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
But what does any of this have to do with the
deadline to file a divisional patent application in
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
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.
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
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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