Checklist for PCT National Phase Entry in Canada

Printable Checklist	Appointment of Agent	Assignment from inventors	Assignment from company	PCT Declaration of Applicant’s Entitlement	Small entity considerations

• The deadline to enter the national phase of the PCT in Canada is 42 months from the earliest priority date. Check the time limit by entering the earliest priority date at the PCT Time Limit Calculator.
• International Application Status Report downloaded from the Documents tab for the PCT application at PatentScope Search.
• Confirmation that the information in the International Application Status Report is correct and applicable to the national phase entry application in Canada, or details of any differences between the information in the International Application Status Report and the information applicable to the national phase entry application in Canada.
• If the applicant of the national phase application ("Canadian applicant") is not the applicant named in the International Application Status Report ("PCT applicant"), evidence that the Canadian applicant is the legal representative or assignee of the PCT applicant must be provided to the Patent Office in order to comply with Subsection 58(5) of the Patent Rules. Failure to provide this evidence after it has been requisitioned by the Patent Office will result in the application being considered never to have entered the national phase in Canada. If the evidence is not in English, a notarized translation of the evidence into English is required.

   

  Example 1: Assignment from PCT applicant to Canadian applicant. The assignment includes proof of execution, for example, witnessed signatures or a company seal. Alternatively, a Notice of Recordation of the assignment at another Patent Office is provided.

   

  Example 2: Name change from PCT applicant to Canadian applicant. A notarized translation of the name change document into English is provided.

• Appointment of Agent in favour of Integral IP, signed by each Canadian applicant. If the Canadian applicant is a company, the Appointment of Agent should be signed by an officer of the company (CEO, CFO, COO, Director, etc.). We will send you the Appointment of Agent upon request.
• Declaration of Applicant's Entitlement (for the original PCT applicant) as at the PCT filing date. Entitlement may be based, for example, on employment, an agreement, an assignment, a name change, or any combination of these or other factors. Instructions on how to write the Declaration of Applicant's Entitlement are found on pages 5 and 6 of the Notes to the PCT Request Form regarding Box No. VIII(ii). If the Declaration of Applicant's Entitlement is not provided to the Patent Office within 3 months of national entry, it will be requisitioned by the Patent Office, incurring a completion fee of $200. Failure to respond to the requisition within 3 months of its mailing date will cause the application to go abandoned.
• Translation of PCT application into English, if published in another language, accompanied by a statement by the translator to the effect that, to the best of the translator’s knowledge, the translation is complete and faithful. The translation must be submitted at national phase entry. If no amendments were made in the international phase, then the translation is of the PCT application as originally filed. Otherwise, the translation is of the PCT application as amended during the international phase. We can arrange for the translation, if needed. The Patent Office may requisition a new translation if it has reasonable grounds to believe that the translation is not accurate.
• Instructions to pay or not to pay the next maintenance fee at national phase entry. Annual maintenance fees are payable on pending applications and issued patents prior to the second and subsequent anniversaries of the PCT filing date.
• Instructions to request examination or not to request examination at national phase entry. Examination must be requested within 5 years of the PCT filing date. Accelerated examination is possible in certain circumstances.
• If applicable, a small entity declaration signed by the Canadian applicant. We will send you the declaration upon request. No fees can be paid at the small entity rate without submitting a signed small entity declaration to the Patent Office. Small entity status is determined as of the date of national entry in Canada.
• If applicable, sequence listing in editable format (preferably a text file), identical to the sequence listing filed in the PCT application.
• Any amendments to be made at national phase entry. Please send all amendments as editable files (preferable in Microsoft Word format) showing changes in mark-up relative to the most recent version on file for the PCT application. Please include an explanation of the purpose of the amendment.
• (Optional yet highly recommended) Assignments or other documents explaining chain of title from the inventors to the Canadian applicant. In order to be registered at the Patent Office, a document must have proof of execution, for example, witnessed signatures or a company seal. Proof that the document was recorded in another Patent Office, for example, a Notice of Recordation from the USPTO, is acceptable. Each document incurs a registration fee of $100.