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Patent Applications

4. Convention Priority

Convention priority must be claimed within six months of filing. A certified copy of the priority document is not ordinarily required.

5. Novelty Requirements

A one-year grace period applies to most statutory bars; that is, to be valid, a Canadian application must be actually filed in Canada within one year of any publication of the invention occurring anywhere in the world, or any public use or sale of the invention. Note that the grace period runs to the actual filing date in Canada, not to the priority date. A Canadian application must also be filed before any counterpart application issues to patent in some other country, unless the Canadian application is filed within the one-year Convention priority period.

6. Small Entity Status

The Canadian Patent Office charges reduced fees to applicants who qualify as "small entities". For example, the patent application filing fee is currently $300, which is reduced to $150 for small entities.

The test for small entity status in Canada is different from the test used in the United States. In Canada, a "small entity" is a university or has 50 or fewer employees. Small entity status is lost if the applicant has assigned or licensed, or is under an obligation to assign or license, rights in the invention to any entity that does not itself qualify as a small entity.

Patent rights may be entirely lost or prejudiced through improper assertion of small entity status. Accordingly, because the cost savings are not great, we recommend that small entity status not be claimed if there is any doubt as to its availability. Normally, we require a signed statement from the applicant that it is entitled to claim small-entity status; the expense associated with this requirement will probably more than offset any cost benefit of electing small-entity status.

7. Request for Examination

Canadian patent applications are not automatically examined. A request must be filed and an examination fee paid within five years of the filing date. The request may be filed at the time of filing the application, if the applicant wishes. Note that at present examination backlog levels, an application will not be examined in the ordinary course before at least two years have elapsed following the filing of a request for examination.

Nothing here written constitutes legal advice. The accuracy of what is written is not guaranteed.   
Please consult us about any specific matter on which you require legal advice.    © Barrigar Intellectual Property Law 2001