A Guide to Patents: Part II (Page 4 of 5)

A Guide To Patents (PDF - 5 MB - 40 pages)

Patents – Getting Started

Additional considerations

Re-examination of a granted patent

After issue, any person, including the Commissioner of Patents, may ask that one or more claims of your patent be re-examined if new prior art is found related to the patented invention. This can happen at any time during the term of your patent. The Commissioner of Patents may appoint a re-examination board to issue a certificate cancelling, confirming or amending your patent claims. You may appeal decisions that cancel or amend your claims to the Federal Court of Canada; however, you cannot appeal the Commissioner's refusal to set up a re-examination board.

Reissue and disclaimer

If you own a patent that accidentally contains omissions or mistakes, you may apply to have it reissued within four years of its issue to broaden or change its claims, or you may apply for a disclaimer at any time after issue to narrow the scope of some or all of the claims of your patent.

Patent protection

Infringement

Patent infringement happens if someone makes, uses, or sells your patented item without your permission in a country that has granted you a patent, during the term of the patent.

If you believe your patent is infringed, you may sue for damages in an appropriate court. The defendant may argue that infringement did not occur, or may attack the validity of your patent. The court will decide who is right, based largely on the wording of the claims. If what the defendant is doing is not within the wording of any of the claims of your patent, or if the patent is declared to be invalid for any reason, there is no infringement.

Protection before grant

When you have a Canadian patent, you will be able to sue infringers for all damages sustained after the grant of your patent. Also after the grant, you may sue for reasonable compensation for infringements that occurred in Canada between the date your application was made available for public inspection (18 months after filing or priority) and the date of the grant.

Patent marking and "patent pending"

The Patent Act does not require that articles be marked "patented"; however, in Canada marking an article as patented when it's not is illegal.

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 warn others that you will be able to enforce your exclusive right to make the invention once a patent is granted.

Fees

Three types of fees must be paid in order to obtain or maintain a patent or patent application: filing fees, examination fees, and grant of patent fees. A fourth type, maintenance fees, is required yearly to make sure your patent application or patent remains current.

Small entity

In 1985, the Canadian Government introduced "small entity" provisions to encourage universities and small businesses to use the patent system by reducing certain fees by 50 percent. In order to pay fees at the small entity rate, an applicant/patentee must:

be eligible under the definition of small entity; and
submit a small entity declaration within a prescribed time period.

Definition of "small entity"

The definition of a small entity, as outlined in the Patent Rules, states that a small entity is one that employs 50 or fewer employees or that is a university.

This does not include:

an entity that is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or
an entity that 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.

Small entity declaration

A small entity declaration must be submitted within a prescribed time period and must include a statement indicating that the applicant/patentee "believes that they are entitled to pay fees at the small entity level."

Although the declaration may be submitted as part of the petition (see Appendix B), the applicant/patentee is encouraged to submit it as a separate document since the small entity declaration (see Appendix C), unlike the petition, requires a signature.

Maintenance fees

Maintenance fees encourage applicants and patent holders to re-evaluate the economic value of their applications and patents on a yearly basis.

Owners of patents who are benefiting from the patent system must pay these fees or their patent rights will expire before the maximum 20 years. On the other hand, owners of inactive patents may choose not to pay maintenance fees, letting the patents lapse and allowing others to freely use the technology described in those patents.

Maintenance fees must be paid to keep a patent in force. If the required fee is not paid before the payment deadline, the patent lapses, but it can be revived within 12 months upon written request for reinstatement along with the payment of the maintenance fee and a late payment fee.

Application for maintenance fees must be paid on or before the starting date of the period covered. If the fee is not paid, the application will become abandoned. An application can be reinstated within the 12-month period after it became abandoned if the maintenance fee and a reinstatement fee are paid. If the application is not reinstated within that period, it cannot be revived.

You'll find more details about fees in the How your Patent Application is Processed and Securing your Investment: Patent Maintenance Fees leaflets that are available online or contact CIPO's Client Service Centre. You can also consult the "Tariff of Fees," Schedule II, of the Patent Rules.

Note: Payment may be made by credit card (VISA, MasterCard, or American Express), direct payment, deposit account, postal money order, or cheque payable in Canadian dollars to the Receiver General for Canada. Do not add federal and provincial taxes.

Corresponding with the Patent Office

Business with the Patent Office is normally done in writing. All paper correspondence may be addressed to:

Commissioner of Patents
Canadian Intellectual Property Office
Place du Portage I
50 Victoria Street, Room C-114
Gatineau QC K1A 0C9

Any correspondence addressed to the Commissioner of Patents and delivered:

during business hours to CIPO headquarters in Gatineau, will be accorded the date of receipt that day;
during business hours to Industry Canada headquarters or to one of its regional offices, designated by the Commissioner in the Canadian Patent Office Record (CPOR), will be accorded the date of receipt in that office^*;
at any time by electronic means of transmission specified in the CPOR, including by facsimile, will be considered to be received on the day that it is transmitted if received before midnight, local time, at CIPO headquarters^*; or
through the registered mail service of the Canada Post Corporation (CPC) will be considered to be received on the date stamped on the envelope by the CPC^*.

If you are enquiring about the status of your pending application, give its serial number, your name, and the title of the invention. If you've hired a patent agent, conduct all correspondence through that agent.

Personal interviews with patent examiners can be arranged by appointment. This gives them time to review your application before seeing you. Note: If you have a patent agent, the examiner will talk only to that agent (although you may be present as well).

The Patent Office will respond to all general enquiries, but cannot:

advise you whether to file an application;
tell you whether your invention meets patentability criteria prior to filing an application;
tell you whether or to whom a patent for any alleged invention has been granted;
advise you about possible infringement of a patent; or
act in any way as an interpreter of patent law, or as a counselor, other than in matters directly related to processing your application.

Electronic services

Our electronic service delivery allows you to:

In order to use one or more of these services online, simply visit our website, then fill out and send the appropriate form.

In addition, the CIPO website has a tutorial about writing a patent application.

^* Only if it is also a day on which CIPO headquarters in Gatineau is open; if not, it will be considered to be received on the next working day.

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