Requirements for Filing Patent Applications in Canada
To apply for a patent in Canada, there are certain procedures which you must follow. Failing to do so can cost you money and can even prevent you from obtaining your patent. The following are guidelines for filing a patent application in Canada.
Contents of this article include:
- Filing requirements for receiving a filing date
- Priority concept
- Using the priority concept when filing a patent application in Canada
- Completion of application
- Final Word
Filing requirements for receiving a filing date:
In order to receive a filing date, you must send (addressed to the Commissioner of Patents at the Canadian Intellectual Property Office) CIPO the following:
- an application fee of $150 for small entity, $300 for other entity
- a small entity is an individual, a commercial concern of 50 or fewer employees, or a university
- a written indication, in English or French, that a patent is sought
- a document, in English or French, that describes an invention
- the name of the applicant
- the address of the applicant or of his patent agent
In a complete description you must state how the invention works and how it is made. Each part of the invention and the way in which the parts fit together need to be described. For a process, you should describe each step of the process, and the order of the steps. In short, once the patent is no longer in force, someone must be able to duplicate your invention based solely on the description.
Note: If the document is deemed not to describe an invention in the sense outlined above, the Patent Office will refuse the filing date and return all papers and fees. You will have to re-file the application with a better description, thus receiving a later filing date. Therefore, it is in your best interest to submit as complete a description as possible at the outset.
If you have already filed an application in Canada, or elsewhere, you can file a second application in Canada thus maintaining your original filing date. This date then becomes the priority date of the second application. The priority date applies only to elements common between the two applications.
The original application can be either foreign or Canadian, provided that a foreign application is from a country which has signed an appropriate international convention (this covers most countries in the world). You must file the second application within 12 months of the original in order to keep the right to have priority.
You must request priority to the original application when you file the second application, or within 4 months of filing the second application.
Using the priority concept when filing a patent application in Canada:
Since the formal requirements for receiving a filing date are not as stringent as before, you may now file a description of your invention without everything being in perfect order. You then have 15 months to complete the application with no additional fee (see below for completion requirements). However, when you complete the application you are not allowed to add any substantially new material. This limits your ability to change the application once you have filed it. You can make minor corrections to your application or modify the presentation but you cannot add new material to a poorly drafted application. New material is anything which is not reasonably inferred from the description, claims or drawings. For example, you cannot add new features, further developments, or more precise or general descriptions of the invention to your application.
If you must add new material to an application, you may file a second application which contains all the material in the first plus the material that you want to add. When you file the second application, you can then request priority to the first, as described above.
Remember, you have only 12 months from the filing date of the first application in order to file the second application and still be allowed to request priority to the first. This is less than the 15-month completion period, therefore, you must think about this option well in advance.
If you file a well-drafted and complete application at the outset, you will save yourself much time and effort.
Completion of application:
You have 15 months from the priority date (or filing date, if there is no priority date) to complete the application without having to pay a completion fee. After 15 months, the Office will send you a notice requiring completion of the application before the expiry of the later of the 3-month period after the date of the notice or the 12-month period after the filing date of the application. If the Office must send you a notice, you will also have to pay a completion fee of $200. The completion requirements are:
- adherence to document quality (e.g. typewritten, paper size)
- description in proper form
- biological sequence listings on paper and in computer readable form (if applicable)
- appointment of agent or representative (if applicable)
It is in your best interest to file as complete an application as possible. In this way, potential problems which may jeopardize your right to obtain a patent may be avoided at the beginning of the process. If you require professional help with the patenting process, CIPO can provide you with a list of registered patent agents in your region.
In addition, this document only describes some of the procedures about filing patent applications. To find out more about other procedures which must be followed in order to maintain an application (maintenance fees) and to have an application examined (request for examination), consult the Guide to Patents. The guide is also available by contacting CIPO.
Finally, the preceding information is a guideline to filing patent applications in Canada. The Patent Act and Patent Rules must be consulted to determine the official requirements associated with the patenting process.