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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.

Canada, however, permits applicants to wait up to four 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 these related applications are received by the foreign patent offices. It’s not uncommon to receive the same objections in multiple jurisdictions. Thus, if the U.S. patent office cites multiple pieces of prior art against the application and considers that the invention is not novel and/or is “obvious”, there is a good chance a Canadian application will be met with similar objections. An applicant may, on that basis, decide to abandon the application, proactively amend the application, or wait to see whether the objections to the U.S. application may be overcome before investing money and time into its Canadian counterpart. Another motivation to wait to initiate examination in Canada may be to defer the costs of the examination phase for a time. The cost to request examination is (as of 2023) ranges from $100 to $816, depending on characteristics of the application and the applicant. Further, commencing on October 3, 2022, there is a fee of $100 (or $50 if small entity) for each claim in excess of twenty. Subsequent costs are involved in responding to reports issued by the examiner with respect to the application. It’s not uncommon to receive more than one such report. Thus, by waiting to initiate examination, these costs are put off until such time as the applicant has the resources to fund them. Other reasons you may choose to file your application but delay requesting examination include to give yourself time to assess the commercial feasibility and market potential of your invention.

Notably, in what could be viewed as a quirk of Canadian patent procedure, the patent office is empowered to accept requests for examination not only from the applicant for the patent but also from third parties. As long as the request is made in the prescribed manner and accompanied by the required fee, the request for examination may be made by any person.

If a request for examination is not made within four years of the filing date of the application, the Commissioner will send a notice to the applicant and the applicant will be allowed to request examination upon payment of the examination fee and an additional late fee within 2 months of receiving the notice. If no request is made, the application is deemed abandoned. Once a patent application goes abandoned, it is generally possible to reinstate the application, subject to compliance with certain conditions. One of these conditions in the case where an application goes abandoned for failure to request examination is the showing of due care. In other words, the applicant must provide reasons for the failure, and the application will only be reinstated if the patent office considers that the failure occurred in spite of the due care required by the circumstances having been taken. All of this is to say that it’s best to be conscious of the deadline to request examination and not let the application go abandoned for failure to do the same.

In any case, most applications will be published in the Canadians Patents Database 18 months following the earliest priority date or filing date.

When the Canadian Intellectual Property Office (CIPO) receives a compliant 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 a few years. The current expected time from requesting examination to a first action is 20 months.

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

There are currently four ways to obtain advanced examination. A request for advanced examination can be made in respect of an application related to green technology of environmental importance. No additional fee is required to be submitted in this case. A request can also be made where substantially the same set of claims has been found allowable in certain other jurisdictions (i.e., you have a corresponding patent application in one or more of Canada’s Patent Prosecution Highway (PPH) partners) . More generally, advanced examination under a special order is available in situations where examination according to the usual timeline could prejudice the applicant. An additional fee must accompany this request, however, these special orders are routinely granted without a formal declaration or affidavit and could be very helpful for an applicant who wishes to expedite the examination process.

The Canadian Intellectual Property Office also recently launched a pilot project which allows for expedited examination of applications claiming inventions related to medical products and processes supporting the response to COVID-19 at no cost. This avenue for expedited examination is only available to small entities (generally entities that employ 50 or fewer employees or that are universities) and is contingent on the claimed invention having been/being the subject to a Health Canada approval process, for example including but not limited to a Medical Device Licence (MDL), a Medical Device Establishment Licence (MDEL), an authorization under the Interim Order respecting the importation and sale of medical devices for use in relation to COVID-19 or an investigational testing authorization (ITA).

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 as to 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 four months to respond. Once received, the examiner usually requires between five to nine months to consider your response and take further action.

Typically, an examiner's objections focus on the wording of the claims. 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 or inventiveness over a prior disclosure - these are two requirements for patentable inventions. In yet other 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. Objections, however, can often 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.

Although objections are not unusual, receiving and responding to multiple objections can considerably delay the grant of a patent. This is just one of many reasons applicants for patents are urged to work with experienced patent agents to prepare their application. A response prepared and submitted by an experienced intellectual property professional is more likely to satisfactorily address the examiner’s objections and resolve the defects in the application, saving the applicant the time that would have been spent going back and forth with the patent office to accomplish the same.

Once a response to an objection is filed, the examiner will review the arguments and amendments and decide whether the objection has been 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 as described in the amended claims.

Following such a further review, the examiner may decide that the application is allowable, in which case the applicant is notified. Generally, the patent office will then grant a patent upon payment of a final fee, which is, as of 2023, $306 CAD or $153 for small entity for issuance of the patent. Note that as of October 3, 2022, a fee of $6.12 (as of 2023) applies for each page of specification and drawings (excluding pages of a sequence listing) in excess of a hundred pages. Once a patent has been granted, the owner has the exclusive right to practice the invention defined by the claims for 20 years from the filing date, provided that maintenance fees, due at regular intervals, continue to be paid. These maintenance fees begin at $50 for qualifying small-entity applicants, and increase every few years. At the end of a patent’s lifespan, the maintenance fee owed is, as of 2023, $473.65 or $236.83 for small entity.

If the examiner is, however, 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 stands in contrast to the experience of applicants for patents in the United States, where an examiner will often issue a 'final' rejection immediately following the first rejection if not convinced by the arguments or amendments of the applicant. Notably, examination in the United States can continue following a final rejection where the applicant pays the requisite fee and request continued examination of the application.

Where, despite multiple requisitions and responses thereto, 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 and it is submitted 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 transferred 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.

The Patent Appeal Board will then review the application and make a recommendation to the Commissioner of Patents as to whether a patent should be granted. If the applicant requests an oral hearing, the Appeal Board will hear and consider the applicant’s oral submissions related to the application. If no such request is made, the Appeal Board will make a decision solely based on the record before it. 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, an applicant’s only remaining option is to bring the case to the Federal Court to appeal the Commissioner's decision. The deadline for an appeal to the Federal Court is typically six months.

Have further questions particular to your situation? Contact us for a complimentary and confidential initial telephone appointment with a member of our team.