Canadian Patent Prosecution for Foreign Associates
This page is intended for foreign patent agents and attorneys seeking a Canadian associate for patent prosecution matters before the Canadian Intellectual Property Office. We welcome inquiries from foreign firms and act as Canadian associate counsel on an ongoing basis for a number of international IP practices.
The Canadian Patent System — Key Points for Foreign Associates
Governing legislation: The Patent Act, R.S.C. 1985, c. P-4, and the Patent Rules, SOR/2019-251 (the “New Rules,” in force October 30, 2019). Examining authority: The Canadian Intellectual Property Office (CIPO), Patent Branch, Ottawa. Official languages: English and French. Applications may be filed in either language. Patent term: 20 years from the Canadian filing date, or from the international filing date for PCT national phase entries. Maintenance fees are payable to keep the application and patent in good standing.
Filing Routes
Direct national filing: A Canadian patent application may be filed directly at CIPO at any time, claiming priority from a foreign application under the Paris Convention within 12 months of the foreign priority date.
PCT national phase entry: Canada is a PCT member state. National phase entry in Canada must be completed within 30 months of the earliest priority date. No express entry is available — the 30-month deadline is fixed. A request for examination must be filed, and the applicable fee paid, within 4 years of the earliest priority date.
Key Procedural Points
Examination: Examination is not automatic. A request for examination must be filed within 4 years of the Canadian filing date (or PCT international filing date). Failure to request examination results in deemed abandonment.
Maintenance fees: Annual maintenance fees are payable on the anniversary of the filing date, beginning on the second anniversary. Fees are payable for both pending applications and granted patents. A 6-month late payment window is available on payment of a late fee, but reliance on this window as a matter of practice is not recommended.
Entity status: Canadian patent law distinguishes between small entity and standard entity status. Small entity status is available to independent inventors, universities, and businesses with fewer than 50 employees (at the time of each fee payment). Small entity fees are approximately one-half of standard entity fees. Entity status must be assessed at the time of each fee payment; a change in status requires adjustment going forward. Misrepresentation of entity status has serious consequences and should be approached carefully.
Grace period: Canada provides a 12-month grace period for an inventor’s own disclosures prior to the Canadian filing date (or PCT international filing date). Disclosures by third parties not derived from the inventor do not benefit from the grace period and may constitute prior art.
Divisional applications: Divisional applications may be filed at any time while the parent application is pending. There is no statutory deadline for filing a divisional beyond the pendency of the parent.
Continuation and continuation-in-part practice: Canada does not have continuation or continuation-in-part practice in the U.S. sense. New subject matter cannot be added to a pending application after filing. Divisional applications are the primary vehicle for pursuing subject matter that was included in but not claimed in the parent application.
Claims: Canadian claims practice broadly follows PCT/EPO conventions. Both independent and dependent claims are used. Method, apparatus, and composition claims are all available. The claim set should be reviewed for Canadian-specific issues prior to filing.
Obviousness: The Canadian obviousness standard is the Windsurfing/Pozzoli four-step approach as applied by the Federal Court of Canada and the Federal Court of Appeal — essentially the same framework used in the United Kingdom. It differs from the U.S. TSM and KSR standards and from the EPO’s problem-and-solution approach.
Double patenting: Canadian law prohibits both same-invention double patenting and obviousness-type double patenting. Terminal disclaimers are not available in Canada as a remedy for obviousness-type double patenting.
Prosecution history estoppel: File wrapper estoppel applies in Canada, though its scope and application continue to be developed by the courts.
Powers of Attorney and Assignments
A power of attorney is not required for prosecution before CIPO — the agent of record acts on instructions from the foreign associate or applicant. Assignments should be recorded at CIPO. An assignment executed outside Canada does not require notarization or legalization for recording purposes, but must identify the parties, the application or patent, and the consideration.
Contacting Us
We are pleased to act as Canadian associate counsel and to provide status reports, cost estimates, and procedural guidance on request. Please direct inquiries to cfurman@furmanip.com.