Canada: Leveraging Canada's Patent System To Your Advantage In Canada And Beyond

Last Updated: August 7 2013
Article by Brigide Mattar and George Elvira

Leveraging worldwide patent systems for securing cost effective and streamlined patent protection is of increasing importance to patent applicants. Canada offers some appealing options in this regard, such as deferred examination and fast-tracking of patent applications amongst others. Innovators can use these options to their advantage, not only when pursuing patent protection in Canada, but also when pursuing patent protection elsewhere, including in the United States.

Cost-savings and efficiencies in the Canadian patent system. Many features of the Canadian patent system offer cost savings and efficiencies to applicants. For example:

  • No excess claim fees: In Canada there is no real limit to the number of claims that can be included in a patent application and no excess claim fees to pay. This provides the opportunity to have a large number of claims considered by an Examiner, without attracting the type of excess claim fees charged in other jurisdictions. Canada also has a less restrictive unity practice than the United States and Europe, making it possible for a variety of claims of different categories to be pursued in a single application.
  • Deferred examination: Examination of a Canadian patent application can be deferred for years. Requests for examination are due within five years of the filing date, and it can take 18-30 months (depending on the technical field) before a first examination report issues, providing time to assess the commercial value of the technology.
  • Accelerated examination: Various mechanisms are available to expedite examination, which may lead to the initiation of examination within three months or less. Eligibility requirements are generally straightforward with no requirement to provide search results or comments on prior art. In some cases there are no government fees to pay while in others only minimal fees apply, making fast-tracking an attractive option for obtaining a Canadian patent on an expedited basis.
  • Final Actions are relatively uncommon: Final Actions are issued far less frequently in Canada than in the United States. An applicant normally has multiple opportunities to communicate with an Examiner before an impasse is reached, and without incurring additional government fees.

Applicants can leverage these features to realize cost savings and efficiencies both in Canada and elsewhere. For example:

Defer patent examination in Canada until allowance in the United States or elsewhere: One strategy for pursuing patent protection in both Canada and the United States is to defer examination in Canada with a view of securing a U.S. patent first and then aligning the claims of the Canadian application with those allowed in the United States. Since examination in Canada can be deferred for several years, this approach can often easily be put into practice. Moreover, in many technical fields Canadian applications having claims similar to those granted in the U.S. frequently proceed to allowance without difficulty.

In addition to cost savings, this approach can ensure consistency of the claims in both jurisdictions, which may be advantageous to some applicants.

A similar approach can also be used effectively with patents obtained in other jurisdictions, such as Japan or Europe, where the requirements for patentability are similar to those of Canada.

Leverage Canadian examination results to streamline examination in the United States and other jurisdictions: Another strategy for cost reduction and streamlined prosecution is to accelerate examination in Canada and to use the results to advance prosecution elsewhere. Expedited examination can be completed relatively quickly, sometimes in less than a year. The applicant may then use Canadian examination results to make amendments to corresponding applications in the United States and elsewhere, potentially leaving fewer issues to be addressed and helping to keep the records clean before the United States Patent and Trademark Office and other patent offices. This streamlining of corresponding prosecution may contribute in reducing examination costs globally.

Accelerated examination leading to allowance of a Canadian application can also be used to accelerate examination in the United States using the Patent Prosecution Highway (PPH) program between the Canadian Patent Office and the United States Patent and Trademark Office (provided the PPH program is available for that specific application). This strategy applies equally to Denmark, Germany, Israel, Japan, Korea, Finland, Spain and the United Kingdom, with which Canada also has PPH programs.

While the above-suggested strategies are by no means exhaustive and may not apply to every situation, they illustrate how distinct aspects of Canada's patent system can be leveraged to an applicant's advantage when seeking patent protection in Canada and beyond.

For more information on how Canada's patent system can play a key role in the execution of your global patent protection strategy, please contact a member of our Patents practice 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.

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