Requests for Priority

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1.0 Introduction

The following sections describe the administrative requirements regarding making a request for priority and a restoration of priority.

2.0 Request for Priority

An applicant for a patent in Canada may request priority in respect of the application on the basis of one or more previously regularly filed applications filed in Canada or in any country belonging to the Paris Convention for the Protection of Industrial Property ("the Paris Convention") or in any World Trade Organization (WTO) member country. Priority can also be requested on the basis of applications filed before international organizations or intergovernmental patent authorities.

2.1 Time Period for the Request for Priority

An applicant may make a request for priority before the earlier of:

  • The date the applicant submits approval for the laying open to public inspection before the end of the confidentiality period, or
  • The later of :
    • The end of 16 months after the earliest of the filing dates of the previously regularly filed applications (the priority applications); and
    • Four months after the filing date of the pending application.

(subsection 28.4(2) of the Patent Act)

2.2 Making the Request for Priority

The request for priority must be made in the petition of the pending application or in another document other than the specification or drawings of the pending application.

For each previously regularly filed application (priority application), the information required to make the request for priority is:

  • The filing date,
  • The name of the country or office of filing
  • The number of the previously regularly filed application

(subsection 73(1) of the Patent Rules)

2.2.1 Exception – When the Priority Application Number is Not Known

When the application number of the priority application is not known the Office will accept the following in the place of the application filing number:

  • a provisional number for the previously filed application, if any, given by the office where the previously filed application was filed;
  • a copy of the request part of the previously filed application along with the date on which the application was sent to the office of filing;
  • a reference number given to the previously filed application by the applicant or his representative and indicated in the previously filed application, along with the name and address of the applicant, the title of the invention and the date on which the application was sent to the office of filing.

3.0 Copy of Priority Application

For each request for priority, the applicant is required to provide a copy of the regularly filed application on which the priority request is based. This can be done by either:

  1. submitting a certified copy of the priority document and a certificate from the office of filing showing the filing date; or
  2. making a copy of the priority document available to the Commissioner in a digital library specified by the Commissioner, and inform the Commissioner of the access code and that it is so available.

(subsection 74(1) of the Patent Rules)

3.0.1 Exception – Copy of Priority Application Not Required

Applicants are not required to provide copies of priority documents under the following circumstances:

  1. The priority document is a Canadian application,
  2. The priority document is a PCT application filed with the International Bureau or in any Receiving Office; or
  3. The pending application is a PCT national phase application and the applicant has complied with Rule 17.1(a), (b) or (b-bis) of the Regulations under the PCT in respect of the previously regularly filed application upon which the request for priority is based.

(subsections 74(1) and (12) of the Patent Rules)

3.1 Time Period for Submitting Requirement to Provide Copies of Priority Documents

Applicants who are required to submit or make available copies of priority documents must do so before the latest of the following dates:

  1. 16 months after the earliest of the filing dates of the previously regularly filed applications for a patent on which the request for priority is based,
  2. four months after the filing date of the pending application for a patent, and
  3. if the pending application for a patent is a PCT national phase application, the national phase entry date.

(subsection 74(2) of the Patent Rules)

3.2 Notice to Submit Copy of the Priority Document(s)

If the applicant has not complied with the requirement by the deadline (described in 3.1 above), the Commissioner will send a notice to the applicant that requires the applicant to comply with the requirement not later than two months after the date of the notice.

(subsection 74(4) of the Patent Rules)

3.2.1. Exception – Copy of the Priority Document Not Available

In the event that an applicant is unable to meet the requirement to submit a copy, or provide access to the priority document, the applicant will be deemed to have complied with the requirement to submit a copy or provide access if the applicant takes the following steps:

  1. The applicant must request a copy and certificate showing the filing date of the priority application from the patent office before the deadline to provide a copy and certificate set out in subsection 74(1) of the Patent Rules; and
  2. The applicant must submit a request that the Commissioner restore the right of priority on the basis of the priority application and a statement indicating that a request for the copy was made to the patent office of the priority application as well as the date of the request.

(subsection 74(6) of the Patent Rules)

When a copy of the priority document and certificate is provided by the office of filing the applicant must submit them to the Commissioner not later than two months after the day on which they were received by the person who requested them.

(subsection 74(8) of the Patent Rules)

4.0 Translation of priority document

During examination of an application, an examiner may send a notice requiring the applicant to submit a translation of a priority document that is not in English or French. If the examiner has reasonable grounds to believe that the translation is not accurate, they may send a further notice to the applicant requesting:

  1. a statement by the translator that, to the best of a the translator's knowledge, the translation is accurate; or
  2. a new English or French translation, together with a statement by the translator that, to the best of the translator's knowledge, the new translation is accurate.

5.0 Restoration of the right of priority

Applicants can request restoration of the right of priority when the filing date of the pending application is within 12 to 14 months from the filing date of the previously filed application.

5.1 Restoration of the Right of Priority

In their request for restoration of the right of priority, the applicant must, within the relevant prescribed time set out in section 77 of the Patent Rules (see section 5.2):

  1. make a request for subsection 28.4(6) of the Patent Act to apply
  2. state in the request that the failure to file the pending application or the co-pending application, as the case may be, within 12 months after the filing date of the previously regularly filed application was unintentional
  3. Make a request for priority in the petition or in a document other than the abstract, specification or drawings;
  4. Submit to the Commissioner the filing date and the name of the country or office of filing of the previously regularly filed application for a patent

(paragraph 28.4(6)(b) of the Patent Act and subsection 77(2) of the Patent Rules)

5.2 Time Period for Request for Restoration of Right of Priority

The time to make a request to restore the right of priority is:

  • For a regular application (non-PCT) – not later than two months after the filing date of the application or co-pending application;
  • For a PCT national phase application – not later than one month after the national phase entry date;

(subsection 77(1) of the Patent Rules)

6.0 Withdrawal of a request for priority

A request for priority may be withdrawn by an applicant upon request to the Commissioner. The effective date of the withdrawal of a request for priority is the date on which the request is received by the Commissioner.

(section 75 of the Patent Rules)

7.0 Deemed Withdrawal of a Request for Priority

Any particular request for priority will be deemed withdrawn in the following circumstances:

  1. If an applicant does not comply with the requirement to provide a copy of the priority document or provide access to the priority document not later than two months after the date of the notice sent under subsection 74(4) of the Patent Rules (section 3.2);
  2. If the applicant is deemed to have complied with the requirement to provide a copy of the priority document or provide access to the priority document, but does not submit a copy of the priority document not later than two months after the day on which it is received required by subsection 74(8) of the Patent Rules (section 3.2.1).
  3. If the applicant does not provide a translation of the priority document, a new translation or a statement by the translator and a new translation within four months of the date of the relevant notice sent under subsection 76(1) or (2) of the Patent Rules (section 4.0).

(subsections 74(6), (9) and 76(3) of the Patent Rules)

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