Recent Changes In Canadian Patent Practice

An amended Canadian Patent Act, together with entirely new Patent Rules came into force on October 1, 1996. Some of the more notable changes to practice resulting from the amended Act and new Rules are outlined below.

Filing a Patent Application
Completing a Patent Application
Requesting Priority
Paying Maintenance Fees
Requesting Examination of a Application
Abandonment and Reinstatement

FILING A PATENT APPLICATION

In order to receive an official filing date in Canada claims are no longer required. However, the items listed below must be submitted to the Canadian Intellectual Property Office.

• a written statement that a patent is sought;
  
  
• a document in either English or French describing an invention;
  
  
• the name of the applicant;
  
  
• the address of the applicant or the applicant's patent agent;
  
  
• the application fee, which is $200 for a small entity and $400 for a large entity. (A small entity is an individual applicant or an enterprise with 50 or fewer employees, or a university).

It is important to note that the foregoing submission is the minimum requirement for receiving a filing date, and is far from constituting a complete application.

The requirements for a complete application are set out in the next section on "Completing a Patent Application".

It is in the applicant's best interest to file as full a description of the invention and as complete an application as possible right at the outset.

A description of an invention is not a statement of what the idea of the invention is. Simple statements of the results or the benefits of an invention are not in themselves descriptions of an invention.

A description describes how the invention works. It describes the parts, how the parts interconnect, and the way in which the invention works. For processes, a description describes each step of the process.

If the filed application does not contain a proper description of an invention, a filing date will not be accorded and the papers will be returned to the applicant along with a refund of the filing fee and a brochure explaining the filing requirements.

Applicants should note that these filing requirements do not constitute a regime of filing provisional applications as presently exists in the United States.

COMPLETING A PATENTAPPLICATION

It should be carefully noted that no new subject matter can be added to the application. New subject matter is anything that cannot reasonably be inferred from the original specification (description and claims) or drawings. New features, further developments, more precise descriptions, and more general descriptions of the invention may all be considered new subject matter.

Any of the items required for a complete application and not supplied at the time of filing may be submitted, without charge, within 15 months after the priority date (see section on Requesting Priority for an explanation of a priority date), or the filing date if there is no priority date.

A complete patent application further includes:

• properly presented documents to ensure good reproduction (good quality white paper 21.6 cm x 27.9 cm or 21 cm x 29.7 cm (A4 format), no creases, no erasures in the text;
  
  
• margins on description pages are 2 cm top, bottom and right and 2.5 cm left; margins on drawing pages are 2,5 cm top and left, 1.5 cm right, 1 cm bottom);
  
  
• a formal petition;
  
  
• an abstract of the invention (a concise summary (up to 150 words) of the technical problem, the gist of the solution and the principal uses of the invention);
  
  
• a claim or claims to the invention (clear, concisely and numbered consecutively in Arabic numerals);
  
  
• any drawing mentioned in the description (well-defined lines, simple and clear, numbered consecutively, clear lettering not less than 0.32 cm tall; reference characters must be consistent throughout the drawings and also mentioned in the description);
  
  
• paper and computer-readable copies of amino acid or nucleotide sequence listings if applicable;
  
  
• the appointment of a patent agent or representative when required.

In cases of incomplete applications, the Patent Office will inform the applicant in writing, as soon as possible of what is required to complete the application process.This letter will also indicate that the applicant has up to 15 months to complete the application without having to pay any additional fee.

After 15 months, the Office will send a notice requiring completion within three months after the notice or 12 months after the filing date. Completing an application at this stage requires the payment of a $200 completion fee.

REQUESTING PRIORITY

An applicant may use the filing date of a previously regularly filed application as the effective filing date of subject matter in a later filed Canadian application provided that:

1. The previously filed application is from Canada or from a country recognized by Canada through treaty or convention for the purpose of priority claims.
   
   
2. The previously filed application contains the subject matter found in the later filed application.
   
   
3. The later filed application is filed within 12 months of the previously filed application.

The filing date of the previously filed application is called the "priority date" of the later filed application and is especially pertinent for the purpose of determining which applicant was the first to file for the same invention.

For any application filed in Canada, priority may be requested based on one or more applications filed previously by the applicant in other countries or in Canada. In keeping with international conventions, priority claiming is permitted if an application is filed in Canada within 12 months of the filing of any previous application in a convention country. The later application must contain subject matter found in the earlier one, and the priority dates(s) only apply to that subject matter that is also found in the earlier application(s).

Priority may be requested in the petition or in a separate document. The Office will consider a request for priority only if it is made within four months after an application is filed.

PAYING MAINTENANCE FEES

Maintenance fees must be paid on both pending applications and issued patents in order to keep them in good standing.

• The fee to maintain an application or a patent, as the case may be, is due before the start of the one-year period covered by the fee.
  
  
• Maintenance fees can be paid for any number of years in advance.
  
  
• Failure to pay an application maintenance fee by the due date will result in the immediate abandonment of the application. The applicant may reinstate the application within 12 months from the date of abandonment by paying the required maintenance fee and a $200 reinstatement fee.
  
  
• If a fee to maintain a patent is not paid before the start of a scheduled period, Canadian practice allows a one-year grace period within which the fee and a $200 surcharge for late payment may be paid.
  
  
• Failure to pay the required patent maintenance fee before the expiry of the one-year grace period will cause a patent to lapse with no possibility of revival.
  
  
• Time limits for the payment of maintenance fees cannot be extended.

The first maintenance fee is due on the second anniversary of the filing date of the application and on every subsequent anniversary until the 19th.

REQUESTING EXAMINATION OF AN APPLICATION

A patent application filed in Canada after October 1, 1989, will be examined only if examination is formally requested. The fee for requesting examination is $400 for a small entity and $800 for a large entity; anyone may request examination of an application. However, only $100 for a small entity and $200 for a large entity, if the application has been the subject of an international search by the Commissioner. In the United States, by contrast, all patent applications are examined and no request for examination is required.

For applications filed between October 1, 1989, and September 30, 1996, examination may still be requested at any time before the expiry of seven years from the filing date.

For applications filed on or after October 1, 1996, examination may be requested at any time before the expiry of five years from the filing date.

ABANDONMENT AND REINSTATEMENT

A pending application can lose its good standing and become abandoned for the following reasons:

• not replying in good faith to an examiner's requisition within the time frame specified;
  
  
• not completing the application within three months of the notice requiring completion;
  
  
• not paying the maintenance fees on time;
  
  
• not requesting examination and paying the fee within five years of filing the application or seven years as the case may be;
  
  
• within the time allotted by the Commissioner if the Commissioner requires that the applicant request examination;
  
  
• not paying the final fees within six months of the notice of allowance of the application;
  
  
• other prescribed circumstances

An abandoned application can be reinstated within one year of the date of abandonment by:

• making a request for reinstatement;
  
  
• taking the action that should have been taken in order to avoid abandonment in the original situation;
  
  
• paying a $200 reinstatement fee.

ADVISORY NOTE: In all instances, please refer to the Patent Act and Rules to get a complete picture of the official requirements associated with the activities described above, as well as other patent procedures.

As well, the Manual of Patent Office Practice (MOPOP) should be consulted by anyone interested in the prosecution of patent applications before the Patent Office.