PCT National Phase Entries –Transitioning to a Shorter Exam Request Deadline and Stricter Late National Phase Entry Requirements

The Canadian Patent Act and Rules underwent sweeping changes on October 30, 2019.  However, for certain PCT national phase entries in Canada, some of the most significant effects of those changes will only be felt in the next coming months.  This includes the new four-year deadline for requesting examination from the international filing date (reduced from five under the old Rules) and the more stringent requirements for late national phase entry beyond 30 months from the priority date.  Each is discussed in turn below.

Examination request deadline – transition to 4 years

The new deadline for requesting examination has been shortened from five years measured from the Canadian filing date to four years.  For a national phase entry under the PCT, the new examination request deadline applies to those applications having an international filing date on or after October 30, 2019.  This means that the majority of PCT applications (but not all) entering national phase through the PCT in Canada at the date of this article are still subject to the 5-year deadline for requesting examination.

However, this will start to change in early 2021 as Canadian firms increasingly file PCT national phase entries having an international filing date on or after October 30, 2019.  This is because, in practice, many Canadian PCT national phase entries (but not all) subject to the new Rules for requesting examination will have a priority date that is either shortly before or after October 30, 2018.[1]  Applications falling into this category then will have a national phase entry deadline that is shortly before or falling after April 30, 2021 (i.e., 30 months from a priority date).

Of course, Applicants should be aware that there are many exceptions.  For instance, PCT national phase entries that are filed in the fall of 2020 or even earlier could be subject to the shortened examination request deadline under the new Rules if national phase entry is effected before the 30-month deadline.  Many more exceptions are possible and therefore it is best to consult a patent agent if there is any uncertainty.

Late national phase entry – transition to more stringent “unintended” threshold

A similar scenario applies for late national phase entries in Canada.  Under the new Rules, for PCT national phase applications having an international filing date after October 30, 2019, late national phase entry up to 42 months from the priority date will no longer be available “as of right” (i.e., simply with payment of a late fee of $200.00 together with a request for “reinstatement”) as per the old Rules.  For such applications, late national phase entry is only possible if it can be shown that failure to adhere to the deadline was “unintentional”.  That is, an applicant must submit a request that the rights of the applicant be reinstated and a statement that the failure to meet the 30-month deadline was unintentional, together with a late fee.

Similar to the new request for examination deadline, the number of national phase entries based on a PCT application having an international filing date on or after October 30, 2019 and thus subject to the new late national phase entry requirements will start to increase in early 2021.  This new Rule change is important to note as the unintentional threshold could be difficult to establish.  Applicants should be aware that they cannot not automatically rely on the previously quite permissive late national phase entry requirements and should be prepared to treat the 30-month national phase entry deadline as a hard deadline (i.e., not subject to extension).

The moral of the story in a nutshell

Applicants entering national phase under the PCT should keep an eye open for applications having an international filing date after on or October 30, 2019.  For these applications, the examination request deadline is four years instead of five years measured from the international filing date.  As well, late national phase entry (after the 30-month deadline is missed) for such applications is only permitted if an applicant can show that missing the national phase entry deadline was unintentional and so the 30-month deadline should be treated as a hard deadline.  National phase entries subject to these two provisions will be more common starting early 2021.  It is important to check the international filing date to determine whether the old or the new Rules apply and consult a patent agent.

Disclaimer

Kindly note that due to the complexities of the new Rules, legal advice should always be sought for a particular case at hand with respect to the specific deadlines involved and the specific requirements for restoration of rights.

[1] This assumes that the full one-year convention priority deadline is utilized for filing the PCT application, as is often (but not always) the case.  However, for PCT applications that are filed before the one-year anniversary deadline from a priority application, the new Rules will apply earlier.