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Canadian Patent Applications

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Canadian Patent Applications

Postby Pinskylaw.ca » 12 Nov 2016, 12:15

1. Items Required to Obtain a Filing Date

- Abstract (of no more than 150 words), specification, including disclosure and at least one claim, in English or French;
- Drawings referred to in the specification; and
- Name(s) and address(es) of inventor(s) and also of the applicant, if the applicant is different from the inventor(s).

There is no need for the applicant or inventors to sign a power of attorney or any other application papers in order to obtain a filing date.

2. Applicant’s Entitlement

If the applicant is different from the inventor(s), the application must include a declaration that the applicant is the “legal representative” of the inventor. “Legal representative” includes anyone who has acquired the invention, such as by agreement (e.g., an assignment) or by operation of law (e.g., in some jurisdictions, inventions made by employees as part of their employment belong to their employer), or who has legal control over the invention (e.g., an executor, administrator or guardian).

3. Paris Convention Priority

Convention priority must be claimed within six months of filing. A certified copy of the priority document is not ordinarily required.

4. Novelty Requirements

A one year grace period applies to most statutory bars; that is, to be valid, a Canadian application must be actually filed in Canada within one year of any publication of the invention occurring anywhere in the world, or any public use or sale of the invention. Note that the grace period runs to the Canadian filing date, not to the priority date. A Canadian application must also be filed before any counterpart application issues to patent in some other country, unless the Canadian application is filed within the one year Convention priority period.

5. Small-Entity Status

The Canadian Patent Office charges reduced fees to applicants who qualify as “small entities”. For example, the patent application filing fee is currently $400, this fee is reduced to $200 for small entities. The test for small-entity status in Canada is different from the test used in the United States. The Canadian Patent Rules define a “small entity” as an entity that employs 50 or fewer employees or that is a university, but does not include an entity that: (a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or (b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees. Patent rights may be entirely lost or prejudiced through improper assertion of small-entity status. Accordingly, the small-entity status should not be claimed if there is any doubt as to its legitimacy or basis.

6. Examination

Canadian patent applications are not automatically examined. A request for examination of application must be filed. The deadline for filing a request for examination and paying the examination fee is five years from the Canadian filing date. Examination may be requested at the time of filing the application. It is possible to expedite examination by obtaining a Special Order for advanced examination or by utilizing one of the Patent Prosecution Highway Programs that Canada has established with a handful of other countries.

7. Maintenance Fees

Maintenance fees are payable for Canadian patent applications and during the life period of any resulting patents. The first maintenance fee is due by the second anniversary of the filing date and subsequent maintenance fees are due annually thereafter.

8. Publication

Unless the application is withdrawn or unless earlier publication is requested by the applicant, the application will be laid open for public inspection 18 months after its earliest priority date, or, if priority has not been claimed, 18 months after the Canadian filing date. When an application is “laid open” it is published by the Canadian Patent Office and posted to the Canadian Patent Office website.

9. Abandonment and Reinstatement

Once the requirements for obtaining a filing date have been satisfied, if a subsequent deadline in the application is missed, the application will be deemed abandoned. However, when an application is deemed abandoned, the applicant has 12 months from the missed deadline within which to reinstate the application by: remedying the defect that triggered the abandonment, requesting reinstatement and paying the reinstatement fee. Reinstatement is routine and essentially provides for a retroactive extension. The only adverse consequence being that once an application has been abandoned and reinstated the applicant is thereafter not entitled to obtain a Special Order for advanced examination.
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