Canadian Filing Information - Patents
In order to obtain a filing date in Canada no document need be
signed by the applicant. In every case, we as agents can sign all
necessary papers required for a filing date.
(See alternative entry for Canadian National Phase Entry of PCT
cases)
- Items Needed to Obtain a Filing Date
- abstract;
- specification, including disclosure portion and claims, in
English or French;
- any drawings referred to in specification (may be informal); and,
- name(s) and address(es) of inventor(s) and of applicant,
if applicant is to be an assignee or other successor-in-title.
To obtain a filing date we can prepare and execute the required
petition as agents for the applicant. There is no need for the
applicant or inventors to sign the petition, or any other application
papers.
- Format of Specification/Drawings
A photocopy of a specification in United States, PCT or EPC (English
language version) format will usually suffice for Canadian filing
purposes. Any necessary retyping can usually be deferred until
allowance. A4 paper is preferred for the specification although
8.5” x 11” paper is also acceptable. Drawings should be on the
same size paper, with a clear margin preferably of at least one
inch (2.5 cm.) on all sides, but there are no specific requirements
for “formal” drawings.
- Declaration of Entitlement
We must file a declaration of entitlement that explains how the
applicant became entitled to file the patent application as of
the Canadian filing date. The declaration should be filed within
15 months of the application’s priority date, failing which the
Canadian Intellectual Property Office (CIPO) will set a further
deadline and require additional fees. Example reasons for entitlement
are listed below. To enable us to prepare and file a suitable
declaration, please specify all reasons for entitlement which
apply.
- The applicant is the inventor of the subject matter for which
patent protection is sought by way of this application. If this
reason applies please provide each inventor’s full name and
address.
- The applicant is the employer of the inventor(s) of the subject
matter for which patent protection is sought by way of this
application. If this reason applies please provide each employee-inventor’s
full name and address, and provide the employer’s full name
and address.
- The applicant is entitled to apply for a Canadian patent
in accordance with the terms of an agreement with the inventor(s)
respecting the subject matter for which patent protection is
sought by way of this application. If this reason applies please
provide each inventor’s full name and address, the applicant’s
full name and address, and a copy of the agreement.
- The applicant is entitled to apply for a Canadian patent
in accordance with the terms of an assignment of the subject
matter for which protection is sought by way of this application,
executed by the inventor(s) in favour of the applicant. If this
reason applies please provide each inventor’s full name and
address, the applicant’s full name and address, and a copy of
the assignment.
- The inventor(s) have consented that the applicant may apply
for a Canadian patent for the subject matter for which protection
is sought by way of this application. If this reason applies
please provide each inventor’s full name and address, the applicant’s
full name and address, and a copy of the consent.
- A Court has issued an order which effects a transfer to the
applicant of the right to apply for a Canadian patent for the
subject matter for which protection is sought by way of this
application. If this reason applies please provide each inventor’s
full name and address, the applicant’s full name and address,
and a copy of the Court order.
- The right to apply for a Canadian patent for the subject
matter for which protection is sought by way of this application
has been transferred to the applicant by a mechanism not specified
above. If this reason applies please provide each inventor’s
full name and address, the applicant’s full name and address,
and a copy of the document(s) which effect the transfer.
- The applicant’s name has changed. If this reason applies
please provide the applicant’s full former and current names
and address, and a copy of the document(s) which effect the
name change.
- Title Documents
The CIPO no longer requires an applicant to record assignments
or other title documents to substantiate the applicant’s entitlement
to apply for a patent. However, we recommend recording of all
assignments or other title documents which establish the chain
of title from the inventor(s) to the applicant. An assignment
affecting a Canadian patent is void against a subsequent assignee
unless the assignment is both filed and recorded before the
CIPO records an assignment to the subsequent assignee. The applicant’s
title is therefore not secure as against any subsequent assignee
unless the assignment is recorded. Even though the CIPO will
not require us to do so, we recommend that you provide and instruct
us to file copies of any relevant assignments or other title
documents which establish the chain of title from the inventor(s)
to the applicant. We also recommend that any future changes
in ownership of the patent rights (e.g. assignments, mergers,
name changes, etc.) be recorded at the CIPO.
- Convention Priority
Convention priority must be claimed within sixteen months of
the filing date of the earliest priority application. A certified
copy of the priority document is not ordinarily required.
- Novelty Requirements
Canada has a one-year grace period for most statutory bars.
That is, to be valid, a Canadian application must be actually
filed in Canada within one year of any publication of the invention
anywhere in the world by the applicant or anyone deriving knowledge
of the invention from the applicant, or any public use or sale
of the invention. A Canadian application must also be filed,
or have a priority date prior to any publication of the invention
anywhere by a third party not deriving knowledge of the invention
from the applicant.
- "Small Entity" Status
A “small entity” for fees purposes is an entity that employs
50 or fewer employees or that is a university. Small entity
status does not apply to an entity that (a) is controlled directly
or indirectly by an entity, other than a university, that employs
more than 50 employees; or (b) 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, that employs more than 50 employees. A Canadian
patent can be invalidated if any fee is improperly paid on the
small entity scale. If there is any doubt as to the applicant’s
small entity status, all fees should be paid on the large entity
scale.
- Request for Examination
Canadian patent applications are not automatically examined.
A request must be filed and an examination fee paid within five
years of the Canadian filing date. This can be done at the time
of filing, if the applicant wishes.
- Maintenance Fees
Canadian patent applications are subject to maintenance fees,
which are payable commencing with the second anniversary of
the Canadian filing date and annually thereafter throughout
the pendency of the application and continuing throughout the
term of the resultant patent. (Canadian patents issue for a
20 year term, counting from the Canadian filing date.)
For more information please contact us.
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