In Canada, examination is not automatic. A request for examination must be filed within 5 years of the application date and an examination fee paid. Expedited examination may be requested where, for example, the applicant has knowledge of infringement; the applicant has reason to believe that infringement is imminent; or early issuance of the patent is clearly in the public interest.

Any objections or requirements made by the Examiner in an Examiner's Report are usually dealt with by making amendments to the specification or claims, or submitting arguments, or both, by means of a formal response filed in the Patent Office.  Most applications receive objections that must be overcome if a patent is to be granted.

Typically, the Examiner will cite at least some prior patents or other prior publications ("prior art") that are considered by the Examiner to be relevant to the subject matter of the patent application.  In such a case, the Examiner usually goes through the formality of rejecting the application or some claims thereof.  To respond to such rejection, it is necessary to consider the prior art cited by the Patent Office in consultation with the client to determine its impact.  Usually, several options for dealing with the rejection will be available.  Those options must be considered and the one which best suits the case selected.  An appropriate response (usually written) must then be prepared and filed in the Patent Office.

This process may continue - the Examiner may refuse to withdraw the rejection, or may pose further grounds for rejection - all of which must be overcome before a patent will be granted.  In other cases, we may perceive the possibility of eventual success but only at a prohibitive cost.  We try to ensure that our communication to our clients is as accurate and timely as possible, so that any problems of this sort can be fully discussed and evaluated.

It is very important to realize that additional fees will be charged after the patent application has been prepared and filed in a Patent Office. These fees (called "prosecution charges") relate primarily to various procedural matters incidental to the patenting process and to the cost of overcoming obstacles such as those described above. Prosecution charges are highly variable and will obviously depend upon the number and nature of any obstacles encountered - unfortunately, it is not possible to forecast in advance what obstacles may have to be dealt with. When obstacles do arise, the cost of dealing with them will depend primarily upon the time required to consider each obstacle, report it to the client together with recommendations for a suitable response, receive instructions from the client for responding to the obstacle, prepare an appropriate response, and present it to the Patent Office. During prosecution, we spend only the professional time necessary to implement our client's instructions to the client's advantage. Count on spending at least a few thousand dollars on prosecution charges.

In a routine case, prosecution charges will typically vary between $2,000 to $4,000. However, it is not unusual to encounter prosecution charges well in excess of $5,000. Sometimes, as mentioned, the objections raised by the Patent Office are insurmountable and the patent application must be abandoned. If the application is to be abandoned, it is sometimes (but not always) possible to file a substitute application to overcome difficulties that are not remediable by further prosecution of the first-filed case. This will, of course, entail further fees.