Patent filing in Canada: what you need to know

Flexibility 
Cost saving 
Other unique aspects

The Canadian patent system is flexible and low cost, relative to other industrialised countries. In addition, certain unique aspects of Canadian patent prosecution can reduce the time and expense of obtaining a patent, whether filing in Canada directly or through the Patent Cooperation Treaty (PCT).

Flexibility
The flexibility of the Canadian patent system starts with the late entry option via the PCT. National phase entry under the PCT may be carried out up to 42 months from the earliest priority date claimed for the application. A nominal late entry fee of C$200 applies. Another hallmark of Canada’s flexibility is the fact that final office actions are extremely rare; there is practically no limit to the number of office actions permitted.

Canada also has permissive reinstatement rules. Reinstatement is permitted as a matter of right within 12 months of abandonment for any reason. There is no need to show that the application was unintentionally or unavoidably abandoned. In addition, the fee is very low, at C$200 for each instance of abandonment.

Delayed examination adds a further option to applicants. Examination is not automatic in Canada; it must be requested. However, it may be strategically delayed for up to five years from the Canadian filing date to defer costs - and to assess claims allowed in other jurisdictions.

Expedited examination of an application can be requested by any interested party under the Canadian system. If requested, a fee must be paid and the requestor must believe that failure to expedite the application may prejudice its rights. Expedited examination may be strategically used against competitors’ patent applications to ensure that they issue quickly so that they may be assessed for claim coverage.

Cost saving
There are several areas where patent applicants can save money when filing in Canada. For one, Canadian patent examiners often accept claims allowed in Europe and the United States. If claims from these jurisdictions are of acceptable scope, they may simply be submitted to replace the pending Canadian claims. Allowance frequently follows.

In addition, a new pilot programme is underway that aims to create a fast-track examination process for patent applications. Under the programme it is now possible to accelerate prosecution of a Canadian application where some of the claims have been found allowable in a corresponding US patent application. Currently no government fees are required for this programme.

There are also no additional charges based on the number of claims in an application; any number of dependent and independent claims are permitted without charge. Claims may be significantly amended or replaced during prosecution without penalty. Claims may also be amended or added after allowance, and new prior art can be submitted after the notice of allowance if the issue fee is paid late.

In addition, the fees to maintain pending applications and issued patents are relatively low. Annual maintenance fees range from C$100 at the second anniversary to C$450 at the 19th anniversary.

Other cost savings include the following: 

• Multiple dependencies are permitted at no additional cost; 
• No information disclosure statement is required and there is no ongoing duty to disclose material prior art – unlike in the United States; and
• A certified copy of the priority document is not required unless requested by the Patent Office.

Other unique aspects
Other unique aspects of the Canadian patent system exist beyond flexibility and cost. For example, no power of attorney is required when filing. In addition, the lack of prosecution history estoppel in Canada means that prosecution history may not be used by the courts to construe claims.

Finally, familiarity with US prosecution is an important benefit of the Canadian system. Due to the size and importance of the US market, leading IP professionals in Canada keep abreast of developments in the US Patent and Trademark Office. Similarities to and differences from the US patent system are well monitored.