Filling Requirements in Canada
The following is intended to provide our foreign associates with answers to some of the common questions asked about filing procedures in Canada.
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National Phase Entry of PCT Applications
For filing, all we need is a copy of the front page of the published PCT application and information on whether or not the applicant is entitled to small entity status. Please note that no forms signed by the applicant are required at the time of filing in Canada.
The dealine for national phase entry in Canada is 30 months regardless of whether or not a Demand for International Preliminary Examination has been filed. In either instance, the application can be reinstated up to 12 months after the deadline, meaning that the deadline for national phase entry can effectively be extended to 42 months under both Chapter I and Chapter II National Phase Entry.
Non-PCT Patent Applications
For filing, all we need is a copy of the front page of the published PCT application and information on whether or not the applicant is entitled to small entity status. Please note that no forms signed by the applicant are required at the time of filing in Canada.
Please note that in some cases absolute novelty is not required in Canada.
Declaration of Entitlement
A declaration of the applicant’s entitlement, as at the filing date, to apply for patent must be submitted to meet the completion requirements for an application. The declaration applies only to events that occurred before the filing date, specifically the international filing date for PCT applications. The declaration must outline the entitlement of the applicant based on one or more of the following mechanisms: that the applicant is the inventor, that the applicant is/was entitled as employer of the inventor, a dated agreement, a dated assignment, dated consent, a dated court order, a dated transfer or a dated name change. If not provided within 15 months of the filing date (or priority date where applicable) for a non-PCT application or within 3 months of national phase entry of a PCT application, the patent office will formally requisition submission of the declaration along with a completion fee.
Examination Requests
Canada allows for the request for examination to be deferred for up to five years from the date of filing, meaning that filing fees and examination fees can be paid separately.
Reinstatement
An application that has become abandoned, for example for failure to pay an annual maintenance fee, for failure to request examination within 5 years of the filing of the application or for failure to respond to a request from the Patent Office, such as an office action or assignment request, can be reinstated up to one year after the date of abandonment by paying a "late fee" and completing the action for which the application went abandoned. No affidavit or sworn statement is required.
Small Entity Status
In Canada, a small entity means an individual, company or other organization that employs a maximum of 50 persons, or a university. It does not include an individual, company or organization who has transferred or licensed or is under some legal obligation, other than a contingent obligation, to transfer or licence any right in the invention to any party that is not another small entity. It also does not include an entity that is controlled, directly or indirectly, by another entity that has more than 50 employees and is not a university. Qualification for small payment of small entity fees is to be based on a one-time determination based on the applicant’s status at the time of filing in Canada, specifically at national phase entry for a PCT application or at the filing date for a non-PCT application.
Novelty Requirements
Absolute novelty is required with the exception that disclosure by the inventor or someone deriving the invention from the inventor is excused for 1 year.
Industrial Designs
The application must be filed within one year of the first publication of the design anywhere in the world. For filing, we need drawing(s) or photograph(s) of the design, a statement as to whether the design relates to the appearance of the entire article or only a portion of the article and the name and address of the applicant.
Trademarks
For trademark searches and registrations, all we need is a copy of the phrase or logo to be trademarked and the results of the search report will be forwarded to you within 2-7 days. |
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