The strategy for patent portfolio management is typically driven by the business case: is the cost of obtaining patent protection worth the return? If you have already made the decision to prepare and file a patent application in the United States, filing a corresponding patent application in Canada offers a tremendous value for a small incremental cost.
The initial Government fee for filing a patent application in Canada is $CAD 300.00 for a large entity, and a mere $CAD 150.00 for a small entity. A full schedule of Government and Gowlings fees may be obtained on request.
Because examination of the patent application does not have to be requested until five years from the Canadian filing date, you have time to decide whether the patent application is worth the cost of prosecution. If not, the application may simply be abandoned.
If you do wish to obtain the Canadian patent and a patent has already issued in the United States, the cost of prosecuting the same claims in Canada is comparatively modest.
Limited Monopoly in Substantial Canadian Market
Canada has a population of over 30 million and a Gross Domestic Product (GDP) of $CAD 918.9 billion. Canada is also the United States' largest trading partner. The return on this small investment for 30 million people in a G8 country is high.
Although you may not have a significant business operation in Canada today, you should consider filing Canadian applications if you plan to have one within the 20-year life of your patents. In the meantime, your patents can be licensed in return for royalties or licensing fees.
Are You Providing Free R & D to Your Competition?
If you do not obtain protection in Canada, you may be performing research and development that your competitors are free to use in Canada at no cost.
Less Costly Litigation
As a litigation tool, a Canadian patent may have advantages over its U.S. counterpart. Some of these advantages include:
lower litigation costs than in the United States;
new Federal Court Rules which are intended to resolve issues within two years;
a pro-patentee record of court decisions;
choice between suing in Federal or Provincial Court, possibility of a jury in Provincial Court, but not in Federal Court.
Even if you do not intend to litigate, there are compelling reasons to obtain patents: they can deter others from suing you, be cross-licensed to obtain access to new technology, be licensed to obtain revenues, or be used as assets to obtain financing. These benefits can only be obtained in Canada if you have a Canadian patent.
On balance, Canadian patents:
are comparatively inexpensive;
offer business advantages in covering the North American market; and
provide litigation and licensing options.
A systematic filing of corresponding patent applications in Canada, deferring examination as required, can be a cost effective business strategy. Periodic review of your patent portfolio will allow you to control costs and to reap the optimal benefits.
The contents of this publication are intended for informational purposes only and should not be construed as legal advice or legal opinion, which can be rendered properly only when related to specific facts.
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