Canadian Patent Law Pointers

The following is a series of pointers to frequently asked questions for foreign agents and companies seeking to register or protect their trademarks in Canada.

Assignments of Patent Applications or Registrations

It is possible to assign a patent application or registration in Canada and the assignment can be recorded in the Canadian Intellectual Property Office. The current turnaround time for assignment recordals in the Canadian Intellectual Property Office is approximately three months.

Continuation-in-part Applications

There is no CIP mechanism as such in Canada.  It is possible to claim internal priority within Canada within 12 months of the date of filing of the initial application to which priority is to be claimed.

Convention Priority Requirements

It is possible to claim Paris Convention priority in Canada, within the 12 month period following the filing of the home application.

Entity Status

Section 2 of the Patent Rules provides that “small entity” means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees, or has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity that employs 50 or fewer employees or that is a university, and has knowledge of any subsequent transfer or license of, or of any subsisting contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees.

Internal priority

Priority can be claimed within Canada to a previously filed complete or incomplete Canadian application for up to 12 months from the earliest date of filing claimed.

Marking

There are no mandatory patent marking requirements in Canada.

National Phase Entry of PCT Applications

It is possible to make a late national phase entry of a PCT application in Canada up to 12 months after the 30 month deadline.  This is possible by reinstating the application which is deemed to be abandoned as of the 30 month national phase entry deadline.  As such, it is possible to enter the national phase in Canada up to 42 months from the priority date claimed in the PCT application.

Provisional Applications

It is possible to file an incomplete application in Canada which consists of, at a bare minimum, the filing fee, description of the invention without claims or abstract, and an indication that the grant of a Canadian patent is sought.  There is then a period of 15 months within which the application can be completed.

Public Disclosure

There is a 12 month public disclosure grace period granted by Canadian legislation with respect to inventor-derived public disclosures of the invention.  It is possible to file a valid patent application in Canada at any time up to 12 months following the first such disclosure of the invention in the world.

Re-examination

At any time after the grant of a patent, anyone, including the patentee, can initiate a re­examination of an application.  Re-examination is limited to the consideration of prior art which was publicly available.

Term

The term of a patent which was granted from an application having been filed before October 1, 1989, is 17 years from the date of grant of the patent.  The term of any patent issued on a patent application filed after October 1, 1989 is 20 years from the Canadian filing date.