In order to obtain a filing date in Canada no document need 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 English or French;
- 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 photocopy of a specification in 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 paper is preferred for the specification although 8.5” x 11” paper is also 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, but there are no specific requirements for “formal” drawings.
- Title Documents
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 recommend recording of 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. Even though the CIPO will not require us to do so, we recommend that you provide and instruct us to file copies of any relevant assignments or other title documents which establish the chain of title from the inventor(s) to the applicant. 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
Convention priority must be claimed within sixteen months of the filing date of the earliest priority application. A certified copy of the priority document is not ordinarily required.
- Novelty Requirements
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, or have a priority date prior to 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 five years of the Canadian filing date. This can be done at the time of filing, if the applicant wishes.
- Maintenance Fees
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, counting from the Canadian filing date.)
For more information please contact us.