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Requirements for PCT national stage entry into Canada

ATMAC Nov 22 2014

The requirements for entry into the national phase in Canada are as follows:

Time limits

Under both PCT Article 22(1) and Article 39(1)(a) the time limits for national phase entry into Canada are:

  • 30 months from the priority date (this is considered on-time entry, no reinstatement fee is required)
  • 42 months from the priority date (this is considered late entry, the reinstatement of rights fee is required)
    • For applications with a PCT filing date on or after Oct. 30, 2019, late entry must be accompanied by a statement that the failure (to enter on time) was unintentional.
    • For applications with a PCT filing date before Oct. 30, 2019, late entry can be done for any reason and no statement is required.

Language and translation requirements

For national entry into Canada, the international application description, claims, abstract, and any text matter of drawings must be originally written in, or translated to English or French. If any of those parts were amended during the international phase then only the as-amended versions need to be translated.

ATMAC patent services include in-house Chinese-to-English translation services for translating international applications written in either traditional or simplified Chinese characters into English for national entry into Canada. ATMAC does not handle applications written in French.

Small entity fee discounts for PCT national entry into Canada

Many of the government fees required at the Canadian Intellectual Property Office (CIPO) are discounted by 50% if the applicant is a small entity. Once small entity size is properly established at the time of national entry into Canada, the small entity discounts last throughout the life of the application and any patent(s) issuing therefrom regardless of changes in the applicant’s entity size that may occur afterwards.

Date of determination

An applicant may pay fees at the small entity level if, on the date when the requirements for national entry into Canada are complied with, the applicant who complies with those requirements is a small entity in respect of the invention to which the application or patent relates.

Small entity requirements

“Small entity”, in respect of an invention, means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that:

  • is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or
  • 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.

75% reduction of examination fee if search report by CIPO

The examination fee applicable to the applicant as specified above is reduced by 75% where the international search and report are done by the Canadian Intellectual Property Office (CIPO).

Special requirements of the Canadian Intellectual Property Office (CIPO) under PCT Rule 51bis

  • A representative for service must be appointed if the application does not reside in or carry out business in Canada. When you engage ATMAC Patent Services Ltd., ATMAC Patent Services Ltd. will also be appointed as your representative in Canada.
  • Either a declaration that the applicant is the legal representative of the inventor or as to the applicant’s entitlement to apply for and be granted a patent are required when the applicant is not the inventor.
  • In the event that the applicant entering the national phase in Canada is different than the applicant originally identified on the PCT application, evidence is required to show that the new applicant is the legal representative of the originally identified applicant.
  • If the applicant is not the inventor then a patent agent must be appointed.
  • If the appointed patent agent does not reside in Canada, an appointment of an associate agent who resides in Canada is required. ATMAC Patent Services Ltd. will act as the associate patent agent in Canada in the event a foreign patent agent is in charge of the application.

Who can act as a patent agent in Canada?

The appointed agent must be a firm or person registered to represent applicants before CIPO.

If you are a foreign patent agent of good standing before your country of residence then you can be registered at no cost as a patent agent in Canada and can be appointed as the patent agent for the application. Foreign patent firms which have at least one member who is a registered patent agent in Canada can also be registered at no cost to represent applicants before CIPO. ATMAC can help you and your firm obtain registration before CIPO if desired. If you or your firm are a patent agent registered in Canada then you can be appointed as the patent agent; otherwise, when you engage ATMAC Patent Services Ltd. to file the application, ATMAC Patent Services Ltd. will be appointed as the applicant’s patent agent.

Does CIPO accept requests for restoration of the right of priority under PCT Rule 49ter.2?

Yes, but only for applications with a PCT filing date on or after Oct. 30, 2019.

Maintenance fees in Canada

Maintenance fees are due in Canada on or before each anniversary of the international application filing date starting with the second anniversary. The amount of the annual maintenance fees slowly increases in the later anniversary years.

Request for examination, fee, and time limit

A patent will only be granted in Canada after a request for its examination is made and the fee for examination is paid. If you would like the application to be examined as soon as possible, ATMAC Patent Services Ltd. will submit the request for examination and the required fee will be due at the time of national entry. On the other hand, if you wish to wait for examination in Canada, you can choose to delay the request for examination and its associated fee.

For applications with a PCT filing date on or after Oct. 30, 2019, the request for examination can be delayed for up to four (4) years from the international filing date.

For applications with a PCT filing date before Oct. 30, 2019, the request for examination can be delayed for up to five (5) years from the international filing date.

Final fee due to issue patent

An issue fee (referred to in Canada as a “final fee”) and a fee for each page of the specification and drawings in excess of 100 pages must be paid within six months after the date of the notice of allowance of the application. The final fee and excess page amounts due are shown in the below fee table.

Extension of time for Office deadlines and reinstatement with 12 months from abandonment

In the case of failure to comply with the time limit applicable under PCT Article 22 or 39(1) for entering the national phase (30 months from priority date), the applicant may comply by paying the additional fee for Reinstatement of rights fee within 12 months of the time limit. (see fee table) Note – A statement that the failure was unintentional is required for applications having a PCT filing date on or after Oct. 30, 2019.

In the case of failure to comply with a time limit specified by CIPO, other than the time limit applicable under PCT Article 22 or 39(1) for entering the national phase (see late entry described in above paragraph), reinstatement may be requested before the expiry of 12 months after the time limit.

Reinstatement must be requested whenever the applicant fails to comply with a time limit required by the Office. The request for reinstatement must be made within 12 months of the expiry of the specified time limit (i.e., within 12 months from the missed due date) and the applicant must complete the omitted act and pay the Reinstatement Fee (see fee table) for reinstatement to be successful. For applications having a PCT filing date on or after Oct. 30, 2019, a showing of due care is required to reinstatement if a maintenance fee deadline or request for examination deadline is missed by more than six (6 months).

Subject to certain exceptions, including time limits for payment of application and patent maintenance fees and for requests for examination, extension of a time limit may be requested provided the time limit is prescribed by the Patent Rules or fixed by the Commissioner. An extension of time must be requested before the expiry of the time limit and include the payment of the extension of time fee. The request must satisfy the Commissioner that the circumstances justify the extension of time.

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