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1 of 9 © 2016-2020 ATMAC Patent Services Ltd. All Rights Reserved ATMAC Patent Services Ltd. 1000 8th Avenue SW, Suite 550 Calgary, Alberta, T2P 3M7 Canada Phone: +1 (403) 640-7737 March 20, 2020 Email: [email protected] Web: atmac.ca WHITE PAPER: INTRODUCTION TO PATENTING IN CANADA FOR PERSONS FAMILIAR WITH THE US PATENT SYSTEM Although the Canadian patent regime has many similarities with that of its southern neighbor, it can be helpful to understand where the two countries differ. This white paper explains several key differences and provides tips for persons already familiar with patenting in the United States to maximize effectiveness when filing and prosecuting applications in Canada. Overview - Key differences between Canadian and US patent systems Canada United States Grace period 1-year from Canadian filing date 1-year from effective filing date Examination Examination fees only required Examination fees required at filing when requesting examination and and additional fees required to defer can be deferred for 4 years (or 5 examination years for applications before Oct. 30, 2019) Prosecution Unlimited Office actions and Typically 2 nd Office action will be with Examiner amendments if Examiner feels made “final” and then applicant will prosecution is being advanced need to pay RCE fees to continue Obviousness Can only be based on prior Can be based on any prior application rejections applications that were published and filed in the US regardless of therefore available to the inventor publication date Continuing Divisional applications only Divisional, continuation, and applications continuation -in -part applications Claims fees None Extra claims fees required for claims in excess of 20, independent claims in excess of 3 , multi dependencies Reinstatement Reinstatement by right is possible Reinstatement only possible if the after within one-year of abandonment for abandonment and delay in requesting abandonment most reasons, a showing of due care reinstatement were unintentional is only required for reinstatement due to missed maintenance fees or missed request for examination Maintenance Annual maintenance fees required Maintenance fees required only for fees starting on the 2 nd anniversary of the issued patents by 4, 8, and 12 years filing date after patent issue date 1 of 9 © 2016-2020 ATMAC Patent Services Ltd. All Rights Reserved PCT national 30 months from the earliest priority 30 months from the earliest priority entry deadline date for on time entry date 42 months from the earliest priority date with the mere payment of an additional $200 CAD late fee for PCT applications with a filing date before Oct. 30, 2019 and with an additional statement that the failure was unintentional for applications with a filing date on or after Oct. 30, 2019 Small entity Fifty (50) employees Five -hundred (500) employees 2 of 9 © 2016-2020 ATMAC Patent Services Ltd. All Rights Reserved Grace period – 1 year from Canadian filing date, not priority date Canadian patent law permits inventors to publicly disclose their invention up to one year prior to filing for a patent in Canada. Any public disclosures by the inventor, or by any other person who obtained knowledge either directly or indirectly from the inventor, cannot be used to reject a Canadian patent application under anticipation or obviousness as long as the public disclosure was within one year of the Canadian application’s filing date . PCT international patent applications are considered to be Canadian applications if the national phase is entered in Canada. Although a Canadian patent application (or PCT application) may also benefit from a priority claim under the Paris convention back to one or more earlier filed applications in other countries, the grace period protecting against self-disclosure in Canada does not benefit from Paris priority. This differs from the grace period in the United States, which does benefit from Paris priority because the US grace period extends backward one year from the effective filing date of the US application (i.e., the earliest priority date). Practice tip – To take advantage of the grace period in Canada, make sure to get the Canadian patent application (or the PCT international application) filed within one (1) year of the earliest public disclosure regardless of any additional time the Paris priority period would otherwise allow. Timeline example - Canadian app must be filed within 1-year of earliest public disclosure 3 of 9 © 2016-2020 ATMAC Patent Services Ltd. All Rights Reserved Examination – only upon request The Canadian Intellectual Property Office (CIPO) will only examine a patent application in Canada in response to a specific request for examination. The examination fee is payable upon request, and the request can be deferred up to four (4) years from the Canadian application’s filing date for applications filed on or after Oct. 30, 2019 and for up to five (5) years for applications filed prior to Oct. 30, 2019. This differs from US practice where US provisional applications only preserve rights for one (1) year, and examination of US non-provisional applications is automatic and the examination fees are due upon filing or national entry into the US. An applicant that desires to quickly obtain an issued patent in Canada should request examination and pay the examination fees at the time of filing or national entry. An applicant that desires to preserve their rights in Canada while minimizing costs may simply file or enter the national stage in Canada without requesting examination. When deferring examination until later, it is important to understand that patents in Canada expire twenty years after the Canadian filing date so any delay in requesting examination will also delay the beginning of the enforceable period of any patent issued on the application. However, for many applicants, delaying the issuance of the patent is a worthwhile trade-off to keep initial costs low while the applicant works towards getting allowance in the United States and/or other countries. Once allowance is reached in other countries, the Canadian application can be amended to add in the claims that have been allowed in the other countries, and to request and pay for examination. Practice tip – For applicants that are only planning to file a patent application in the United States, consider also filing a corresponding application in Canada without requesting examination. Very little initial investment is required to preserve patent rights in Canada. Prosecution with Examiner – unlimited Office actions, typical four (4) months for reply During the examination phase of a Canadian patent application, the Examiner will mail reports requisitioning the applicant to make amendments and/or arguments to overcome any problems. Unlike in the United States where second Office actions are typically labelled as “final” rejections, final rejections in Canada are rare. Canadian Examiners will continue to send out new reports and permit amendments / arguments to be made at no cost as long as the Examiner feels progress toward allowance is being made. Only in the event of a total impasse or a specific request by the applicant will a final rejection be made by a Canadian Examiner. In addition to the absence of anything equivalent to a request for continued examination (RCE) and the associated RCE fees, Canadian Office actions will typically set forth a four (4) month period for reply. Extension of time is possible to use the full six month period; however it must be requested before the original four month period for reply expires. This differs from the US where the applicant can miss the shortened 3-month response deadline and then simply pay extension of time fees to make a reply to an Office action at the end of the six-month statutory reply period. 4 of 9 © 2016-2020 ATMAC Patent Services Ltd. All Rights Reserved Obviousness rejections – only based on published references In Canada, Examiners are not permitted to make obviousness rejections based on secret references that were not published at the time of the effective date of the claim under examination. In other words, as long as there is at least one specific difference in the claimed subject matter with the prior art, the Examiner can only allege the difference would have been obvious in view of published applications that were available to the inventor. This differs from US law where an Examiner can base obviousness rejections on so called “secret” prior art references that were confidential and not available to the inventor before the inventor filed the patent application. Because of these legal differences, any time an obviousness rejection is made in the United States based on references that only qualify as prior art under pre-AIA 35 U.S.C. 102(e) or post-AIA 35 U.S.C. 102(a)(2), it will not be possible for the Canadian Examiner to apply the same rejection in Canada. Combined with the fact that there are not as many patent applications filed in Canada to begin with (meaning less chance of a pure anticipation rejection based on secret prior art, which, like the US, is permissible in Canada), it is often possible to secure patent protection in Canada on claims broader in scope than what the applicant can get allowed in the US. Practice tip – If an obviousness rejection is made in the United States based on references that only qualify as prior art under pre-AIA 35 U.S.C. 102(e) or post-AIA 35 U.S.C. 102(a)(2), consider presenting the same claims in Canada as they may be allowable without any amendment or argument. Continuing applications – must be a true “divisional” There are two types of patent applications in Canada: regular patent applications (which include PCT applications that have entered the national phase in Canada), and divisional applications (which have the same description and figures as their parent application but claim a different invention).
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