Fun Fact 1: Unlike our American friends, Canadians celebrate Thanksgiving each year on the second Monday in October which this year falls on October 10.

Fun Fact 2: This year, Canadians are expected to enjoy enough turkeys to stretch, beak to tail feathers, from Regina to Fredericton and enough loaves of bread to cover 31 hockey rinks.

But what does any of this have to do with the deadline to file a divisional patent application in Canada?

To note in particular, a Canadian divisional application cannot be filed on the same day that the parent application issues to patent, and must be filed before that day. It is worth keeping this in mind, considering that practices on this point vary in different regions. For example in the United States a recent decision held that a continuing patent application can be filed on the same day that the parent application issues as a patent (see Immersion Corp v HTC Corp).

The Canadian Patent Act specifies that a divisional application can be filed "if the divisional application is filed before the issue of a patent on the original application." As this is similar to the expression "before the patenting [...] of [...] the first application" in the U.S. Patent Act, it is reasonable for anyone following the aforementioned decision of the Federal Circuit in the U.S. to wonder whether a Canadian divisional application can be filed on the same day as the parent application issues as a patent.

Although no Canadian court has specifically answered this question, it had been the long-established practice of the Canadian Patent Office, as reflected in its Manual of Patent Office Practice, that "a divisional application may not be filed on the day of issue of the patent on the original application." This statement was removed from the Manual of Patent Office Practice in 2013, but the Canadian Patent Office continues to maintain this view. It is thought that this position finds support in the Interpretation Act, which relates to the interpretation of Canadian statutes and regulations and specifies that "[w]here anything is to be done within a time [...] before a specified day, the time does not include that day."  

In view of this ongoing practice, applicants should continue filing divisional applications in Canada prior to the day of issue of a patent from the parent application.

An additional consideration is that the Canadian Patent Office normally issues patents on Tuesdays and it typically takes several weeks after payment of the "final fee" for the patent to issue. Nevertheless, as the time to issue after payment of the final fee can vary, it is prudent to file the divisional application at the time of paying the final fee on the parent application to ensure the divisional is filed in time.

Since patent applications submitted on a day that the Canadian Patent Office is closed are deemed to have been filed on the next day that the Patent Office is open, when the Patent Office is closed on a Monday, a divisional application in Canada should be filed by the preceding Friday in cases where the parent patent would be issued on the Tuesday.

With the upcoming Canadian Thanksgiving holiday on Monday, October 10, 2016, any last-minute divisional applications based on parent applications issuing to patent on Tuesday, October 11 should be filed no later than Friday, October 7.

For further information, please contact a member of our firm's Patent group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.