Why File in Canada?
Canada is a dynamic and prosperous country with a strong economy and a well-educated workforce. Some of Canada’s vibrant industry sectors include: aerospace, automotive, biotechnology, chemicals and plastics, digital media, medical devices, mining industries, oil and gas, renewable energy, software, and telecommunications.
Canada’s intellectual property regime complements its competitive R&D environment and provides significant benefits for foreign applicants. Some of these benefits include:
Late National Phase Entry.* Applicants are permitted to enter the national phase in Canada up to 42 months after the priority date, upon payment of a CA $200 late fee. This option is not available in most other jurisdictions, where national phase entry must be completed within 30 or 31 months after the priority date.
One-Year Grace Period. Canada provides a 12-month grace period for validly filing a Canadian patent application after public disclosure of the invention by the applicant. Public disclosures made within the grace period by the patent applicant or a person deriving knowledge of the invention through the patent applicant are not considered to be novelty-destroying. The grace period does not protect against independent disclosures made by third parties prior to the effective filing date. One important limitation to Canada’s grace period is that it is calculated based on the Canadian filing date, not based on the priority date.
Deferred Examination.* The Canadian patent regime affords applicants flexibility in the timing of prosecution. Examination must be explicitly requested, and a corresponding fee paid, within 5 years from the filing date of the Canadian application. Thus, an applicant can reduce costs at the outset by postponing the request for examination. The applicant can also delay examination in Canada until corresponding claims have been allowed in another jurisdiction.
PPH. Under the Global Patent Prosecution Highway (GPPH), applicants can make a PPH request based on favourable national or international (PCT) work products to the CIPO. A Canadian application proceeding under the PPH program is generally examined within a few months. In many cases, the claims allowed in other participating patent offices are also allowed in Canada.
According to CIPO’s PPH Portal, between July 2016 and December 2016, the grant rate for PPH applications was 89% (compared to 65% for all applications); the average pendency from a PPH request to the first Office Action was 0.8 months (compared to 11.5 months); the average pendency from a PPH request to a final decision was 5.4 months (compared to 31.2 months); the average number of Office Actions was 0.9 (compared to 1.6); and the allowance rate without a first Office Action was 33% (compared to 5%). This means significant cost and time savings for applicants.
Expedited Examination. The Canadian Intellectual Property Office (CIPO) offers a unique strategy for fast-tracking examination of an application. The CIPO’s ‘special order’ program provides a first office action within 60 days of making a request. Such a request requires the filing of a statement that the failure to advance the application is likely to prejudice the applicant’s rights and can only be made if the application has been published (or the request is accompanied by a request for early publication). No other evidence or documentation is required.
Expedited examination can also be requested where the application relates to technology capable of resolving or mitigating environmental impacts or conserving the natural environment and resources (referred to as ‘greentech’). No additional fees beyond the usual examination fee are required, and no supporting information needs to be provided. Based on the expedited examination available in Canada, the CIPO can, accordingly, be used as the office of earlier examination to expedite prosecution in other patent offices participating in a PPH program.
Reduced Fees. Compared with other jurisdictions, it is relatively inexpensive to file and prosecute a patent or trademark application in Canada. Also, patent maintenance fees, which are due annually upon the 2nd anniversary of the Canadian application filing date, are relatively small compared to those of other patent offices.
No Excess Claims Fees. There is no limit or surcharge on the total number of claims or the number of independent claims that may be included in a patent application. There are also no restrictions or surcharges on the use of multiply dependent claims. This allows applicants to file numerous independent claims and an unlimited number of narrower dependent claims in an attempt to enhance the scope of protection available in Canada.
No File Wrapper Estoppel or IDS. Patent applicants in the US and some other jurisdictions are subject to “file wrapper estoppel”. If a court is called upon to construe the claims of a patent after it is granted (for example, in an infringement lawsuit), file wrapper estoppel allows the court to use statements made to the patent office during prosecution to narrow the scope of those claims. In Canada, there is no file wrapper estoppel, meaning statements made to the CIPO cannot later be used to narrow the scope of patent claims. In addition, there is no requirement in Canada to disclose relevant prior art to the CIPO in an information disclosure statement (IDS).
No Trademark Class Fees.* Canada has not yet implemented the Nice Classification system for trademarks, and as such there is currently no additional fee related to the number of classes of goods and services listed in a trademark application.
*Legislative changes are expected to come into force in 2019 which will limit or eliminate these benefits, but for now they continue to be available to applicants.