Canada: Managing & Leveraging Intellectual Property: Reasons To Pursue Patent Protection In Canada

Last Updated: May 31 2016
Article by Jeffrey Coles

In managing patent portfolios, whether small or large, an overarching and important question is where to pursue patent protection.

Canada's patent system can be used strategically to create business value and to help companies achieve their objectives, including managing IP costs, tailoring scope of protection, and influencing their competitors' activities. 

Patent protection in Canada can be a valuable asset, particularly given the extensive commerce between Canada and the United States.  A Canadian patent not only protects an invention in Canada, but also protects its exploitation in other ways, such as preventing exportation of infringing products to foreign markets or preventing importation of products made elsewhere by an infringing process.   

As part of an overall patent strategy, Canada's patent system provides (1) an opportunity to obtain commercially-effective patents and (2) a favourable environment for patent enforcement.

Bang for your buck

Canada offers a sophisticated and cost-effective patent regime, and the current depreciation of the Canadian dollar weighs in favour of pursuing patent protection in Canada.

Cost-effective filing and prosecution:  Low government fees, including no excess claim fees and the ability to include multiply-dependent claims, allow products to be protected in many different ways, making it harder for competitors to "design around" a company's patents.  Also, patent applications drafted to meet the standards of other major patent offices, typically will meet Canadian standards, thereby reducing filing costs.

Stream-lined examination:  As a strategy for cost reduction, the Canadian Patent Office has implemented a Patent Prosecution Highway ("PPH") program with many other patent offices around the world (US, EP, JP, CN, etc.), including a PPH program based on PCT applications.  No fee is required and it is possible to expedite examination by relying on allowable claims in other jurisdictions.  In turn, with a prompt allowance in Canada, the applicant may leverage the favourable Canadian examination results to streamline prosecution elsewhere, which may contribute to reducing examination costs globally.

No inter partes review:  Unlike some patent systems, the only option for a third party to challenge a Canadian patent in the Canadian Patent Office is to request re‑examination.  But re‑examination is entirely ex parte after the initial request is filed.  This is advantageous to patentees for several reasons, including managing patent prosecution costs.

Flexible patent regime

Patent prosecution in Canada is flexible, providing applicants with opportunities to adopt advantageous strategies, including delaying the filing of applications, modifying claim scope voluntarily at any time and controlling the speed of examination.  There are also no official limits on the number of Office Actions, and Final Actions are often only encountered when a real impasse is reached with the examiner.

Disclosure grace period:  Unlike many other countries, Canadian law provides a one-year grace period for applicant-derived disclosures.  Thus, there is no "absolute novelty" requirement and patent protection can still be obtained in Canada so long as a national Canadian application or a PCT application is filed within one year of the earliest disclosure by the inventor or applicant.

Delayed national entry:  Whereas in most countries the national phase counterpart of a PCT application must be filed within 30 or 31 months from the earliest priority date, national phase entry in Canada can be extended to 42 months on payment of a nominal fee.

Accelerate or delay prosecution:  Examination may be deferred in Canada for up to five years from the filing date, allowing applicants the opportunity to assess prosecution in other jurisdictions and further evaluate the commercial importance of the technology, before making decisions regarding the Canadian application.  Once examination is requested, accelerated examination is available, for a minimal fee (or no fee for "green technology" applications), which can facilitate obtaining Canadian patent rights quickly, thereby providing enforcement options faster.

Freedom to adapt patent rights to commercial realities:  There is virtually no constraint on modifying the scope of patent coverage being sought (i.e., the claims), as long as what is sought to be protected is disclosed in or reasonably inferable from the patent application as filed (i.e., strict verbatim support is not required).  This allows patents to be "tailored" or "adjusted" to cover a company's products and/or competing products that are commercialized as the technology and market evolve.

Patent register

With respect to pharmaceutical inventions, Canada has a comprehensive legislative scheme - the Patented Medicines (Notice of Compliance) Regulations - linking drug regulatory approval of a second entry manufacturer to an innovator's patent status.  If the regulations are engaged and relevant patents are listed on the Patent Register, it is possible for a pharmaceutical patentee to delay market approval for a subsequent party, such as a generic, for as long as the life of its patent(s).

Together with the Patent Act, the regulations provide a balance between the timely entry of generic medicines and the rights of patent holders.  On the one hand, the Patent Act provides a statutory exemption from infringement by allowing a subsequent manufacturer to use a patented invention for the purpose of seeking regulatory approval.  On the other hand, the regulations provide an enforcement mechanism to ensure that the early working exception is not abused and generic forms of patented medicines are not sold before patent expiry.

Upcoming changes to Canadian patent law

As a signatory to the multilateral Patent Law Treaty, Canada is in the process of implementing changes to the Canadian Patent Act, of which many will be favourable to applicants.

Restoration of priority:  Currently, priority can only be claimed if an application is filed within 12 months of the priority application.  Under the amendments, an extension of 2 months is available so long as the failure to file the application within 12 months was unintentional.  Importantly, the issue of whether the failure to file within 12 months was unintentional can be challenged in the Federal Court.

Filing of missing parts:  Currently, it is difficult to amend a patent specification or drawings to include parts that were missing at filing.  Under the amendments, so long as the missing parts were completely contained in the priority application and the request to add the missing parts is submitted within six months of the filing date, it is possible to amend the application to include the missing parts and maintain the filing date.

Introduction of a notice regime for fees not timely paid:  Under the amendments, the Commissioner will be required to send a notice informing the applicant of non-payment of certain fees, including the application filing fee, maintenance fees and the fee for requesting examination.  There will be a two month deadline to respond to such a notice before the application is deemed abandoned. 

Favourable environment for patent enforcement

Patent enforcement in Canada can bring about significant benefits, both domestic and global, for companies that make strategic use of the patent framework.

Costs:  Patent litigation is typically less expensive in Canada than in other jurisdictions, such as the United States.  Also, under our Federal Courts Rules, a successful litigant is entitled to seek an order for payment of its legal costs.  In patent infringement actions, the Federal Court has recently shown that these awards can be significant in the appropriate circumstances, awarding costs of up to $6.5 million (2016 FC 91).

Speed & climate:  Patent litigation in Canada is typically conducted in the Federal Court.  This means litigants deal with one court irrespective of geographic location of the parties or the impugned acts.  Actions in the Federal Court are case managed and proceed quickly and efficiently, with a decision often being rendered within two years even in complex matters.

Remedy:  There are alternate remedies which may be sought upon a finding of infringement.  A successful plaintiff may be entitled to elect either their "damages" or an "accounting of profits" of the defendant.  In some instances, the availability to claim an accounting of profits may significantly increase the remedy that is obtainable.


The advantages described in this article highlight aspects of Canada's patent system that can be used in coordination with a global IP strategy to create business value by pursuing patent protection in Canada, but they are by no means exhaustive. 

For more information on how Canada's patent system can be strategically used to manage and leverage your patent portfolio, please contact a member of our firm's Patents 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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Jeffrey Coles
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.