Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
Patents
3.
Obtaining a patent
3.1
Which governing body controls the registration procedure?
 
Canada
The patent registration procedure is under the control of the Canadian Intellectual Property Office (CIPO), which is an agency of Innovation, Science, and Economic Development Canada.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
3.2
What is the cost of registration?
 
Canada
The government fee for filing a patent application is C$400. In order for a patent application to be granted, it must be examined by an examiner of CIPO, which requires the filing of a request for examination and payment of the prescribed examination fee of C$800. The request for examination must be filed within a prescribed timeframe. At present, the request for examination must be filed within five years of the filing date of the application; however, this period will be reduced to three years from the date of filing once the provisions of the new Patent Act come into force (this is expected to occur in early 2019). Once the examination is completed and allowance of the application is achieved, the prescribed final fee of C$300 must be paid in order for the patent to be granted.

The above-mentioned government fees may be reduced by 50% if the applicant qualifies as a small entity. A ‘small entity’ is defined in the Patent Rules as an entity that employs 50 or fewer employees or that is a university, but does not include an entity that:

  • is controlled directly or indirectly by an entity, other than a university, which employs more than 50 employees; or
  • has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, which employs more than 50 employees.
For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
3.3
What are the grounds to reject a patent application?
 
Canada
Under Section 30(2) of the Patent Rules, a patent application can be rejected if the CIPO examiner has reasonable grounds to believe that the application does not comply with the requirements of the Patent Act or Patent Rules.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
3.4
What programmes or initiatives are available to accelerate or fast track examination of patent applications?
 
Canada
Examination of a Canadian patent application may be expedited in three ways. First, the applicant may request entry of the application into the Global Patent Prosecution Highway programme or one of the bilateral Patent Prosecution Highway programmes to which Canada is a party (collectively, ‘PPH’). Under this programme, the applicant must request entry into the PPH and amend the claims of the Canadian application to “sufficiently correspond” to one or more claims that were found allowable by a foreign patent office that is also a participant in the PPH. There is no fee for requesting entry into the PPH.

Second, the applicant or any other person may request expedited examination of an application under Paragraph 28(1)(a) of the Patent Rules if such person believes that failure to advance the application is likely to prejudice that person’s rights. A request under this provision requires payment of a government fee of C$500.

Third, where an application is directed to technology that, if commercialised, would help to resolve or mitigate environmental impacts or to conserve the natural environment and resources, the applicant may request expedited examination under Paragraph 28(1)(a) of the Patent Rules. No government fee is required for filing such a request.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
3.5
Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
 
Canada
There are no limitations in the Patent Act or Patent Rules on the types or formats of claims that may be included in a patent application. Thus, it is permissible for a patent application to contain any number of independent and dependent claims and multiple dependent claims. However, as discussed further in question 3.7, claims directed to certain types of subject matter, such as methods of medical treatment, are not patentable in Canada.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
3.6
Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
 
Canada
Under the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union, patent term restoration became available as of 21 September 2017 for patents directed to drugs comprising new medicinal ingredients or new combinations of medicinal ingredients. Under CETA, the patentee of a qualifying patent may apply for a certificate of supplementary protection to extend the term of the patent up to a maximum of two years as compensation for delays in obtaining regulatory approval for the patented drug.

Under the recent United States, Mexico, Canada Agreement, a patent term extension will be made possible to extend the term of a granted patent by a period attributable to unreasonable prosecution delays by CIPO in granting a patent. An ‘unreasonable delay’ is defined as a delay of more than five years from filing of the application or three years from filing of a request for examination, whichever is later. The details of this provision, including the possible length of the patent term extension, have not yet been established. Canada has four and a half years to implement this provision.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
3.7
What subject matter is patent eligible?
 
Canada
A patent may be obtained for an ‘invention’. This term is defined in Section 2 of the Patent Act as any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter. The only statutory exclusion to patentability is provided in Section 27(8) of the Patent Act, which states that a patent may not be granted for a mere scientific principle or abstract theorem. In addition, the Canadian courts have held that the following do not constitute patentable subject matter under Section 2 of the Patent Act:

  • methods of medical treatment or surgery;
  • higher life forms (including fertilised eggs and totipotent stem cells);
  • forms of energy (including electromagnetic and acoustic signals);
  • features of solely intellectual significance (eg, literary works) or aesthetic significance;
  • schemes, plans, rules and mental processes;
  • fine arts;
  • printed matter; and
  • games.
For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP
3.8
If the patent office does not grant a patent, is an appeal available and to whom?
 
Canada
When an impasse is reached between an applicant and an examiner with respect to the allowance of a patent application, the examiner may issue a final action stating the reasons for refusing the application. The applicant is invited to respond to the final action; should such response not overcome the examiner’s grounds for refusal, the application is referred to the Patent Appeal Board (PAB) for review. The PAB will review the prosecution history, invite comments and/or amendments from the applicant, and issue a final decision. The decision of the PAB may be appealed to the Federal Court.

For more information about this answer please contact: Anthony Prenol from Blake, Cassels & Graydon LLP