Canada is currently in the process of modernizing and harmonizing its intellectual property laws to comply with a number of international treaties. As part of this modernization process, the Canadian Intellectual Property Office recently proposed new Patent Rules that go hand-in-hand with upcoming changes to the Patent Act (both available here). These changes to the Patent Act and new Patent Rules are not in force yet, but it is expected that they will come into force in early 2019.
If the new Patent Rules that come into force are substantially similar to those proposed, PCT owners will no longer be automatically entitled to late National Phase entry in Canada. Under the current Patent Act and Patent Rules, an applicant can enter National Phase in Canada up to 42 months after the priority date of the original PCT application, with payment of a late fee. However, under the proposed new Patent Rules, an applicant will be required to enter National Phase in Canada within 30 months of the priority date of the original PCT application unless extended. This 30 month deadline can only be extended if, before the end of an additional 12 months, the applicant pays a late fee and submits a declaration that the failure to meet the 30 month deadline was unintentional and the Commissioner determines that the failure to meet the 30 month deadline was unintentional.
This exercise of the Commissioner’s discretion in allowing or disallowing late National Phase entry is a significant departure from the automatic entitlement that PCT owners currently enjoy in Canada. Accordingly, PCT owners seeking to enter National Phase in Canada and approaching the end of the 30 month period after the priority date of their original PCT application should strongly consider entering National Phase soon, before the new Patent Rules come into force.