Patents

Steps involved in preparing and filing an application

CIPO's publication, A Guide to Patents, gives additional information on the requirements for obtaining a patent, and outlines the fee schedule.

Who can apply for a patent?

The legal owner of an invention can obtain a patent. Typically, the owner is the inventor or inventors. However, if an inventor sells the rights, then a second party would own the invention and could obtain a patent. If the inventor makes the invention as part of an employment contract, the employer may own the invention and have the right to the patent.

Is a patent application mandatory?

In order to have patent protection, you must apply for and be granted a patent. Since patent laws are national, you must obtain patent protection in each country in which you want protection.

How do I apply for a patent?

Before you apply, consult the Guide to Patents for insight into the process. The patent application tutorial is another helpful reference tool.

Once you're ready, you can apply for your patent in Canada by submitting a patent application by mail with the appropriate fee to:

The Commissioner of Patents
The Canadian Intellectual Property Office,
Place du Portage Phase I
50 Victoria Street
Gatineau, Quebec
K1A 0C9

Or online:

What needs to be included in the application?

A patent application must include:

  • a petition,
  • a description of the invention,
  • an abstract,
  • a claim or claims,
  • any drawing referred to in the description, and
  • the filing fee.

You may also consult A Guide to Patents to determine what information must be included for each of the above requirements.

What are the requirements for filing patent applications in Canada?

To apply for a patent in Canada, there are certain procedures that should be followed. Failing to do so can cost you money and can even prevent you from obtaining your filing date.

What are the 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:

  • application fee for either a small entity or a large entity; (a small entity is an individual, a commercial concern of 50 or fewer employees, or a university);
  • written indication, in English or French, that a patent is sought;
  • document, in English or French, that describes an invention;
  • name of the applicant; and
  • address of the applicant or patent agent.

In a complete description, you must state how the invention works and how it is made. Each part of the invention and the way in which the parts fit together need to be described. For a process, you should describe each step of the process and the order of the steps. In short, once the patent is no longer in force, someone must be able to duplicate your invention based solely on the description.

Note: If the document is deemed not to describe an invention in the sense outlined above, the Patent Office will refuse the filing date and return all papers and fees. You will have to re-file the application with a better description, thus receiving a later filing date. Therefore, it is in your best interest to submit as complete a description as possible at the outset.

What are the steps for obtaining a patent?

There are many steps and some complexities along the way to have a patent granted. They can be summarized in the following main phases:

  • Prior to examination,
  • Maintenance fees and Assignments,
  • Examination,
  • After examination (see further explanation below).

Flowcharts showing the overall procedures

The Patent Office has prepared a summary entitled How Your Patent Application is Processed available on CIPO's Web site. The summary features the phases where you will be notified of the status of your application, including how and when you will be notified, and the associated fee, if any.

The main phases are the following:

  • Prior to examination (Formalities, Classification, Public Availability),
  • Maintenance fees and Assignments,
  • Examination (Request for Examination, Patent Appeal Board),
  • After Examination (Allowance, Grant).

The Glossary gives details on approval, abandonment, rejection, final action, and reinstatement in regards to a patent application. It also mentions the three main criteria of a patentable invention: novelty, utility and inventiveness.

Benefits of using professional expertise

Why hire a patent agent?

Even with the guidelines provided by some of these tools, preparing a patent application can be a complex task. Patent agents are professionals with considerable experience in drafting applications and navigating the patent process. They will help ensure that you get all of the rights to which you are entitled. You may consult the list of registered patent agents on the CIPO Web site.

Other aspects

How long is a patent effective?

The life of a patent in Canada is 20 years from the date considered to be the filing date in Canada. For the purpose of the patent life, a patent application filed in Canada through the Patent Cooperation Treaty (PCT) has, as the Canadian filing date, the date when the application was first filed. Payment of maintenance fees throughout the life of the patent is also required to keep it in force.

Does a patent in Canada protect rights in other countries?

No. Patent laws are national so you must obtain a patent in each country in which you want protection.

Note: You may apply for a foreign patent either within Canada, via the Patent Office under the Patent Cooperation Treaty (PCT), or directly to the patent office of the country concerned. But no matter how you apply, you will have to abide by the patent laws of that country. Bear in mind that these laws may differ from Canadian laws. In some countries, for example, you lose the right to a patent if your invention is disclosed before the filing date. (In Canada and in the United States there is an exception. This is not the case in most other countries.) You may find further information in A Guide to Patents, under the topic "Applying for a patent outside Canada."

The Patent Cooperation Treaty

Application for a foreign patent within Canada is made possible through a treaty called the Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO), in Geneva. It provides a standardized international filing procedure, which is shared by our principal trading partners (United States, Japan, and most of the European Community).

Under the PCT, you may file for a patent in as many as 142 member countries through a single application filed in Canada. This procedure is simpler than filing separate applications and enables you to defer costs. For example, instead of filing in the language of each country and paying, within a year of first filing, all translation, filing and agents' fees, you can file in one language and have up to 30 months to pay some of these fees. This gives a small and medium-sized enterprise (SME) more time to raise capital and conduct market studies.

Patent marking and "patent pending"

The Patent Act does not require that patents be marked as "Patented." However, marking an article as patented in Canada when it isn't is against the law. You may wish to mark your invention "Patent Applied For" or "Patent Pending" after you have filed your application. These phrases have no legal effect but may serve as warnings to others that you'll be able to enforce the exclusive right to manufacture the invention once a patent is granted.

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