Canadian Patents

Filing the Application

Reporting Office Actions

Responding to an Office Action

Filing Declaration of Entitlement or Small Entity

   Declaration

Requesting Examination

Accelerated Examination

Maintenance Fees Years 2 - 4

Our Fee

  CDN$ 

  $650*

  $200*

  $275+

  $200

  $200

  $250*

  $150*

 Gov't Fee Large/Small

$400/$200

     ---

     ---

     ---

$800/$400

   $500

$100/$50

All amounts in Canadian dollars

*Volume discounts available

Patentable Subject Matter - Key Differences from US

- Restricted to 'statutory grounds'

- Restrictive with respect to:

     - life forms

     - business process patents

     - 'software' patents

     - methods of medical treatment

Information and Documents Required for Filing

- Name and address of the Applicant

- The Application in PCT form

- Declaration of Entitlement

Canadian Patent Practice

- All applicants must designate a domestic registered Canadian Patent agent. We provide a representation service for non-Canadians who wish to retain primary responsibility for Canadian applications.

- Widespread use of grace periods - relatively easy to recover from missed deadlines upon payment of re-instatement fees.

- Government fees lower for all “small entities”.

- Little correspondence with CIPO can currently be done electronically, or by fax.

Maintenance Fees

- Maintenance fees payable annually

- First is due 24 months from international filing date

- Prior to grant, must be paid by agent

- After grant, can be paid by anyone

Examination

- Commences when requested by applicant

- In general, claims allowed tend to be broader that before USPTO

Deferred Examination

- Up to 5 years from filing date

- No additional cost

Accelerated Examination

Upon request - assertion of 'commercial prejudice' sufficient, evidence not required.

Patent Prosecution Highway

- Useful for accelerated issuance of a Canadian patent based on allowed US claims

- When coupled with accelerated examination in Canada, useful tool for accelerated issuance of a US patent based on allowed CDN claims

Declaration of Entitlement

- Due within 15 months of Priority Date

- If applicant is not the inventor, sets out the basis upon which applicant is entitled to file patent in lieu of the inventor

Small entity status criteria

- Fewer than 50 employees or university

- Must not be under 'control' of large entity, or have transferred the invention by licens to large entity

- Risk if claimed incorrectly is invalidity of patent