Patent Rules (SOR/2019-251)

Marginal note:Requirements

• 154 (1) An applicant who designates Canada in an international application must, not later than 30 months after the priority date,

  • (a) if the International Bureau of the World Intellectual Property Organization has not published the international application, submit to the Commissioner a copy of the international application;

  • (b) if the description contained in the international application, other than any sequence listings, is entirely in a language other than English or French, submit to the Commissioner an English or French translation of the description other than any sequence listings;

  • (b.1) if the claims contained in the international application are entirely in a language other than English or French, submit to the Commissioner an English or French translation of the claims; and

  • (c) pay the basic national fee, which is

    • (i) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and

    • (ii) in any other case, the standard fee set out in that item.

• Marginal note:Fee

  (2) An applicant who complies with the requirements of subsection (1) after the second anniversary of the international filing date must, not later than 30 months after the priority date, pay

  • (a) the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, if the small entity status condition set out in subsection 44(2) is met and if, not later than 30 months after the priority date, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3); and

  • (b) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent.

• Marginal note:Reinstatement of rights

  (3) An applicant who fails to comply with the requirements of subsection (1) and, if applicable, subsection (2) not later than 30 months after the priority date, is considered to have complied with those requirements within that time if

  • (a) not later than 12 months after that time, the applicant

    • (i) submits 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 was unintentional,

    • (ii) complies with the requirements of paragraphs (1)(a) to (b.1),

    • (iii) pays the basic national fee, which is

      • (A) the small entity fee set out in item 21 of Schedule 2, if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application in accordance with subsection 44(3), and

      • (B) in any other case, the standard fee set out in that item, and

    • (iv) pays the fee for reinstatement of rights set out in item 22 of Schedule 2; and

  • (b) if the applicant complies with the requirements of paragraph (a) after the second anniversary of the international filing date, the applicant,

    • (i) on or before the third anniversary of the international filing date but not later than 12 months after the time referred to in subsection (1), pays

      • (A) if the small entity status condition set out in subsection 44(2) is met and if, on or before that third anniversary, a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second anniversary of the filing date of an application for a patent, and

      • (B) in any other case, the standard fee set out in that item for the second anniversary of the filing date of an application for a patent, or

    • (ii) after the third anniversary of the international filing date but not later than 12 months after the time referred to in subsection (1), pays

      • (A) if the small entity status condition set out in subsection 44(2) is met and if, not later than 12 months after the time referred to in subsection (1), a small entity declaration is filed in respect of the application for a patent in accordance with subsection 44(3), the small entity fee set out in item 8 of Schedule 2 for the second and third anniversary of the filing date of an application for a patent, and

      • (B) in any other case, the standard fee set out in that item for the second and third anniversary of the filing date of an application for a patent.

• Marginal note:Extension in case of attempted payment

  (4) If the applicant of an international application fails to comply with the requirements of subsection (1) and, if applicable, subsection (2), not later than 30 months after the priority date and if, before the end of a period of 12 months after that time, the Commissioner receives a communication clearly indicating the applicant’s intention to pay some or all of the fees required by subsection (3), but all of the fees required by subsection (3) are not paid before the end of that 12-month period, those fees are considered to have been paid on the day on which that communication is received if the unpaid fees, together with the additional fee for late payment set out in item 23 of Schedule 2, are paid after the end of that 12-month period but not later than two months after the day on which the communication is received.

• Marginal note:Fee considered paid

  (5) If the Commissioner has, under subsection 3(3), extended the time period for the payment of a fee prescribed by paragraph (1)(c), subsection (2) or subparagraph (3)(a)(iii) or (b)(i) or (ii) and the fee is paid before the end of the extended period, for the purposes of subsection (1), (2) or (3), as applicable, that fee is considered to have been paid on the day on which the small entity fee was paid.

• Marginal note:Fee considered paid — insufficient payment

  (5.1) If the Commissioner has, under subsection 3(4), extended the time period for the payment of a fee prescribed by paragraph (1)(c), subsection (2) or subparagraph (3)(a)(iii) or (b)(i) or (ii) and the fee is paid before the end of the extended period, for the purposes of subsection (1), (2) or (3), as applicable, that fee is considered to have been paid on the day on which the insufficient payment was made.

• Marginal note:Correction of error – naming of applicants

  (6) The Commissioner must, on request, correct an error in the records of the Patent Office with respect to the naming of applicants in respect of a PCT national phase application if the request contains a statement to the effect that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention, and is made by the person who paid the basic national fee prescribed by paragraph (1)(c) or subparagraph (3)(a)(iii) not later than the earlier of

  • (a) the later of

    • (i) the day on which a period of three months after the national phase entry date of that application expires, and

    • (ii) if the Commissioner sends a notice under subsection (7) before the end of a period of three months after the national phase entry date of that application, the day on which a period of three months after the date of the notice expires, and

  • (b) if the Commissioner records a transfer of the application for a patent under section 49 of the Act, on or before the day on which the Commissioner received the request to record that transfer.

• Marginal note:Notice

  (7) If the Commissioner has reasonable grounds to believe that the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), is neither the applicant of the international application nor their legal representative, the Commissioner must by notice require that person to establish that they are either the applicant of the international application or their legal representative.

• Marginal note:Person considered never to have complied

  (8) If the person who complied with the requirements of subsection (1) and, if applicable, subsection (2), fails to comply with the notice not later than three months after the date of the notice, that person is considered never to have complied with those requirements.

• Marginal note:Non-application of subsection 3(1)

  (9) Subsection 3(1) does not apply in respect of the times referred to in subsection (1), (2), (3), (4) or (6).

• Marginal note:Exception to subsection 3(1)

  (10) Subsection 3(1) does not authorize the Commissioner to extend the time referred to in subsection (8) for complying with the notice beyond the later of the end of a period of six months after the date of the notice and the end of a period of 30 months after the priority date.

• Marginal note:Non-application of Article 48(2) of Patent Cooperation Treaty

  (11) Article 48(2) of the Patent Cooperation Treaty does not apply in respect of the times referred to in subsection (1), (2), (3) or (4) of this section or in respect of any time limit applicable to a PCT national phase application.

• Marginal note:Non-application of certain Rules under the PCT

  (12) Rules 49ter.1(f) and 49ter.2 of the Regulations under the PCT do not apply to a PCT national phase application.

• Marginal note:New PCT national phase application

  (13) Once an international application becomes a PCT national phase application, it may not become a new PCT national phase application unless the earlier PCT national phase application is withdrawn.

Marginal note:Application of Canadian legislation

• 155 (1) If an international application becomes a PCT national phase application, the application is considered, beginning on its national phase entry date, to be an application for a patent filed in Canada and, subject to sections 157 to 163, the Act and these Rules apply beginning on that date in respect of that application.

• Marginal note:National phase entry date

  (2) Subject to section 210, the national phase entry date of an application for a patent is

  • (a) if the applicant has not complied with the applicable requirements of subsection 154(3), the day on which the applicant complied with the requirements of subsection 154(1) and, if applicable, subsection 154(2) or, if the applicant complied with those requirements on different days, the latest of those days; and

  • (b) if the applicant has complied with the applicable requirements of subsection 154(3), the day on which the applicant complied with those requirements or, if the applicant complied with those requirements on different days, the latest of those days.

• Marginal note:Small entity declaration

  (3) For the purpose of subsection (2), an applicant is not considered to have paid the fee referred to in subparagraph 154(1)(c)(i), paragraph 154(2)(a) or clause 154(3)(a)(iii)(A) or 154(3)(b)(i)(A) or (ii)(A) until the small entity declaration has been filed.

• (4) [Repealed, SOR/2022-120, s. 33]

• (5) [Repealed, SOR/2022-120, s. 33]

Marginal note:Translation — part of description or claims

• 155.1 (1) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any part of the description — other than any sequence listings — and any part of the claims that are in a language other than English or French.

• Marginal note:Translation — abstract, request or statement

  (2) At or before the time that an international application becomes a PCT national phase application, the applicant must submit to the Commissioner a translation of any of the following elements, or any part of the following elements, that are in a language other than English or French:

  • (a) any language-dependent free text contained in a sequence listing that does not also appear in English or French;

  • (b) any text matter in a drawing;

  • (c) the abstract;

  • (d) the request referred to in article 4 of the Patent Cooperation Treaty, except if the International Bureau of the World Intellectual Property Organization has published the international application on or before the national phase entry date; and

  • (e) any statement made under Article 19 of the Patent Cooperation Treaty.

Marginal note:Error in translation — notice

• 155.2 (1) If the Commissioner, before a request for examination is made, or an examiner, in the course of examining an application for a patent, has reasonable grounds to believe that a translation submitted under paragraph 154(1)(b) or (b.1) or section 155.1 contains an error, the Commissioner or the examiner, as the case may be, must by notice inform the applicant of the error.

• Marginal note:Error in translation — correction

  (2) An applicant may correct a translation submitted under paragraph 154(1)(b) or (b.1) or section 155.1 that contains an error by submitting the following to the Commissioner before the day on which a notice of allowance or a conditional notice of allowance is sent or, if that notice is withdrawn by the Commissioner or set aside in accordance with subsection 85.1(4), before the day on which a notice of allowance or a conditional notice of allowance is sent again:

  • (a) the corrected translation;

  • (b) a request that the corrected translation replace the original translation; and

  • (c) a statement to the effect that

    • (i) at the time the original translation was submitted, it would have been obvious to a skilled translator fluent in both the original language and the language of translation that the original translation contained an error and that the corrected translation is an accurate translation,

    • (ii) the error in the original translation occurred despite due care having been taken in its preparation, and

    • (iii) the request is being made within a reasonable time after the applicant became aware of the error.

• Marginal note:Date of replacement

  (3) Subject to subsection (4), a corrected translation submitted in accordance with subsection (2) replaces the original translation and is considered to have been submitted on the day on which the original translation was submitted.

• Marginal note:Open to public inspection — date

  (4) For the purposes of subsection 55(2) of the Act, if a corrected translation of any part of the specification contained in an application for a patent is submitted under subsection (2) after the application became open to public inspection, in English or French, under section 10 of the Act, the specification is considered to have become open to public inspection, in English or French, on the day on which the applicant submits the corrected translation or, if more than one corrected translation of the specification is submitted, on the last day on which a corrected translation is submitted.

Marginal note:Restriction — translation of specification or drawings

155.3 A translation or corrected translation, submitted under section 155.1 or subsection 155.2(2), respectively, of all or part of the text matter in a specification or a drawing must not contain any matter not reasonably to be inferred from the specification or the drawings contained in the application on its filing date.

Marginal note:Complete copy

• 155.4 (1) An applicant who submits a translation under section 155.1 or a corrected translation under subsection 155.2(2) must, at the same time, submit the following to the Commissioner:

  • (a) in the case of a translation referred to in subsection 155.1(1) or a correction to that translation, a complete copy of the description — other than any sequence listings — or the claims, as the case may be, that contains the translated text matter and the text matter that already appeared in English or French;

  • (b) in the case of a translation referred to in paragraph 155.1(2)(a) or a correction to that translation, a complete copy of the sequence listing that contains the translated text matter and the text matter that already appeared in English or French;

  • (c) in the case of a translation referred to in paragraph 155.1(2)(b) or a correction to that translation, a complete copy of the drawing that contains the translated text matter and the text matter that already appeared in English or French; and

  • (d) in the case of a translation referred to in paragraph 155.1(2)(c), (d) or (e) or a correction to that translation, a complete copy of the abstract, request or statement, as the case may be, that contains the translated text matter and the text matter that already appeared in English or French.

• Marginal note:Integrated translation

  (2) For the purposes of section 155.1 and subsection 155.2(2), if a complete copy is submitted in accordance with subsection (1), the applicant need not submit the translation or corrected translation as a separate document.