Applying for and obtaining a Canadian patent is somewhat like
learning how to play hockey - it can be a complicated process. Just
as it takes years to understand the mechanics of the ice, it may
take months to construct a patent draft that properly captures the
inventive aspects of your invention. The extensive rules of hockey
must be learned, just as there are several procedural formalities
that must be followed during the patent filing stage. Finally
choosing the right stick may be likened to the practical
considerations necessary for an inventor, such as public
disclosures, patent search reports, and jurisdictional
Don't let these complications overwhelm you - many people
have learned how to play hockey, and you can learn how to file a
There are three basic steps to filing a patent in Canada:
(i) Drafting; (ii) Filing; and
(i)Drafting (4 – 16 weeks to
Drafting a patent may take days, months, or even years to
complete. This timeline is highly dependent upon the complexity of
the technology and the scope of the protection sought. It is
usually an iterative process between the inventor and a patent
agent during which several drafts and materials related to the
invention are exchanged.
At the end of the process you will be left with a document
containing a Background (address the current state of
technology and problems to be solved); a Description (a
full enabling disclosure, outlining the "best mode" of
the invention); Claims (set the bounds of the legal
monopoly, essentially outline the fence of what others are
restricted from doing); Figures (drawings or graphs or
visual aids to help explain the invention); and an
Abstract (brief technical description of the
day - 1 week) –
After the patent has been drafted, the document must be filed
with the Canadian Intellectual Property Office (CIPO). This will
involve the submission of administrative information about the
inventor or agent (details such as name, address, etc.). Certain
government fees must also be paid to CIPO at the time of
Once the application has been submitted, CIPO will process the
application and send confirmation of receipt. Upon an examination
request, CIPO will commence an extensive examination of the patent
to determine if the patent should be granted.
(iii)Prosecution (12-16 months)
During the prosecution step, an examiner will decide if your
patent application meets the patent requirements under law. For
example, he or she will judge if your invention is new, useful and
inventive, and whether or not your patent is similar to other
patents and technical documents.
The examiner will write and issue a report about their findings,
which will include any changes they want you to make within the
patent. The report will also contain a response timeframe. Only
once you obtain a final approval from the examiner at CIPO will a
patent be issued.
As an inventor there are other practical considerations that
should be at the forefront of your mind. First of all do NOT
publically disclose any inventive concepts related to your
invention without safeguards in place. Public disclosure may
significantly alter the patent rights you are able to obtain.
Non-disclosure agreements can be a good tool to avoid such a
Also, you may want to undertake a prior art search to make sure
that your inventive idea does not already exist. There are public
resources available for searching such as the CIPO Patent Database
and Google Patents.
Finally, patent protection is territorial; therefore, an issued
patent is only valid throughout the country in which it is issued.
If you wish to patent an invention in another country, you may
apply separately in each country or through certain regional
convention offices, established under international treaties or
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
In this recently reported decision, the Court granted Apotex leave to deliver Fresh as Amended Responding Statement of Issues for the reference into AstraZeneca's damages or Apotex's profits, following the Court's decision that the ‘693 Patent is valid and infringed by Apotex.
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