Why A Patent Application Should Enter Canada


Many foreign applicants have doubts about filing patent applications in Canada, thinking that the market is small and is not worth the cost.


However, considering the economy of Canada, the integration of the Canadian economy with the economy of the United States, and the patent examination process in Canada, it is beneficial to obtain patent rights in Canada.


Although Canada is a smaller market than the United States, it is still a member of Group of Seven (G7) and the tenth-largest economy in the world as of 2018. In addition, the Canadian economy is intimately connected with the United States economy. Indeed, many products are produced in Canada for sale in the United States. Thus, the applicant can benefit from both the Canadian market and the United States market by obtaining patent in Canada.


In addition, a patent application can often be quickly allowed if its corresponding patent application in the United States or Europe receives favourable decision. Canadian patent examiners often review the prosecution histories in the United States and Europe when examining a patent application that has a corresponding patent application in the United States or Europe. Usually, the Canadian patent examiner simply adapt the prior art references and objections from the prosecution history in the United States and/or Europe. Thus, if a patent application receives favourable decision from these jurisdictions, the responses in these jurisdictions can often be adapted to respond to the Canadian Examiner's Report, resulting in accelerated grant of the patent application in Canada at a reduced cost. Indeed, sometimes the Canadian patent examiner would recommend the applicant to adapt the responses in the foreign jurisdictions to facilitate the prosecution of the patent application in Canada.


Furthermore, the applicant has four years from the filing date of the Canadian patent application, which is the same as the filing date of the PCT patent application, to request examination of the Canadian patent application. During the four years, the applicant may have received favourable decisions regarding corresponding patent applications. Considering that the Canadian Intellectual Property Office (CIPO) has Patent Prosecution Highway (PPH) agreements with many jurisdictions, the applicant can then request examination of the patent application in Canada, amend the application to correspond to the corresponding patent application, and submit a request for PPH at the same time, which could significantly shorten the time it takes, as well as reduce the costs, for the patent application to be granted in Canada.


Even if no corresponding patent application is allowed in a foreign jurisdiction, the applicant can use the reinstatement of abandoned patent application to accelerate the process and reduce cost. For example, if the objection in Canada is similar to the objection in another jurisdiction, the applicant can abandon the patent application in Canada by not responding to the objection. Then, 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.


In conclusion, considering the sizable market in Canada, the economic activities associated with the United States, and the cost of prosecution, it makes a lot of sense for a patent application to enter Canada. Many of the other particularities of the Canadian patent process may also be of benefit to you.


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