Regular Patent Applications

GENERAL NOTE: The instructions that follow pertain to regular (non-PCT) filings. In some cases, the practice respecting national phase entry of PCT cases differs from what is stated below. For information on national phase entry for PCT cases, please refer to the separate section on PCT national phase entry.

1. Items Needed to Obtain a Filing Date

  • Abstract (of no more than 150 words), specification, including disclosure and at least one claim, in English or French;
  • Any drawings referred to in the specification (the drawings may if necessary be informal); 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.  We can execute all required documents as agents for the applicant.

2.  Specification – Drawings – Sequence Listing

If possible, please provide the abstract description and claims in a common editable electronic format (e.g., Word or WordPerfect).  If this is not possible, pdf or other similar format will suffice for filing purposes.

Formal drawings should be sufficiently dense and dark to be readily reproducible and should  have a clear margin of at least one inch (2.5 cm.) on all sides.

If an application contains disclosure of a nucleotide or amino acid sequence other than a sequence identified as forming a part of the prior art, a sequence listing in electronic form must be provided, and both the sequence listing and the electronic form must comply with the PCT sequence listing standard.

3. 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).

If we are provided with suitable assurances to the effect that the applicant is the legal representative of the inventor(s), we will include the required declaration of the applicant’s entitlement in the petition for grant of a patent that we sign on behalf of the applicant.

4. Paris Convention Priority

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

5. 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.

6. 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, which 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, because the cost savings are not great, we recommend that small-entity status not be claimed if there is any doubt as to its availability.

If we are provided with suitable assurances to the effect that the applicant qualifies to pay official fees on the small-entity basis, we will include a small-entity declaration in the petition for grant of a patent that we sign on behalf of the applicant.

7. Examination

Canadian patent applications are not automatically examined.  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.  However, many applicants prefer to defer Canadian examination at least until they have received an indication of the patentability of a corresponding application in another jurisdiction.

With the present examination backlog levels in the Canadian Patent Office, in the ordinary course, an application will not be examined before roughly two years have elapsed following the filing of a request for examination.  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.

8.  Maintenance Fees

Maintenance fees are payable on Canadian patent applications and for the life 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.

9.  Publication

Unless the application is withdrawn or unless earlier publication is requested by the applicant, the application will be laid open to public inspection eighteen months after its earliest priority date; or, if priority has not been claimed, eighteen 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.

10.  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 one year 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, with, other than delay, 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.

Nothing here written constitutes legal advice. The accuracy of what is written is not guaranteed.  Please consult us about any specific matter on which you require legal advice.