Canadian Patent Prosecution Tips for the U.S. Patent Practitioner

by Bennett Jones LLP
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[author: Christopher D. Heer]

While Canadian patent prosecution is similar to U.S. patent prosecution in many respects, there are also some differences to be aware of as an instructing agent in order to better prosecute Canadian cases.

Rapid Examination Is More Easily Obtained in Canada

In Canada, advanced examination may be obtained by opening the application to public inspection, paying the required examination and advanced examination fees and filing a statement that the failure to advance the application is likely to prejudice the applicant’s rights. No affidavit or other evidence or documentation is needed. Once requested, advanced examination will commence within three to six months and further office actions will be issued at an accelerated pace as well.

Alternatively, Examination May Be Delayed

If speed is not paramount, it is possible to proceed slowly in Canada and reduce prosecution overlap with other jurisdictions. Whereas examination of an application in the U.S. occurs after filing without further action by the applicant, examination of a patent application in Canada must be explicitly requested within 5 years of the filing date and accompanied by payment of a government examination fee. This enables a strategy for reducing global prosecution costs by delaying an examination request in Canada until claims have been allowed in a corresponding application in the U.S. or elsewhere.

Pursue As Many Claims as You Want at No Extra Cost

There are no claim surcharges in Canada of any kind. However, there is a surcharge for patent applications exceeding 100 pages, which becomes payable after the application has been allowed.

What You Say Won’t Hurt You in Claim Construction

In Canada, the prosecution history of a patent cannot be used for the purpose of construing patent claims in litigation, although it may be admissible for other purposes.

No Information Disclosure Statement Required

In Canada, the applicant is only required to identify or file prior art when the Examiner requests that the applicant identify the prior art cited in corresponding patent applications in other jurisdictions. There is no positive obligation to identify or file all known material prior art, although the applicant may voluntarily file prior art to ensure that it is explicitly entered on record.

No On-sale Bar, But an Independent Third Party Filing During the Grace Period May Preclude Rights

There is no on-sale bar in Canada. Any prior sale has to constitute an enabling disclosure of the subject-matter of the invention in order to anticipate a patent claim.

While Canada also has a one-year grace period for enabling disclosures which runs back from the Canadian filing date (as opposed to the priority date), the one-year grace period in Canada only protects the applicant against other applications which are based on the applicant’s prior disclosure. If an independent third party files an application during the grace period which is not based on information received directly or indirectly from the applicant, it will predate the applicant’s filing and may preclude the applicant from obtaining patent rights.

Methods of Medical Treatment and Higher Life Forms Are Not Patentable Subject-Matter

Methods of medical treatment are not patentable in Canada. However, this is more a requirement of form than substance, as similarly-worded “use” claims are allowable in Canada.

Higher life forms, generally defined as multicellular life forms, are also not patentable in Canada. This includes animals at any stage of development from fertilized eggs and totipotent stem cells (which have the inherent ability to develop into animals) onwards, as well as plants, seeds and mushrooms. Lower life forms, generally defined as unicellular life forms, are patentable in Canada. Lower life forms include microscopic algae, unicellular fungi, bacteria, protozoa, viruses, transformed cell lines, hybridomas, and embryonic, pluripotent and multipotent stem cells.

Differences in Continuation and Divisional Application Practice

There is no equivalent to a continuation-in-part application in Canada. The applicant must file a new patent application in order to claim the new subject-matter.

Moreover, due to double patenting laws in Canada, divisional applications are rarely employed other than those filed in response to plurality of invention rejections from the Patent Office.

Annual Maintenance Fees/Reinstatement Period

There are annual maintenance fees payable in an application or issued patent from the second anniversary of the Canadian filing date to the end of the patent term. Maintenance fees for an application in Canada may only be validly paid by the agent of record.

Should a fee be missed, or an application go abandoned for any other reason, such as failing to timely respond to an office action, the application may be reinstated within 12 months upon making a request for reinstatement, paying a reinstatement fee and taking the action required which led to the abandonment. No explanation as to how the abandonment was unintentional or unavoidable is required.

Incorporations by Reference Are Not Permitted

Incorporations by reference in the patent specification are not permitted in Canada. Prior applications, patents and other documents may nevertheless be referred to in the specification, if they are public and sufficient identification of the public document is provided.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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