Intro to Canadian patent practice for foreign firms

ATMAC Jan 25 2018

We are happy to assist foreign patent firms and professionals file patent applications at the Canadian Intellectual Property Office (CIPO). The below information briefly introduces Canadian patent practice and explains what we need from you to get started:

     Small entity discounts
     Request for examination
     Assignments of ownership
     Maintenance fees
     Divisional applications
     1-year grace period for self-disclosures
     Abandonment and reinstatement
     Getting started

Small entity discounts

Many of the government fees charged by the Canadian Intellectual Property Office (CIPO) are reduced by one half for applicants that qualify as a small entity. To be a small entity, the applicant must employs fifty (50) or fewer employees or be a university. Furthermore, all entities with rights in the invention or control over the applicant must also meet the same requirement.

Small entity status is determined only once – at the time the Canadian patent regime is engaged. This will either be the filing date for an application filed directly with CIPO, or the national entry date for a PCT application entering the national phase in Canada. Once small entity status is properly established, the application and any patent issued therefrom remains entitled to small entity discounts for its entire life regardless of any changes in entity size of the original applicant or assignments to new owners.

Request for examination

CIPO will only examine a patent application in response to a request for examination and payment of an examination fee. For applications with a Canadian filing date or PCT international filing date *on or after* Oct. 30, 2019, the request and fee can be deferred up to four (4) years from the Canadian application’s filing date / PCT international filing date. For applications with a Canadian filing date or PCT international filing date *before* Oct. 30, 2019, the request and fee can be deferred up to five (5) years from the Canadian application’s filing date / PCT international filing date.

Requesting examination when filing in Canada ensures the application is immediately placed on an Examiner’s docket. Actual examination time will depend on the backlog of pending applications. To slow the examination process and defer the associated costs, an applicant may choose to request examination at a later date – perhaps waiting until reaching allowance in another country such as the United States.

Assignments of ownership

Executed assignment documents transferring ownership should be registered with CIPO to ensure the transfer of rights is recognized. Assignments may also be registered at any time during the application pendency and after patent grant. There is a gov’t fee for each document to be registered.

Maintenance fees

Canadian patents and applications are subject to annual maintenance fee payments starting on the second (2nd) anniversary of the Canadian application’s filing date / PCT international filing date. Annual maintenance fees are due thereafter on each anniversary of the filing date, continuing throughout the life of both the pending application and any patent issued from the application.

Divisional applications

Claims directed towards different inventions supported by a patent application should be included as early as possible by way of voluntary amendment. Whenever possible, a divisional application should be initiated at the request of the Patent Office, and not by the applicant, thereby reducing the risk of a divisional patent being invalidated on the grounds of double patenting. There are no excess claim fees in Canada.

1-year grace period for self-disclosures

Canadian patent law includes an automatic 1-year grace period protecting inventors from self-disclosures. The grace period spans one year backwards from the Canadian application’s filing date / PCT international filing date. Disclosures made within the grace period by either the inventor or by anyone who obtained knowledge from the inventor do not destroy the novelty of the invention in Canada.

Abandonment and reinstatement

Whenever a time limit or deadline required by the Office is missed, reinstatement must be requested and a reinstatement fee paid. The request for reinstatement can only be made within twelve (12) months of the expiry of the specified time limit (i.e., within one year from the missed due date) and the omitted act must be completed and the reinstatement fee paid for reinstatement to be successful. Due care is only required for reinstatement for missed maintenance fees and requests for examination; all other types of reinstatement do not require any showing of due care.

Getting started

To get started, please contact us and provide the following information:

            For entering the PCT national stage in Canada :

  1. PCT International application number
  2. English translation of application (if not already in English)
  3. Assignment document to register (if any)
  4. Whether small entity requirements are met
  5. Whether to request examination at time of national entry

            For direct filing in Canada under the Paris Convention:

  1. Priority application details including filing date
  2. English content of application (specification, claims, figures, abstract)
  3. Assignment document to register (if any)
  4. Whether small entity requirements are met
  5. Whether to request examination at time of filing in Canada

 

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