which is reduced to $200 for small entities.

The test for small-entity status in Canada is different from the test used in the United States.  The Canadian Patent Rules define a “small entity” as an entity that employs 50 or fewer employees or that is a university, but does not include an entity that: (a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or (b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.

Patent rights may be entirely lost or prejudiced through improper assertion of small-entity status.  Accordingly, because the cost savings are not great, we recommend that small-entity status not be claimed if there is any doubt as to its availability.

If we are provided with suitable assurances to the effect that the applicant qualifies to pay official fees on the small-entity basis, we will include a small-entity declaration in the petition for grant of a patent that we sign on behalf of the applicant.

6. Novelty Requirements

Canada provides a one-year grace period for disclosure of an invention emanating directly or indirectly from the inventor.  That is, to be valid,  the Canadian filing date must be within one year of any publication of the invention occurring anywhere in the world, or any public use or sale of the invention. Note that in the case of Canadian national entries of PCT applications,  the grace period runs to the international filing date, not to the priority date.

7. Examination

Canadian patent applications are not automatically examined.  The deadline for filing a request for examination and paying the examination fee is five years from the Canadian filing date.

Examination may be requested at the time of filing the application.  However, many applicants prefer to defer Canadian examination at least until they have received an indication of the patentability of a corresponding application in another jurisdiction.

With the present examination backlog levels in the Canadian Patent Office, in the ordinary course, an application will not be examined before roughly two years have elapsed following the filing of a request for examination.  It is possible to expedite examination by obtaining a Special Order for advanced examination or by utilizing one of the Patent Prosecution Highway Programs that Canada has established with a handful of other countries.

8.  Publication

Usually, the PCT application has been published prior to Canadian national entry, in which case, the Canadian national phase application is deemed to have been published on the date of international publication.  If the PCT application has not been published prior to Canadian national entry, the Canadian national phase application will be published and posted to the Canadian Patent Office website, eighteen months after its earliest priority date; or, if priority has not been claimed, eighteen months after the international filing date.

9.  Abandonment and Reinstatement

Once the requirements for obtaining a filing date have been satisfied, if a subsequent deadline in the application is missed, the application will be deemed abandoned.  However, when an application is deemed abandoned, the applicant has one year from the missed deadline within which to reinstate the application by: remedying the defect that triggered the abandonment, requesting reinstatement and paying the reinstatement fee.  Reinstatement is routine and essentially provides for a retroactive extension, with, other than delay, the only adverse consequence being that once an application has been abandoned  and reinstated the applicant is thereafter not entitled to obtain a Special Order for advanced examination.

Nothing here written constitutes legal advice. The accuracy of what is written is not guaranteed.  Please consult us about any specific matter on which you require legal advice.