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Publication

title

Patent Application Requirements

DATE

November 1, 2004

EXPERTISE

Patents (including Industrial Designs)

Patent Application Requirements and Useful Information
Contents
  1. Deadlines
  2. Requirements
  3. Examination
  4. Additional Information
1. Deadlines
Filing based on Paris Convention or WTO
  • Within 12 months after earliest priority date
  • Automatically extended to next business day if Patent Office is closed for business on anniversary date
  • No reinstatement of priority claim for unavoidable delay of filing is possible in Canada
Filing based on PCT
  • Within 30 months after earliest priority date
  • No extension for translations
  • Canada allows for the National Phase to be entered up to 12 months after the regular PCT National Phase filing deadline upon payment of surcharge
Maintenance Fee
  • Payments are due annually from the 2nd - 19th anniversary dates after Canadian filing date (PCT International filing date for PCT cases)
  • Failure to pay causes application or patent to lapse
  • Permanent lapse may be avoided before the next anniversary upon payment of maintenance fee and a surcharge
  • No reinstatement for unavoidable delay is possible beyond 12 month late payment period
Request for Examination
  • Due 5 years after the Canadian filing date
  • Applications are not examined until a Request for Examination is filed with the payment of a fee.
  • Late payment is accepted within 12 months with a reinstatement fee
  • No reinstatement for unavoidable delay is possible beyond 12 month late payment period.
Priority Claim
  • Must be made within 16 months after earliest priority date

2. Requirements
Minimum requirements to obtain a filing date
  1. An indication in English or French that the granting of a Canadian patent is sought.
  2. The name of the applicant.
  3. The address of the applicant or of a patent agent of the applicant.
  4. A document, in English or French, that on its face appears to describe an invention.
  5. The prescribed application fee.
Completion requirements
Petition
  • Required to complete application
Abstract
  • Required to complete application
Sequence Listing
  • In both paper form and in computer-readable form, where required
Claims
  • US-style claims preferred over European two-part style, but both are acceptable
  • No additional fee for large number of claims
Formal Drawings
  • May be received, by Ogilvy Renault/Swabey Ogilvy Renault agents, in electronic format (ex.: AutoCAD, PDF, JPEG, TIFF, GIF) and converted for filing
Power of Attorney / Appointment of Agent
  • Not required
Additional Requirements
Assignment
  • Must show chain of title from inventor(s) to the applicant, named in the application as filed
  • Documents need not be originals, notarized or certified. Photocopies may be filed.
  • The signature of assignee must be witnessed by someone or authenticity of signature declared
Priority Document
  • Not required. The applicant may claim priority without a requirement of documentary proof.
Language
  • Entirely French or entirely English. Otherwise, translation must be provided on filing.
Paper & Margins
  • A4 paper or letter size
  • Margin requirements : 2cm at the top, bottom and right side, and 2.5cm on the left margin
Prior Art
  • References cited in applications in the U.S. and European Patent Offices will generally be requested after the filing of the Request for Examination
  • Preferable to file such information when the request is filed.
Specification
  • Invention must be fully disclosed to enable any person skilled in the art to practice the invention.
  • In the case of a machine, disclosure of the best mode according to the inventor for making the invention is a legal requirement
  • In the case of biotechnology applications, a properly referenced biological deposit is considered part of the specification, and where the application describes a nucleotide or amino acid sequence that is not part of the prior art, a sequence listing must be provided.
  • Incorporation by reference and reference to documents not available to the public at the filing date are not permitted.
  • Invention disclosure must support the claims on its own.
  • Amendment may add descriptive matter known in the art at the time of filing
Marking Requirements
  • Canada imposes no legal obligation to mark or identify patented products.
Industrial Applicability
  • The Patent Act requires that the invention be "useful".
Licences or Security Agreements
  • Can be recorded in the ownership records in the Patent Office
  • Not required except where rights granted are exclusive
3. Examination

A Request for Examination must be filed either with the patent application or within five (5) years after the filing date.

Examination begins approximately 24 months following the Request for Examination. Acceleration of examination may be requested by paying a fee and by stating that the applicant's rights will be prejudiced by failure to expedite examination.

Filing of prior art cited in corresponding foreign applications is recommended since the Examiner will request such information before the first office action. There is no duty to file all known prior art comparable to the U.S. duty of candor. The Examiner is permitted to request information regarding corresponding applications in other countries including prior art cited, filing data, grant status, and particulars of interference-like proceedings.

There is no "File Wrapper Estoppel" doctrine in Canada. The claims of the patent are interpreted without reference to the file history.

4. Additional Information

For additional information on patents in Canada, please see our Overview of Patent Law in Canada.

The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault or any member of the Firm on the points of law discussed.

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