The following page is intended to provide our foreign associates with some basic forms and information relating to intellectual property practice and procedure in Canada.
National Phase Entry of PCT Applications
For filing, all we need is a copy of the front page of the published PCT application, an indication of whether the applicant is entitled to small entity status, and instructions on whether to request examination at the time of filing. Please note that no forms signed by the applicant are required at the time of filing in Canada.
The deadline for national phase entry in Canada is 30 months regardless of whether or not a Demand for International Preliminary Examination has been filed. If the thirty-month deadline was missed unintentionally, the application can be filed up to 12 months past the deadline with payment of a late fee, and a statement that the failure to fulfill the original deadline was unintentional.
Non-PCT Patent Application
For filing, we require a copy of the description, claims, drawings and abstract, name and address of the applicant(s) and inventor(s), indication of whether the applicant is entitled to small entity status, and instructions on whether to request examination at the time of filing. 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.
Canada allows for the request for examination to be deferred for up to four years from the date of filing, meaning that filing fees and examination fees can be paid separately.
Missed Deadlines and Reinstatement
If an annual maintenance fee or the four-year examination deadline is missed, late payment with surcharge will be possible within the late period set by CIPO notice, with recovery being possible in any instance up to six months from the missed date. Failure to fulfill the requirements within the late period will result in abandonment, with reinstatement only being possible where “due care” can be shown. The reinstatement period is 12-months long, the start of which may vary depending on where the CIPO notice falls relative to the 6-months minimum late period. Third-party rights are also introduced if payment is not made within the allotted late period.
If an application is abandoned for failure to respond to an Examiner requisition within the four-month period for response, or failure to pay the final grant fee within the four-month period set by the notice of allowance, then reinstatement is possible up to 12-months from the deadline without justification (no “due care” or “unintentional” standard applies).
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.
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.
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.