Filing a Request for Examination of a Canadian Patent
Posted On February 26, 2019
Filing a patent application in Canada doesn’t automatically entitle you to an examination. An examiner will not review your application, communicate with you or grant your patent until a Request for Examination is filed and the appropriate fee is paid.
In this post we’ll cover:
Submitting a Request for Examination of a patent in Canada;
The expected timing of responses from the Canadian Patent Office;
Advice on when to request a patent examination; and,
Deadlines and the risk of abandonment of your patent application.
Submitting a request for patent examination in Canada
The Canadian Intellectual Property Office (CIPO) is a Special Operating Agency of Industry Canada that is charged with administering the Canadian Patent Act. The examination processes they implement are used to determine whether your patent application is in condition for allowance and eventual patent grant. After a Request for Examination is filed, CIPO reviews your patent application for compliance with formal requirements and conducts a search to find the patents or other published documents that are closest to your invention. CIPO then evaluates your invention against the following criteria:
Novelty—Is your idea the first of its kind in the world?
Utility—Does your invention provides a useful result?
Obviousness—would a person of ordinary skill arrive at your invention by reading other documents?
Submission of the examination request can be made by the attorney or agent of record anytime within five years of the Canadian filing date. Until a Request for Examination is filed, no examiner will review or address specific issues relating to your patent application
When is the best time to request examination?
To get the application granted into a patent as quickly as possible, some applicants request an examination at the same time they file. Canadian regulations also allow for the submission of voluntary amendments before or after the request for examination has been filed. In circumstances where the patent has been examined in another country, the Patent Prosecution Highwaymay be used to fast track the Canadian examination process. If the patent has not been examined previously, we typically advise clients to wait the maximum amount of time, up to five years, to provide enough time to pursue all possible claim types in other countries connected with your commercial activities. In cases where a Canadian patent grant is desired more quickly, accelerated examination can be obtained upon payment of additional fees. This typically results in a first office action within about six months.
Canadian patent law differs from the US in that there is no continuation or continuation-in-part practice. Although filing a divisional application is permitted in response to a unity of invention objection, voluntary divisional applications are typically objected to for obviousness-type double patenting. Since there is no terminal disclaimer practice in Canada, these objections effectively prevent the filing of voluntary divisional applications in most circumstances. As a result, applicants must include all desired claims within the parent application.
CIPO response expectations
The examination process typically results in the first Office Action approximately 24-months from the formal request.
Disclosure of Prior Art
Although the Canadian courts have affirmed that applicants have a duty to transact business with the Patent Office in good faith, there is no statutory duty of disclosure in Canadian patent law. Although it is not a requirement to submit prior art to the Patent Office, if an applicant desires certain art to be considered by the Examiner during examination, then it can be submitted. Due to recent changes in the Canadian Patent Act, a limited form of file wrapper estoppel has now been adopted. It remains to be seen whether this will lead to an increase in submission of prior art to CIPO in order to have it considered during substantive examination.
The importance of adhering to CIPO deadlines
To avoid abandonment of the application by CIPO, all activities, once initiated must follow strict timelines outlined by the examiner. Therefore, close attention to details and schedules once the request for examination is filed is a must. Examiners typically set a response period of six months from the mailing date of an examiner’s requisition (office action), although this is sometimes reduced to four months by certain examiners. In this case, extensions of time are available to utilize the full six months available under Canadian law. Failure to reply within the requisite time will result in abandonment of the application. An application can be re-instated within one year of the date of abandonment by payment of a re-instatement fee and providing the missed item that caused the abandonment, such as a missed response to an examiner’s requisition.
There is no set number of examiner’s requisitions that are permitted during Canadian patent prosecution and, as long as progress is being made towards allowance of the case, an Examiner will permit a relatively large number of iterations to take place. However, once it becomes clear that the positions of the applicant and examiner are too far apart for allowance, the examiner will issue a requisition threatening final and then a final action. Upon receipt of a final action, the applicant can file a divisional application, file an appeal or abandon the case.
Amendments After Allowance
Once a patent application is allowed, prosecution of the case stops and no further amendments are permitted. A final fee is due to be paid within six months of receipt of the Notice of Allowance. If further voluntary amendment of the case is required, an applicant can choose to allow the case to become abandoned by failure to pay the final fee, which will re-open prosecution of the case.
There are many unique features of Canadian patent law that can be utilized to maximize protection for your inventions. A Registered Canadian Patent Agent can help to determine an appropriate strategy to take full advantage of all available procedures to achieve your commercial objectives with a particular case. Choose a patent agent that can help you work through the various options to arrive at the best overall approach for your particular circumstances.