Navigating Local Patent System Peculiarities in Canada

by Ryan De Vries, Heerlaw.com

The world’s patent systems are administered by national or regional patent offices. As a result, a global patent filing strategy by a Hong Kong business must take local peculiarities into account. While local peculiarities can cause significant difficulties when encountered by the inexperienced, many can be helpful when properly understood.

The patent system overseen by the Canadian Intellectual Property Office (CIPO) is an excellent example. The Canadian system is similar in many ways to the system overseen by the United States Patent and Trademark Office (USPTO); generally, the same description and patent claims can be filed in both jurisdictions. However, several Canadian peculiarities allow applicants an astonishing amount of flexibility in prosecution strategy, particularly in the timing of the examination.

Delaying Examination
In Canada, examination does not begin automatically upon the filing of a new patent application. While an applicant can request examination right away, an applicant can also wait up to five years from the filing date to request examination.

In practice, many applicants wait until after an allowance is made in a counterpart application in another jurisdiction to request examination in Canada. This allows the applicant to then voluntarily amend the Canadian patent claims to match the patent claims that were allowed elsewhere. Such a tactic may also allow the applicant to request advanced examination in Canada through the Patent Prosecution Highway program, as discussed further below; resulting in speedy examination at a time of the applicant’s choosing.

Accelerating Examination
The Canadian patent office generally examines applications in the order in which requests for examination are received. However, advanced examination is available in most cases.

The Canadian patent office is prepared to advance, without an extra fee, the examination of applications relating to green technology and applications which qualify for the Patent Prosecution Highway (PPH) program. The PPH program is available to applicants who have received a notice of allowance for a comparable set of claims if that comparable set of claims was allowed in a jurisdiction with which Canada has signed a PPH agreement.

Additionally, the Canadian patent office is prepared to advance the examination of any application if a fee is paid and the applicant’s rights would be prejudiced by a delay. In practice, many circumstances would qualify as prejudicing an applicant’s rights, and so this hurdle is not generally difficult to clear. The Canadian patent office also requires that the application be published prior to advancing examination, although early publication may be requested so as to allow a request for advanced examination to proceed.

Advanced examination usually results in a first action by the patent examiner within 3 to 6 months of the request rather than 18 or more months under regular examination.

The Grace Period
The Canadian patent system affords patent applicants a one-year grace period, which is similar to the grace period available in the American patent system. This grace period means that an applicant’s own public disclosure may not be counted against the novelty and inventiveness of their own patent application if that application is filed within a year of the public disclosure. The grace period also extends to public disclosures made by others who obtained knowledge from the applicant.

However, this grace period runs from the filing date of a Canadian application, not from a priority date. As a result, if an applicant intends to rely on the grace period, they must file a Canadian application within the year; an applicant cannot simply file an American provisional application within the year and rely on a priority claim to the provisional application when applying in Canada.

Excess Claim Fees
The Canadian patent office does not charge extra fees for patent applications having a large number of patent claims. In Canada, an applicant may include as many claims as they choose. This means that a Canadian patent applicant can choose to enter multiple variations of a set of claims in Canada and has the freedom to pursue more dependent claims then they might choose to pursue elsewhere.

There are practical limits however. Pre-filing, preparing a great multitude of claims is likely to be more expensive than preparing a more focused set of claims. Post-filing, a large number of independent claims results in a large chance that the patent office will view the claims as covering more than one invention, at which point the office is likely to require that the applicant file one or more divisional patent applications to continue pursuing all of the claims.

A Twelve-Month Reinstatement Period
In Canada, if a patent application is abandoned the applicant may reinstate the application up to twelve months after the date of the abandonment. The Canadian patent office does not require that the applicant provide a reason for the abandonment; the applicant may simply request reinstatement, pay the reinstatement fee and take the action that they failed to take earlier. If the applicant missed multiple deadlines, they will need to take all of the actions they missed and pay a reinstatement fee for each missed deadline.

File Wrapper Estoppel
In some jurisdictions, arguments and other statements made by the applicant during the examination of the application can later be used by the courts to interpret and limit the claims of any patent that is granted. This is commonly referred to as ‘file wrapper estoppel’; the applicant is stopped from contravening their own earlier statements. However, in Canada this ‘file wrapper’ cannot generally be used in construing the claims during litigation, although it could be introduced in other limited circumstances.

Conclusion
Local patent office peculiarities can be a headache for the uninitiated. However, when properly understood, local peculiarities make the Canadian patent system surprisingly flexible.