Particularities of The Canadian Patent Application Process


Compared to other jurisdictions, there are some particularities in the Canadian Patent Application Process. If you have more questions, please contact us for a free and confidential consultation.


One-year Grace Period from The Disclosure by The Inventor

Like the United States, Canada offers a one-year grace period from the date of the first disclosure by the applicant for the applicant to file a patent application. Thus, if the applicant inadvertently discloses the invention, which prevents the applicant from getting a patent in China, Europe, and Japan, etc., the applicant is not barred from getting patent protection in Canada because of such a disclosure if a patent application is filed within one year after the disclosure.


There Is No On-Sale Bar in Canada


Unlike the United States, merely selling a product comprising the invention does not necessarily prevent the applicant from obtaining patent protection for the invention. Rather, such selling must constitute a disclosure of the invention under the same standard as used in assessing anticipation, and the applicant will still enjoy the one-year grace period.


Double Patenting and Associated Considerations for Divisional Patent Applications


Unlike the United States, there is no equivalent to the terminal disclaimer. Thus, when the parent patent application is used as a basis for a double-patenting objection to the divisional patent application or vice versa, it may be very difficult to overcome such objections. As such, the applicant needs to be particularly careful when voluntarily filing divisional patent applications. On the other hand, if a divisional application is filed in response to a unity objection, the parent and the divisional applications cannot be cited against each other for a double patenting objection.


No Excess Claims Fees


Unlike many other jurisdictions, there is no excess claims fees in Canada. Thus, without considering professional services fees from the patent agent, the applicant can include as many claims as desired in the patent application at no additional cost.


Information Disclosure Statement is Not Required


Unlike the United States, you are not required to file Information Disclosure Statement for your patent application in Canada. However, you may choose to submit relevant references voluntarily.


Reinstatement of Abandoned Patent Application


Abandoned patent applications may be reinstated within one year after the date of abandonment. This could be used strategically. For example, if an objection in an Examiner's Report in Canada is similar to one in another jurisdiction, the applicant may consider abandoning the Canadian patent application by not responding to the Examiner's Report. After the applicant successfully respond to the objection in the other jurisdiction within the one-year period, the applicant can then reinstate the patent application in Canada and adapt the response in the other jurisdiction.


Unity of Invention Requirement that is different from the Election/Restriction Requirements


In Canada, the patent claims are required to have unity of invention, and the standard for assessing unity of invention is consistent with the PCT standard. This is different from the election/restriction requirements, which is based on other factors, for example, undue burden in search and examination.