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Key Features of Canadian Patent Prosecution for Foreign Associates
Pre-Filing Considerations
One Year Grace Period
Canada has a one-year grace period from the date of an applicant’s enabling disclosure within which a patent application must be filed in order to obtain patent protection. The Canadian Patent Office will not consider disclosures made by the applicant or a person who obtained knowledge from the applicant during the grace period as prior art when assessing the novelty and/or inventiveness of the invention applied-for. The grace period runs back one year from the filing date if no claim to priority based on a previously filed regular application is made. Otherwise, the grace period extends to the priority date.
However, note that the one-year grace period in Canada only protects against other applications which are based on the applicant’s prior disclosure. If a third party files an application during the grace period which is not based on information received directly or indirectly from the applicant, it will pre-date the applicant’s filing and may prevent the applicant from obtaining patent rights.
No On-Sale Bar in Canada
There is no on-sale bar in Canada. Any prior sale must constitute an enabling disclosure of the subject matter of the invention in order to anticipate a patent claim. Thus, if a sale of the invention does not enable a person skilled in the art to make the invention without inventive skill or undue burden, the sale will not anticipate the patent claim.
Patent Drafting Considerations
Incorporations by Reference Are Not Permitted
Incorporations by reference are not permitted in the patent specification in Canada.
Prior applications, patents and other documents may be referred to in the specification if they are public and sufficient identification of the public document is provided without including incorporation by reference language.
No Claim Surcharges
There are no claim surcharges in Canada of any kind.
Excess Page Surcharge
There is a surcharge for patent applications exceeding 100 pages, which becomes payable after the Canadian patent application has been allowed.
Methods of Medical Treatment Are Not Patentable Subject Matter
Methods of medical treatment are not patentable in Canada. However, similarly worded “use” claims are allowable in Canada.
Often the question to be asked when assessing a claim related to medical treatment is whether the claim limits the skill and judgment of a physician. If it does, it is likely not patentable. An example is a claim directed to the use of a compound to treat a disorder in a range of 10mg to 20mg a day. As the claim encompasses the skill and judgment of a physician where that physician must determine the appropriate dose within the range, it is likely to be considered not patentable.
Higher Life Forms Are Not Patentable Subject Matter
Higher life forms are not patentable in Canada. Higher life forms are generally defined as multicellular life forms and include animals at any stage of development from fertilized eggs and totipotent stem cells (which have the inherent ability to develop into animals) onwards, as well as plants, seeds and mushrooms.
In contrast, lower life forms are patentable in Canada. Lower life forms are generally defined as unicellular life forms and include microscopic algae, unicellular fungi, bacteria, protozoa, viruses, transformed cell lines, hybridomas, and embryonic, pluripotent and multipotent stem cells.
Computer-Implemented Inventions Can Be Patentable Subject Matter
Computer-implemented inventions can be patentable subject matter. For a computer-implemented invention to be patentable, it must fall within one of the five categories defined by the Patent Act as an “invention”, namely, art, process, machine, manufacture or composition of matter.
Certain computer related subject matter is not patentable, such as computer programs, data structures and computer-generated signals.
Business Methods Can Be Patentable Subject Matter
Business methods can be patentable subject matter. Canadian jurisprudence does not exclude business methods as patentable subject matter; however, the assessment to determine whether a business method is patentable is somewhat unclear. The business method must have a practical application and should not be the whole invention, rather, only one of a number of essential elements in novel combination.
Patent Prosecution Procedures
Flexible Examination Timing
Examination of a Canadian patent application must be requested within 4 years from the filing date or, in the case of a Canadian national phase entry, 4 years from the international filing date. Strategically, delaying the request for examination might be done to reduce prosecution overlap with other jurisdictions thereby lowering worldwide prosecution costs. Based on current processing times, a first examiner’s report typically issues within 20 months of requesting examination.
Expedited Patent Examination
There are four ways to expedite patent examination in Canada:
- Advanced examination is available for green technologies:
If an applicant’s patent application relates to green technology that which would help to resolve or mitigate environmental impacts or conserve the natural environment or natural resources, you may apply for advanced examination. Once advanced examination request is approved, you can expect the first office action within 3 months. There is no advanced examination fee in this case.
- Advanced examination under a special order:
If an applicant believe that the regular patent process is likely to prejudice his/her rights or third party’s rights, they may request for advanced examination under a special order. To do so, applicants must open the application to public inspection, pay the required examination and advanced examination fees and file a statement that the failure to advance the application is likely to prejudice the applicant’s rights. Once advanced examination is approved, you can expect the first office action within 3 months.
- Accelerated examination under the Patent Prosecution Highway (PPH):
The Canadian Patent Office is also a partner of the Global Patent Prosecution Highway (GPPH) Pilot. Accordingly, should a corresponding patent application filed in a GPPH partner jurisdiction issue to grant or receive favourable consideration, examination can be fast tracked by filing a request for GPPH examination in Canada. Once requested, examination typically commences within 3 months.
- Accelerated examination of COVID-19 related patent applications for small entities:
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 accelerated examination is accepted, the first and subsequent office actions can be expected within 3 months.
No Information Disclosure Statement Requirement
In Canada, patent applicants do not have a positive obligation to identify or file all known material prior art to the Canadian Patent Office, although the applicant may voluntarily file prior art to ensure that it is explicitly entered on record.
The applicant is only required to identify or file prior art when the Examiner requests that the applicant identify the prior art cited in corresponding patent applications in other jurisdictions.
Annual Maintenance Fees for Canadian Patent Applications and Patents
There are annual maintenance fees payable to the Canadian Patent Office in a Canadian patent application and an issued patent from the second anniversary of the Canadian filing date to the end of the 20-year patent term. In the case of a Canadian national phase entry application or a patent resulting therefrom, maintenance fee due dates are calculated from the international filing date.
Maintenance fees due while an application is pending may only be validly paid by the patent agent of record.
When a maintenance fee for an application or patent is not paid by the annual deadline, there is a brief window in which the fee may be paid before the application goes abandoned or the patent expires. This payment grace period is the later of 6 months from a missed maintenance fee deadline or 2 months from the Canadian Patent Office notification of a missed maintenance fee payment.
After the grace period expires, the application will go abandoned and the patent will be deemed expired. There is a possibility of reinstatement of abandonments and reversal of deemed expiry, however, it must be shown that the deadline was missed in spite of the due care required by the circumstances having been taken. An additional late fee is also required if the maintenance fee is not paid by annual deadline.
12 Month Reinstatement Period
If an application goes abandoned, such as for failing to respond to an office action, the application may be reinstated within 12 months of the date of abandonment upon making a request for reinstatement, paying a reinstatement fee and taking the action required which led to the abandonment. In a couple of circumstances, there is an added requirement that the Commissioner determine that the failure to take action which led to the abandonment occurred in spite of the due care required by the circumstances having been taken. At present, the requirement for a determination of due care applies to applications which have been abandoned due to a failure to pay the maintenance fee and which have been abandoned for failure to request examination. In these cases, a request to reinstate a patent application should include a statement of the reasons for the failure to pay/request examination.
The Commissioner will then assess whether the failure occurred despite the applicant taking all measures that a reasonably prudent applicant would have taken – in the circumstances - to avoid the failure. Note that measures taken by the applicant after the failure occurred are not taken into consideration.
No Continuation or Continuation-In-Part Applications
There are no equivalents to continuation and continuation-in-part applications in Canada. The applicant must file a new patent application in order to claim new subject matter.
Divisional Application Practice
Due to restrictive double patenting laws in Canada, divisional applications are seldom employed unless in response to plurality of inventions rejections from the Patent Office.
No File Wrapper Estoppel
Recent changes to the Canadian Patent Act introduced a new provision, section 53.1, which provides that patent prosecution histories are now admissible as evidence in any action or proceeding respecting a patent. That said, the provision on its own does not provide for file wrapper estoppel in Canada, the absence of which has historically differentiated Canadian patent prosecution from patent prosecution in the U.S.
No Terminal Disclaimer
In Canada, if an application receives a double-patenting objection, the only options available to the applicant are to either overcome the objection with argument or amend the application. No terminal disclaimer is available to the applicant as it is in the U.S.
Conclusion
Hopefully this article has given you a better understanding of some of the features of the Canadian patent system. If you have any questions about the patent application process in Canada, please do not hesitate to contact us.
