Benefits of Filing a Patent in Canada

Anil BholeExpert Insights, Patents

Canada is one of the world’s wealthiest nations and a member of the Group of Seven. Canada has a thriving technology sector and, as an example, is one of the global leaders of the entertainment software industry. On top of allowing companies to take advantage of this economic environment, Canada’s patent regime also provides significant benefits for companies seeking to obtain patent protection.

Canada’s fee structure means that it is relatively inexpensive to file and prosecute a patent application to issue in Canada. Further, the amount paid in a given year for Canadian maintenance fees are relatively small compared to other jurisdictions such as the U.S..

In the patent application, there is no limit or surcharge on the total number of claims or the number of independent claims that may be included in a patent application. There are also no restrictions or surcharges on the use of multiple dependent claims. This allows an Applicant to maximize the protection afforded by their patent by maximizing both the number of claims and the number of multiple dependent claims.

Canada has a one-year grace period with respect to disclosures directly or indirectly by the Applicant, if such disclosure occurs within a one year prior to the Canadian filing date. Further, Canada has no specific “on-sale” bar like in other jurisdictions. It is possible for an inventive product to be sold but, due to the nature of the invention, if there is no enabling disclosure of the inventive product that reveals the workings of the invention, then there is no disclosure.

With respect to prosecution of the application, Canada generally does not have file wrapper estoppel. If the patent gets litigated, reference to the prosecution history and statements made during prosecution are not permitted for the purpose of construing claims. Thus, Applicants are freer to make assertions in prosecution to get their applications granted. Further, prosecution costs may be lessened as there is no positive obligation on an Applicant to disclose all known material prior art to the Canadian Patent Office, such as in an Information Disclosure Statement. An Applicant is only responsible to respond to a specific requisition from the Canadian Patent Office to identify specified categories of prior art.

The Canadian patent regime also allows a lot of flexibility for Applicants in the timing of prosecution. Examination must be explicitly requested and can be delayed up to 5 years from the filing date. Thus, an Applicant can reduce costs by delaying examination in Canada until claims have been allowed in a corresponding application in another jurisdiction. Generally speaking, Canadian examiners are inclined to allow a Canadian application if a corresponding application has been issued with identical or similar claims (if the subject matter is patentable in Canada). Furthermore, Applicants with PCT applications are allowed to enter the national phase in Canada up to 12 months late, thus up to 42 months after the priority date, upon payment of a late fee.

Conversely, Applicants looking for prompter granting of their applications can take advantage of Canada’s advanced examination procedure. Along with publishing the Application and paying the required fees, advanced examination only requires filing a statement that the failure to advance the application is likely to prejudice the Applicant’s rights. No other evidence or documentation is required.

It is highly valuable to use a Canadian patent firm that is familiar and experienced with the finer points of Canadian prosecution to ensure that the advantages of filing in Canada are fully exploited. BHOLE IP LAW is a boutique IP firm located in downtown Toronto, Canada and practices in all areas of IP including patents, trademarks, industrial designs, copyrights, licensing, domain names and technology transfer. The firm works extensively in the digital innovation space, as well as in biotech and chemical engineering. It is considered a national leader is the emerging areas of machine learning and neural networks, augmented reality hardware and software, and image processing; and further administers portfolios in sectors including energy, water treatment, cryptography, manufacturing processes, and materials. BHOLE IP LAW provides competitive fees and, importantly, takes pride in its responsive and advisory approach. The firm strives to simplify the foreign filing process and build meaningful reciprocal relationships. Please feel free to reach out to any of the professionals at BHOLE IP LAW through the general email info@bholeiplaw to take care of your Canadian IP matters.