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Understanding the Canadian Patent Application Examination Process

The Canadian patent application examination process typically involves a predictable series of events.

Requesting Examination

In many jurisdictions, the patent application examination process begins as soon as a regular patent application is filed.

However, Canada permits applicants to wait up to five years before initiating the examination process. Often, this time allows applicants who have filed related applications in the United States or other jurisdictions to first see how foreign patent offices receive the related applications. Another motivation to wait may be to defer the costs of the examination phase for a time.

In what could be seen as a quirk of the Canadian patent procedure, the patent office is empowered to accept requests for examination from third parties. As long as the request is made in the prescribed manner and accompanied by the necessary fee, the request may be made by any person.

When the Canadian Intellectual Property Office (CIPO) receives a valid request for examination, the office begins the examination process. Generally, applications are examined sequentially in the order in which requests for examination were made. As a result, the time from request to a first action from the patent office can often be several months to two or three years.

However, Canadian regulations permit advanced examination of many applications. Advanced examination condenses the process, and an applicant can typically expect a first action from the patent office within three (3) months.

There are three ways to obtain advanced examination. A request can be made to advance an application related to green technology of environmental importance. A request can also be made where substantially the same set of claims has been found allowable in certain other jurisdictions. More generally, special orders are available in situations where a delay could prejudice the applicant and upon the payment of a fee. Special orders are available more often than may be realized, and could be very helpful for an applicant who wishes to condense the examination process.

Once an application is assigned to an examiner, the examiner reviews the application to confirm that preliminary requirements have been met. The examiner then conducts a search of prior public disclosures and comes to a determination on whether the application is patentable. This determination is then communicated to the applicant via an official letter.

Responding to an Official Letter

Where the examiner determines that an application is not patentable, the examiner will inform the applicant of the application's defects and requisition an amendment or an argument as to why the application is not deficient. Upon receiving such a requisition, an applicant is typically given three to six months to respond.

Typically, an examiner's objections focus on the wording of the claim. In some cases, the examiner may object to the claims as encompassing unpatentable subject matter, such as an abstract theorem or higher life form. In some cases, the examiner may object to the claims as lacking novelty over a prior disclosure. In some cases, the examiner may simply require that the applicant make a few minor changes to correct formal mistakes.

Receiving a requisition can be quite daunting and can make an inexperienced applicant believe that the process is over. However, often objections can be overcome with a few strategic changes to the claims. A typical application is objected to at least once, and often two or three times. In fact, an application that has not been objected to at least once may indicate that the scope of protection defined by the claims is narrower than necessary.

Once a response is filed, the examiner will review the arguments and amendments, and decide whether the objections are overcome. Often, such as where amendments to the claims change the scope of protection, the examiner will conduct an additional search of public disclosures to see if anything can be found which discloses the invention of the amended claims.

Upon such a further review, the examiner may decide that the application is allowable, and would then notify the applicant. Generally, the patent office will then grant a patent upon the payment of an issuance fee. Once a patent has been granted, the owner obtains the exclusive right to practice the invention defined by the claims for 20 years from the filing date, provided that maintenance fees continue to be paid.

However, if the examiner is not convinced that the application is allowable, the examiner will issue another requisition. In Canada, it is the practice of the office to continue correspondence between examiner and applicant as long as it appears that progress is being made. This may be contrasted to the United States, where an examiner will often issue a 'final' rejection as the second rejection if not convinced by the arguments or amendments of the applicant (which actually is not final if you are willing to pay a request for continued examination fee).

However, where the applicant and the examiner cannot agree on an allowable set of claims, the examiner will typically issue a final rejection. A response to a final rejection will only be accepted if the examiner believes the response advances prosecution within the time frame provided for response.

The Appeal Process

If a response to a final rejection is deemed insufficient to resolve the examiner's objections, the application will be moved to the Patent Appeal Board. The applicant will be notified by the Patent Appeal Board that the application is under appeal. Such a notice will typically offer the applicant an opportunity to respond to the notice.

The Patent Appeal Board will then review the application and make a recommendation to the Commissioner of Patents regarding whether a patent should be granted. Following an Appeal Board review, the Commissioner of Patents will either approve the application, provide the applicant with an opportunity to make additional amendments, or reject the application.

If the application is rejected by the Commissioner following a Patent Appeal Board review, the administrative process is at an end. At this point, the next step would be to bring their case to the Federal Court to appeal the Commissioner's decision. The deadline for an appeal to the federal court is typically six months.