Requirements For Filing Patent Applications In Canada
To apply for a patent in Canada there are certain procedures that you must follow. Failing to do so can cost you money and can even prevent you from obtaining your patent. The following are guidelines for filing a patent application in Canada.
Filing requirements for receiving a filing date
In order to receive a filing date, you must send (addressed to the Commissioner of Patents at the Canadian Intellectual Property Office) the following:
- an application fee A small entity is an individual, a commercial concern of 50 or fewer employees, or a university;
- awritten indication, in English or French, that a patent is sought;
- the address of the applicant or of his patent agent;
- the name of the applicant; and
- a document, in English or French, that describes an invention.
A description of an invention is not a statement of what the idea of the invention is. Simple statements of the results or the benefits of an invention are not in themselves descriptions of an invention.
A description describes how the invention works. It describes the parts, how the parts interconnect, and the way in which the invention works. For processes, a description describes each step of the process.
Note: If the application does not meet the above requirements, a filing date will not be accorded by the Patent Office. All papers will be returned to the applicant, and the filing fee will be refunded, less $25.
If you have already filed an application in Canada, or elsewhere, you can file a second application in Canada thus maintaining your original filing date. This date then becomes the priority date of the second application. The priority date applies only to elements common between the two applications.
The original application can be either foreign or Canadian, provided that a foreign application is from a country which has signed an appropriate international convention (this covers most countries in the world).
You must file the second application within 12 months of the original in order to keep the right to have priority. You must request priority to the original application when you file the second application, or within 4 months of filing the second application.
Using the priority concept when filing a patent application in Canada
Since the formal requirements for receiving a filing date are not as stringent as before, you may now file a description of your invention without everything being in perfect order. You then have 15 months to complete the application with no additional fee (see below for completion requirements).
However, when you complete the application you are not allowed to add any substantially new material. This limits your ability to change the application once you have filed it. You can make minor corrections to your application or modify the presentation, but you cannot add new material to a poorly drafted application. New material is anything that is not reasonably inferred from the description, claims or drawings. For example, you cannot add new features, further developments, or more precise or general descriptions of the invention to your application.
If you must add new material to an application, you may file a second application that contains all the material in the first, plus the material that you want to add. When you file the second application, you can then request priority to the first, as described above.
Remember, you have only 12 months from the filing date of the first application in order to file the second application and still be allowed to request priority to the first. This is less than the 15-month completion period; therefore, you must think about this option well in advance.
If you file a well-drafted and complete application at the outset, you will save yourself much time and effort.
Completion of application
You have 15 months from the priority date (or filing date, if there is no priority date) to complete the application without having to pay a completion fee. After 15 months, the Office will send you a notice requiring completion of the application before the expiry of the later of the 3-month period after the date of the notice or the 12-month period after the filing date of the application. If the Office must send you a notice, you will also have to pay a completion fee. The completion requirements are as follows :
- compliance with the quality and presentation requirements of any document submitted (e.g. typewritten, paper size); and
- the presentation of the following documents:
- drawing(s) referred to in the description;
- sequence listings on paper and in computer readable form (if applicable); and
- appointment of agent or representative (if applicable).
It is in your best interest to file as complete an application as possible. In this way, potential problems which may jeopardize your right to obtain a patent may be avoided at the beginning of the process. If you require professional help with the patenting process, CIPO can provide you with a list of registered patent agents in your region.
In addition, this document only describes some of the procedures about filing patent applications. To find out more about other procedures which must be followed in order to maintain an application (maintenance fees) and to have an application examined (request for examination), consult the Guide to Patents. The guide is available via Internet or by contacting CIPO (see address and numbers below).
Finally, the preceding information is a guideline to filing patent applications in Canada. The Patent Act and Patent Rules must be consulted to determine the official requirements associated with the patenting process. The Act and Rules may be accessed via Internet.
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