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Intellectual property, general information, what is intellectual property, what is a patent and what can be patented, why obtain a patent, using the terms: patented, patent pending, patent applied for, patent lawyers and patent agents, before filing a patent application, how to file a patent application, what happens in the patent application process, how long does patent protection last, assigning and licensing a patent or a patent application, obtaining a patent in a foreign country, patent infringement, esc affordable trademark searches and registration services, new trademarks act, what can be trademarked, why register a trademark, using trademark symbols: ™ ®, does your trademark qualify for registration, trademark pre-registration search, trademark applications, what happens in the trademark registration process, how long does a trademark last, assigning or licensing a trademark, obtaining a trademark in a foreign country, trademark infringement, what can be the subject of a copyright, when does a copyright arise and where is it legal, who owns the copyright, using a copyright symbol: ©, why register a copyright, how to register a copyright, assigning or licensing a copyright, royalties, tariffs and other fees, moral rights, how long does a copyright last, copyright infringement and fair dealing, industrial designs, what is an industrial design, why register an industrial design, using an industrial design symbol, industrial design pre-registration search, industrial design applications, what happens in the industrial design application process, how long does an industrial design last, assigning and licensing an industrial design, registering your industrial design in a foreign country, industrial design infringement, other types of intellectual property, trade secrets, integrated circuit topography, plant breeders' rights.

Home Legal Answers Intellectual Property Patents Assigning and licensing a Patent or a Patent application

Assigning and licensing are two different ways that inventors can profit from their patents. The process of assigning or licensing a patent or a patent application is usually complicated. To make sure that your rights are protected, you should contact a patent lawyer to advise you about assigning or licensing your patent or patent application. You should also have your lawyer review the agreement before you sign it.

Assignments

An assignment is the sale of your ownership of all or some of a patent. When you assign your invention you give up rights as the inventor. A benefit of assigning your patent is that you could make an immediate profit without worrying about whether the invention will be a success in the market. You can assign a patent or even a patent application. Assignments must be made in writing. Any changes in ownership should be registered with the Patent Office at the Canadian Intellectual Property Office (CIPO) by completing a Request for the Registration of a Transfer . This will protect your legal rights and you will be able to bring a lawsuit against anyone who uses your potential invention without your permission.

A written assignment in front of witnesses is recommended. Failure to record a transfer can lead to complications and disputes over ownership. If a patent transfer has not been recorded and another party subsequently acquires the patent and records this secondary transfer, the person who records the transfer first will have a stronger claim to ownership.

Patents can be co-owned. A co-owner can sell their entire interest without the consent of the other co-owners, as long as the other co-owner’s rights are not impacted. A written agreement addressing each co-owner’s rights and obligations is advisable.

Licensing gives someone other than the inventor permission to do, for example, one or more of making, using and selling the patented invention while the inventor maintains ownership of the patent. In most cases, the owner of the invention will charge a fee and/or royalty for granting someone a license. If you are involved in a licensing arrangement, you should make sure that the agreement is in writing and that it includes the time limits of the license and the fees or royalties to be paid. Licenses should also be registered with the Patent Office.

There are government fees for filing an assignment or a license of a patent with the Patent Office. For more information and current government fees, refer to the  Canadian Intellectual Property Office .

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Intellectual Property Transactions in Canada: Overview

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The Importance of Registering Intellectual Property Transfers

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Canada’s Intellectual Property Firm

Detailed overview of deadlines and requirements under the new Canadian Patent Rules coming into force on October 30, 2019

Authored by David Schwartz

Today, the government of Canada published the final version of the new Patent Rules  (SOR/2019-251) in Canada Gazette, Part II on July 10, 2019. The new Rules and associated amendments to the Patent Act will come into force on October 30, 2019.

The new Rules substantially alter Canadian patent practice, and include many changes needed to permit Canada to ratify the Patent Law Treaty (PLT).

In this article, we provide a detailed analysis of revised requirements under the new Rules, together with recommendations for best practices.

PCT National Phase Entry Requirements

PCT national phase entry deadline The new Rules place restrictions on the time for entry into the Canadian national phase.

If the Patent Cooperation Treaty (PCT) international filing date is on or after October 30, 2019, an application can enter the national phase in Canada up to 42 months from the earliest priority date. However, if the application enters the national phase more than 30 months from the earliest priority date, a reinstatement fee of CAD $200 must be paid and the applicant must submit a request that the rights of the applicant be reinstated and a statement that the failure to meet the 30-month deadline was unintentional.

If the PCT international filing date is before October 30, 2019, the current right to enter the Canadian national phase up to 42 months from the priority date merely upon payment of a CAD $200 late fee is retained.

Restoration of priority Restoration of priority will be available in the Canadian national phase if the PCT international filing date is on or after October 30, 2019, and priority was restored in international phase. This is a significant change in Canadian practice.

Alternatively, if priority was not restored in the international phase, priority may be restored in the Canadian national phase on an “unintentional” standard, if the PCT international filing date is on or after October 30, 2019 and a request for restoration of priority is submitted within one month after national entry.

Certified copy of priority document If the PCT international filing date is on or after October 30, 2019, in the rare event that a certified copy of the priority document was not  filed in the international phase, a certified copy must be submitted to the Canadian Intellectual Property Office (CIPO), or made available from a digital library specified by CIPO (which is expected to be the World Intellectual Property Organization (WIPO) Digital Access Service).

Filing fee and translation Although filing requirements for non -PCT applications are relaxed, to effect entry into the Canadian national phase of a PCT application, it will remain necessary under the new Rules to pay the filing fee and file an English or French translation of a foreign-language specification by the national entry deadline.

Canadian Patent Application (Non-PCT) Filing Requirements

Obtaining a filing date Under the new Rules, the filing fee and an English or French translation of the application are no longer required in order to secure a filing date.

If the application is filed on or after October 30, 2019, a filing date will be granted based on a specification filed in a foreign language, without payment of the filing fee.

The application will be abandoned if a translation into English or French is not filed within two months of a notice issued by CIPO (no additional late fee). The time for responding to the notice cannot be extended.

The application will be deemed to be withdrawn if the filing fee and a late fee of CAD $150 are not submitted within three months of a notice issued by CIPO.

On or after October 30, 2019, it will be possible to obtain a filing date on a weekend, holiday, or other day when CIPO is closed to the public, by filing the application electronically.

Restoration of priority New to Canadian practice, priority may be restored on an “unintentional” standard if the Canadian filing date is on or after October 30, 2019. The Canadian application must be filed within 14 months of the priority date and restoration of priority requested within two months of the Canadian filing date .

Certified copy of priority document If the Canadian filing date is on or after October 30, 2019, the applicant must submit a certified copy of each priority application or make it available to CIPO from a digital library expected to be the WIPO Digital Access Service.

If the certified copy or access is not provided within 16 months of the earliest priority date , CIPO will issue a notice requiring the certified copy or access within two months of the date of the notice. No government fee is payable when responding to the notice.

Failure to comply with the notice results in the priority claim being considered to have been withdrawn.

Reference to previously filed application for a patent If the application is submitted on or after October 30, 2019, the applicant may refer to a previously-filed application rather than submitting a specification to obtain a filing date.

The non-extendable deadline may be as early as two months from submission of the application.

Within two months of making reference to a previously-filed application, a copy of the previously-filed application must be filed or be made available from a digital library expected to be the WIPO Digital Access Service.

Addition to specification or addition of a drawing based on priority application If the application is submitted on or after October 30, 2019, the application may be corrected by adding a missing part of the specification or adding a drawing from a priority application.

Maintenance Fees

Pending applications In a significant change to Canadian practice, on or after October 30, 2019, anyone can pay a maintenance fee on a pending application. Currently, generally only the Canadian agent can pay a maintenance fee on a pending application.

If the original deadline is missed for a maintenance fee due on or after October 30, 2019, CIPO will issue a late notice. The application will be abandoned if the missed maintenance fee and a late fee of CAD $150 are not paid within the later of two months from the late notice and six months from the original deadline .

See below for heightened “due care” reinstatement requirements and third party rights under the new Rules.

Granted patents As before, under the new Rules, anyone can pay a maintenance fee on or after October 30, 2019.

However, the procedure relating to missed fee payments will change. If a maintenance fee payment due on or after October 30, 2019 on a granted patent is missed, CIPO will issue a late notice. The patent will be deemed to have expired on the original maintenance fee deadline if the missed maintenance and a late fee of CAD $150 are not paid within the later of two months from the late notice and six months from the original deadline .

See below for heightened “due care” late payment requirements and third party rights under the new Rules.

Examination

Deadline for requesting examination of an original application Presently, examination must be requested within five years of the PCT international filing date or Canadian filing date. This term is shortened under the new Rules.

If the PCT international filing date or Canadian filing date is on or after October 30, 2019, examination must be requested within four years from the international filing date or Canadian filing date.

Deadline for requesting examination of a divisional application Presently, examination of a divisional application must be requested within the later of five years from the original filing date and six months from submission of the divisional application. These terms are shortened under the new Rules.

If a divisional application has a parent (i.e. original) filing date before October 30, 2019 but a “presentation date” (i.e. actual submission date) on or after October 30, 2019, examination must be requested and the examination fee paid within the later of five years from the original filing date and three months from the presentation date of the divisional application.

If a divisional application has a parent (i.e. original) filing date on or after October 30, 2019, examination must be requested and the examination fee paid within the later of four years from the original filing date and three months from the presentation date of the divisional application.

Abandonment for failure to request examination If the deadline for requesting examination is on or after October 30, 2019, in the event the examination request and fee are not submitted by the original deadline, CIPO will issue a late notice. If the examination request, examination fee, and a late fee are not submitted within two months from the date of the notice, the application will be abandoned.

Examiner’s Reports Examiner’s Reports issued before October 30, 2019 have a six-month term for response (three-month term if prosecution is expedited under the “special order” procedure). All Examiner’s Reports issued on or after October 30, 2019 will have a four-month term for response.

The maximum term for response to an Examiner’s Report is six months under either the old Rules or new Rules. If a shorter term has been set, an extension of time may be obtained if a request is made prior to the expiry of the original response term and if the Commissioner of Patents considers that the circumstances justify the extension. A government fee of CAD $200 is required. Obtaining an extension will result in loss of entitlement to expedited examination under the “special order” procedure.

Final (i.e. issue) fee The final fee is due six months from the date of a Notice of Allowance issued before October 30, 2019. This term is shortened under the new Rules, and the final fee is due four months from the date of a Notice of Allowance issued on or after October 30, 2019.  These terms cannot be extended.

Excess page fee The excess page fee relating to a sequence listing in electronic form is removed under the new Rules. If a Notice of Allowance issued on or after October 30, 2019, the excess page fee calculation of CAD $6.00 per page over 100 pages of description, claims, and drawings does not include pages of a sequence listing in electronic form. 

Re-opening prosecution after allowance If the final fee deadline is before October 30, 2019, prosecution can only be re-opened by not paying the final fee so the application becomes abandoned. Upon reinstatement, the application is subject to amendment and further examination.

The new Rules introduce a simplified procedure. If the notice of allowance issues on or after October 30, 2019, prosecution can be re-opened upon request for withdrawal of the notice of allowance and payment of a CAD $400 government fee prior to payment of the final fee .

But if the application becomes abandoned for non-payment of the final fee and is subsequently reinstated, only limited amendments to correct “obvious” errors are permitted, and such an amendment must be submitted no later than when reinstating and paying the final fee .

If the notice of allowance issues before October 30, 2019 but the final fee deadline is on or after October 30, 2019, prosecution can be re-opened by not paying the final fee and then reinstating the application. It appears that prosecution potentially could also be re-opened under the new procedure, i.e. ( within four months of the notice of allowance ) paying the CAD $400 fee to have application withdrawn from allowance.

Reinstatement of Abandoned Applications and Reversal of Deemed Expiry

The reinstatement procedure largely remains the same under the new Rules. In most cases, if a prosecution deadline is missed and an application is abandoned, the application may be reinstated within 12 months of the date of abandonment by: (1) requesting reinstatement; (2) paying a government fee of $200; and (3) taking the action that should have been taken to avoid abandonment.

But the reinstatement procedure changes under the new Rules with respect to maintenance fees and requesting examination.

If (1) an application becomes abandoned on or after October 30, 2019 for failure to pay a maintenance fee, or (2) becomes abandoned on or after October 30, 2019 for failure to request examination and more than six months from the original examination deadline has passed, the application may only be reinstated if the Commissioner of Patents determines that the failure to pay the maintenance fee or request examination occurred in spite of the due care required by the circumstances having been taken .

The same due care requirement applies to reversal of deemed expiry of a granted patent for failure to pay a maintenance fee and late fee in response to a missed maintenance fee notice.

A further notable change under the new Rules is that the deadline for reinstating an application cannot be extended , a procedure that was occasionally used in the past.

Transfers (Assignments)

Under the old Rules, an assignment and CAD $100 fee must be submitted to record a transfer.

Under the new Rules, after October 30, 2019, a transfer will be recorded at the request of the applicant or patentee upon payment of $100 fee. A transfer will be recorded at the request of the transferee of an application or patent upon submission of evidence of the transfer satisfactory to the Commissioner and payment of $100 fee.

Under the new Rules, the current owner can record transfer on request, without submission of assignment, but there is no reduction in the government fee. Effectively, if someone other than the applicant/patentee wishes to record a transfer, they will need to file an assignment (or other transfer document) meeting formal requirements established by CIPO.

Correction of Errors

The Rules in force prior to October 30, 2019 provide only limited guidance with respect to correction of errors in patent applications or granted patents. Requests are often submitted to correct “clerical” errors under section 8 of the Patent Act , a provision which will be repealed on October 30, 2019. The Canadian courts have held that a clerical error under section 8 is an error “arising in the mechanical process of writing or transcribing.” Even if an error is determined to be clerical, CIPO has discretion whether to enter the correction, and potential prejudice to the public is considered. There are no time limits under section 8, and clerical errors can be corrected before or after grant.

Under the new Rules, the broad general procedure for correcting clerical errors is replaced with a new regime establishing deadlines for correcting only particular errors. If a deadline for correcting an error is missed, correction may not be possible.

Errors in priority claims Irrespective of when an application is filed, on or after October 30, 2019, an error in the filing date of a priority application as recited in a priority claim may be corrected if a request is submitted before a period that usually will expire on the earlier of 16 months from the corrected priority date and 16 months from the uncorrected priority date .

Irrespective of when an application is filed, on or after October 30, 2019, an error in the name of a country or office of filing or in the number of a priority application as recited in a priority claim may be corrected on request submitted on or before the day on which the final fee is paid .

Errors in naming or identifying applicants and inventors On or after October 30, 2019:

An error in the identity of an applicant in an application other than a PCT national phase application may be corrected on or before the publication date , and before a transfer is submitted for recordal.

An error in the identity of an applicant in a PCT national phase application may be corrected within three months after national phase entry and before a transfer is submitted for recordal.

An error in the identity of an inventor in a may be corrected prior to allowance .

An error in the name of an applicant or inventor (no change in actual identity) may be corrected on or before payment of the final fee .

Other errors

Errors by CIPO – Errors made by CIPO in the patent (e.g. owner or inventor name, priority claim) or in the specification or drawings, may be corrected if a request is made not later than 12 months from grant of the patent and if, from the documents that were in the possession of CIPO on date of grant, it is obvious that something other than what appears in the patent, the specification, or the drawings was intended, and that nothing other than the correction could have been intended. No government fee is payable.

Errors by patentee – On the request of the patentee not later than 12 months from grant of the patent , and payment of a $200 fee, the Commissioner must correct:

(a) an error in the name of the patentee or an inventor if the correction does not change their identity; or

(b) an error in the specification or the drawings, if from the specification or the drawings at the time of grant it would have been obvious to a person skilled in the art or science to which the patent pertains that something other than what appears in the specification or the drawings was intended, and that nothing other than the correction could have been intended.

Third Party Rights

The new Rules introduce a system of “third party rights” to practice a patented invention.

There are no third party rights to practice a patented invention associated with prosecution deadlines missed before October 30, 2019.

But, on or after October 30, 2019, if the applicant or patentee fails to pay a maintenance fee on time, or the applicant fails to request examination and pay the examination fee on time, third party rights to practice the invention post-grant may arise. Third party rights may arise starting from six months after the missed maintenance fee deadline or missed examination request deadline .

Notably, the third party rights provisions are independent of the abandonment/reinstatement procedure. Thus, third party rights may apply during a period after a maintenance fee or examination fee deadline has been missed, but the application has not yet become abandoned.

Pursuant to the third party rights provisions, if during a prescribed period, a person, in good faith, committed an act that would otherwise constitute an infringement of that patent, that act is not an infringement of the patent.  Furthermore, if during the prescribed period, a person, in good faith, committed an act that would otherwise constitute an infringement of that patent or made serious and effective preparations to commit that act, it is not an infringement of the patent if the person commits the act after that period.

Recommendations

The following are some general recommendations for safely and effectively prosecuting Canadian patent applications under the new Patent Rules :

• Plan ahead now for the new stricter 30-month deadline for entering the Canadian national phase, even though the new requirements will apply only to PCT applications with an international filing date on or after October 30, 2019.
• Ensure that certified copies of priority applications are filed during the international phase of PCT applications. But if they are not, highlight this at the time of national entry.
• Provide certified copies of priority applications at the time of filing Canadian (non-PCT) patent applications, or make them available at the time of filing under the WIPO Digital Access Service.
• If restoration of priority is required, highlight this immediately at the time of filing or national entry in Canada.
• Ensure that maintenance fee and examination request deadlines are not missed in view of the due care standard that may apply to reinstate an application or reverse deemed expiry of a patent, and third party rights to practice the invention that may arise.
• If an application contains a very long sequence listing, consider taking steps to avoid allowance prior to October 30, 2019, so that the excess page fee will be minimized.
• Check specifications and bibliographic data promptly upon filing, allowance, and grant, in view of the time-limited opportunities to correct errors.

If you have any questions about these changes and how to best prepare for them, please contact a member of our Patents practice group .

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

David Schwartz

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Electronic Signature Considerations For Patent Practice

Contributor

In the wake of the COVID-19 pandemic, many people are working from home, making it more difficult than usual to get handwritten signatures. Here are answers to some frequently asked questions regarding the use of electronic signatures on assignment documents for patents and patent applications.

When do I need to submit assignment documents to the Canadian Intellectual Property Office?

It is no longer the case that you always need to submit assignment documents to the Canadian Intellectual Property Office (CIPO) in order to record a transfer of a patent or patent application. According to procedures that came into effect in October 2019, the applicant may record a transfer without submitting the assignment document. Evidence of the transfer is only required when the transfer is recorded by the transferee, in which case a copy of the assignment document along with one of the following pieces of evidence would be considered satisfactory (s. 6.05.01b, MOPOP):

• A signed statement from the transferee stating that to their knowledge, the document effecting the transfer has been signed and executed by all parties;
• An affidavit, or other proof to the satisfaction of the Commissioner, from a witness stating that to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
• The signature of a witness or the presence of a corporate seal on the document effecting the transfer;
• A document showing that the transfer was registered in a patent office of another country.

There is no general requirement to submit assignments to CIPO in conjunction with a patent application in Canada, but the option to do so remains available as a distinct process from recording a transfer

Does CIPO accept electronic signatures on assignment documents?

Generally, CIPO does not accept electronic signatures. However, due to the COVID-19 pandemic, CIPO has reduced its signature requirements and is temporarily accepting electronic signatures. This temporary measure was recently published on CIPO's website (see Question #39). Although it appears that this measure applies to all documents, including assignment documents, CIPO does not explicitly specify whether assignment documents may be electronically signed. CIPO has also not specified how long it will continue to accept electronic signatures.

Which types of electronic signatures does CIPO accept?

Due to the COVID-19 pandemic, CIPO is temporarily accepting the following types of electronic signatures:

• Facsimile signatures (images of a signature submitted by facsimile)
• Text string signatures (also known as s signatures (Ex: /JohnDoe/))
• Font type signatures
• Digital signatures that are an electronic capture of a handwritten signature (such as DocuSign)

Are Electronically Signed Assignment Documents Legally Valid?

In addition to the question of whether CIPO will accept electronic signatures, there is the further question of whether an electronically signed assignment legally effects the transfer of patent rights. This will depend on the jurisdiction of the assignment. If the assignment is governed by foreign law, then the legal validity of the electronically signed assignment document will depend on the law in that foreign jurisdiction.In this case, neither the Patent Act nor the Patent Rules (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

In Canada, there are separate federal and provincial regimes for electronic signatures. The federal regime applies to the Patent Act (R.S.C., 1985, c. P-4), since it is a federal statute. Part II of the Personal Information Protection and Electronic Documents Act (S.C. 2000, c. 5) (PIPEDA) deals with electronic signatures under the federal regime. If a federal statute requires a signature on a document, then that signature must be handwritten, unless the federal statute in question appears in Schedules 2 or 3 of PIPEDA. Very few federal statutes appear in these Schedules. As a result, the federal regime under PIPEDA has limited applicability. In particular, the Patent Act is not listed in the Schedules. When a federal statute requires a signature on a document and does not appear in Schedules 2 or 3 of PIPEDA, you can also find permission to use an electronic signature in the federal statute itself, in related regulations, or in case law.

In this case, neither the Patent Act nor the Patent Rules (SOR/2019-251) requires assignment documents to be signed. There is therefore no current requirement for assignment documents governed by Canadian law to use handwritten signatures. Nonetheless, given the temporary nature of existing procedures, and potentially complex jurisdictional issues, the legal validity of electronic signatures on any particular document deserves careful consideration. Please connect with your Gowling WLG IP professional for more information.

Read the original article on GowlingWLG.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a patent application or after the patent is granted, the owner of the patent may:

• Transfer ownership to another entity or party through an "assignment;" or
• Retain ownership but change their name.

The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Assignment Center

Use Assignment Center to file a Patent Assignment Recordation Cover Sheet and attach the supporting legal documentation as a black-and-white TIFF or PDF file. You may email questions about filing patent assignments to [email protected] .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

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The Canadian Intellectual Property Office (CIPO) is a special operating agency of Innovation, Science and Economic Development Canada . We deliver intellectual property (IP) services in Canada and educate Canadians on how to use IP more effectively.

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Service interruption – Industrial Design E-Filing – (2021-03-13)

Service interruption – Payment of industrial design maintenance fees – (2018-11-06)

Service interruption – (date)

Unavailability of Industrial Design Online Services – (2018-01-19)

Service interruption – Copyright  e-commerce applications – ( 2023-12-31 to 2024-01-01 )

Service interruption – Copyright online application page – (July 30-31, 2013)

Service interruption – Canadian Copyrights Database – (2018-05-12)

(Application) unavailable due to technical difficulties

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• Patent fees

Fees associated with filing patent applications in Canada as well as other patent fees are available in the fee calculator .

• Term for filing a patent application in Canada

The term for filing a patent application in Canada claiming conventional priority is 12 months from the priority date. Restoration of the right of priority is possible within 2 months from the missed deadline, provided that the filing date of the pending application is on or after 30 October 2019. Request for restoration must be accompanied by a statement that the failure to file within 12-month priority period was unintentional.

• Filing requirements in Canada

Canadian patent applications may be filed either in English or French, but the language of filing must be consistent throughout the application. To obtain the filing date, the description may be provided in any language, however, it is necessary to submit the translation into English or French within 2 months from the corresponding notice. 

To obtain a filing date it is necessary to provide the Canadian Patent Office with: - a request to grant a patent; - name and address of the applicant; - document that appears to be a description in any language; - signed small entity declaration, if applicable.

A certified copy of the Priority Document must be filed by the later of 16 months from the earliest priority date or 4 months after the filing date in Canada, or the priority application must be made available in a digital library and the Canadian Intellectual Property Office must be informed of its availability by the aforementioned deadlines. Translation of the priority application is not required but may be requested by the Office.

No Power of Attorney is required when filing a patent application in Canada.

If the applicant is the inventor, the application must contain a statement to that effect. If the applicant is not the inventor, the application should include a statement indicating the name and address of the inventor and either a declaration that the applicant is the legal representative of the inventor or a declaration as to the applicant’s entitlement to apply for and be granted a patent.

• Examination of a Canadian patent application

Patent applications in Canada undergo formal and substantive examinations. The substantive examination must be requested within four years from the filing date in Canada. There is no prescribed form for the examination request. It is also possible to request an accelerated examination under  PPH .

Once the examination is started, an examiner can send up to three reports in total. Then, after the third report, the applicant should request continued examination. Two more reports can be issued during the continued examination. The applicant must repeat the process and pay the fee for further reports in case of issuance thereof. The number of requests to be filed for continued examination has no limit. If the examiner and applicant cannot reach an agreement, the examiner may issue a Final Action to reject the application. The applicant can respond with arguments and amendments, but if the examiner finds these insufficient, a Summary of Reasons for rejection will be issued, and the application will be referred to the Patent Appeal Board for review.

• Novelty grace period

In order to preserve novelty in the invention, a patent application in Canada must be filed within 12 months of the earliest public disclosure of the invention that was made by the applicant or by another person who obtained information on the invention directly or indirectly from the applicant. Once the 12-month grace period ends, the invention becomes public domain in Canada.

• Grant, validity term and maintenance fees

A grant fee for patent registration in Canada is due within four months from the Notice of Allowance. Patents in Canada are in force for twenty years from the filing date. Maintenance fees are paid in advance, on or before each anniversary of the filing date, starting with the second anniversary. Late payment is possible within 2 months from an official notice or 6 months after the due date, whichever is later, by paying a corresponding late payment fee.

• Duration of registration procedure

The average processing time for patent registration procedure in Canada is 2 years from the date of the examination request.

• Utility Model

Utility model protection is not available under the Canadian legislation.

• Representation by a patent attorney

For patent prosecution in Canada, a patent agent must be appointed if the applicant is not the inventor, if there are multiple applicants and not all are inventors, or if a transfer of application rights has been recorded at the Canadian Intellectual Property Office.

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The information was verified by NEXUS LAW GROUP LLP on 02.05.2024 Please contact us if the above information is not in conformity with Canadian IP Laws