In order to obtain a filing date in Canada no document needs to be signed by the applicant. In every case, we as agents can sign all necessary papers required for a filing date.
Direct National Filing
(See alternative entry for Canadian National Phase Entry of PCT cases)
Items Needed to Obtain a Filing Date
- specification, including disclosure portion and claims, in any language;
- any drawings referred to in specification (may be informal); and,
- name(s) and address(es) of inventor(s) and of applicant, if applicant is to be an assignee or other successor-in-title.
To obtain a filing date, we can prepare and execute the required petition as agents for the applicant. There is no need for the applicant or inventors to sign the petition, or any other application papers.
Format of Specification/Drawings
A copy of a specification in the United States, PCT or EPC (English language version) format will usually suffice for Canadian filing purposes. Any necessary retyping can usually be deferred until allowance. A4 or 8.5” x 11” paper is acceptable. Drawings should be on the same size paper, with a clear margin preferably of at least one inch (2.5 cm.) on all sides.
The CIPO no longer requires an applicant to record assignments or other title documents to substantiate the applicant’s entitlement to apply for a patent. However, we are required to file a statement that the applicant is entitled to file the application, and accordingly require your confirmation of that entitlement if the applicant is not the inventor. We also recommend recording all assignments or other title documents which establish the chain of title from the inventor(s) to the applicant. An assignment affecting a Canadian patent is void against a subsequent assignee unless the assignment is both filed and recorded before the CIPO records an assignment to the subsequent assignee. The applicant’s title is therefore not secure as against any subsequent assignee unless the assignment is recorded. We also recommend that any future changes in ownership of the patent rights (e.g. assignments, mergers, name changes, etc.) be recorded at the CIPO.
Convention priority must be claimed within sixteen months of the filing date of the earliest priority application, or within four months of the filing of the Canadian application. A certified copy of each priority document is required. If a priority document is available through WIPO’s Digital Access Service (DAS), the access code may be provided instead of the certified copy.
Where there are joint applicants, Canadian law requires that one of them be appointed as common representative for the others. If there is no appointment made on filing, one applicant (typically the first listed applicant in the petition) will be deemed the common representative. The common representative is entitled to act on behalf of the other applicants in some actions before the CIPO. Notably, appointment of a new common representative or an appointment of agent by any applicant other than the common representative must be signed by all of the applicants. Accordingly, it is important that the applicant with primary responsibility for prosecution of the application be named the common representative on filing, to avoid potential inconvenience associated with gathering the signatures of all applicants in future.
Canada has a one-year grace period for most statutory bars. That is, to be valid, a Canadian application must be actually filed in Canada within one year of any publication of the invention anywhere in the world by the applicant or anyone deriving knowledge of the invention from the applicant, or any public use or sale of the invention. A Canadian application must also be filed prior to, or have a priority date earlier than, any publication of the invention anywhere by a third party not deriving knowledge of the invention from the applicant.
“Small Entity” Status
A “small entity” for fees purposes is an entity that employs 50 or fewer employees or that is a university. Small entity status does not apply to an entity that (a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or (b) has transferred or licensed or has an obligation other than a contingent obligation to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees. A Canadian patent can be invalidated if any fee is improperly paid on the small entity scale. If there is any doubt as to the applicant’s small entity status, all fees should be paid on the large entity scale.
Request for Examination
Canadian patent applications are not automatically examined. A request must be filed and an examination fee paid within four years of the Canadian filing date (five years for applications filed prior to October 30, 2019). This can be done at the time of filing, if the applicant wishes.
Canadian patent applications are subject to maintenance fees, which are payable commencing with the second anniversary of the Canadian filing date and annually thereafter throughout the pendency of the application and continuing throughout the term of the resultant patent. (Canadian patents issue for a 20 year term, counted from the Canadian filing date.)
For more information please contact us.