Fundamentals of Canadian Patent Prosecution

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We make filing and prosecuting patents in Canada straightforward.

 
 

Deadlines.

Standard deadlines are 12 months from first disclosure, 12 months for Paris Convention, and 30 months for PCT national phase.

However, while a PCT national entry should be filed at month 30, a it can be filed up to month 42 for modest additional cost.

Information on the deadlines for filing is found here.

Form.

The application must be filed in the prescribed form.  A patent in suitable form for filing in the US or PCT in English is very close.  Information on the form of Canadian patent applications is found here.

No extra fees.

The government fees for filing are always the same. There is no variation for number of claims, number of pages, number of

Small means small.

Small entities pay half the government fees. However, a small entity must have fewer than 50 employees. Learn more here.

Entitlement.

The applicant must confirm that the applicant is the person entitled to apply for the Canadian patent for this invention.  Information on the Declaration of Legal Representative is found here.

Ownership: chain of title.

The owner of a Canadian patent application or issued patent must file all applicable assignments of the patent, to establish clear chain of title to the Canadian patent application from the inventor to the current owner.   Information on the requirements for patent assignments that will be accepted by the Canadian patent office is found here.

Examination.

At some point within 5 years after the International Filing date, the applicant must request examination of the Canadian patent application.  Examination can be accelerated relatively readily, and, can be deferred up to 5 years without cost.  Information on requesting examination of Canadian patent applications is found here.

PPH Works Really Well

Once examination is requested, the Canadian patent may be eligible for prosecution under one of the bilateral patent prosecution highwayagreements that the Canadian patent office has entered into with various other countries.  This may substantially reduce the cost of prosecution in Canada.  Information on the patent prosecution highway program is found here.

Maintenance fees.

Maintenance fees must be paid throughout the life of the Canadian patent application, and once the patent is allowed, the life of the issued Canadian patent.  Information on Canadian patent maintenance fees is found here. A patent application or granted patent that lapses for failure to pay maintenance fees can be re-instated within 12 months for modest additional cost.

Substantive Canadian patent law.

In all cases, the Canadian patent application will be examined in accordance with Canadian law.  Information on issues of substantive Canadian patent law, such as patentable subject matter in Canada including business method patents, is found here.

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