Patent Registration in Canada
To file a patent registration in Canada, the applicant’s invention must be new, innovative, and useful. The invention may be a product, a composition, a machine, a process, or an improvement of any of these. The applicant must do thorough research about the invention that needs to be patented. Hiring a patent agent may be a good idea, as preparing and filing a patent application is a complex process. Patent agents understand the patent laws and the application process.
Patent Search
Before filing the patent application, the applicant must do a thorough patent search. The applicant should search patent databases to find out if an identical or similar patent has been already patented. The applicant can search for pending and registered patents at the Canadian Patents Database, United States Patent and Trademark Office Database, Google Patents and Patentscope. For some areas, non-patent databases are more important. For instance, Medline for biotechnology patent applications and IEEE for electrical patent applications. The applicant may also take the help of a patent agent in this process who may charge a fee to conduct a patent search. The applicant should ensure that the patent agent is registered.
Filing patent application
The applicant must fill out all the details in the patent application form to meet the filing requirements. The applicant must ensure the description, claims and drawings in the application are clear and meet the formatting requirements. However, an incomplete application may also be accepted provided the minimum requirements are met. They are: • The applicant must indicate that they seek to patent an invention. • Information for identification of the applicant. • Contact details of the applicant. • A description of the invention. If the application does not meet the minimum criteria, the Canada Intellectual Property Office (CIPO) informs the applicant about the missing details. The applicant then has 2 months to respond. If the applicant responds within the deadline, the date on which the CIPO receives the latest documents becomes the new filing date. The applicant must also pay the prescribed fee with the application. I f the applicant does not pay the fee with the application, a filing date may be given but late fees will be charged. Once the application meets the filing requirements, a filing certificate is sent by CIPO to the applicant which includes the filing date and the application number. A filing certificate is issued within 15 business days of submitting the application. It means that the application is pending. If the patent application has been submitted in a language other than English, then CIPO sends a notice to the applicant to submit a translation. The applicant has 2 months from the date of notice to submit the application. While the patent application is pending, the applicant also needs to pay patent maintenance fees.
Request Examination
In this process, the examiner decides whether the patent application will be granted or not. A patent application is not examined automatically and hence, a request for examination must be made. A request for examination can be made while filing the patent application. Otherwise, the applicant has 4 years from the filing date to request an examination. If the applicant does not make a request within this given period, then the applicant has 2 months to request examination along with the payment of late fees. The examination process takes about 2 years and during this period the application may go back and forth several times for corrections to resolve issues.
Respond to the Examiner
The applicant should get the first Examiner’s report after approximately 14 months of requesting an examination. The applicant has 4 months to respond to the Examiner’s report. It takes anywhere between 5 to 9 months to reconsider the application once the applicant submits reply to any question of the Examiner. If the applicant does not submit a reply, the application will be deemed to be abandoned.
Notice of Allowance
After the application is allowed, the patent is approved. The CIPO sends a Notice of Allowance to the applicant who must then pay the final fee within 4 months of receiving the notice. Once the final fee is paid, the patent is sent to the applicant within 8 weeks of receiving the final fee. In the case that the application is rejected after a final action, the applicant can request a hearing before the Patent Appeal Board. If the application is also rejected by the board, the applicant may appeal before the Federal Court of Canada within 6 months.
Registration Certificate
Once the patent is approved and final fee paid, the Patent Office issues the patent certificate, sealed with a digital signature using. This digital signature makes the patent certificate authentic and official. The certificate includes the following details: • Patent number • Title of the invention • Reference to the specification • Seal of the patent office • Filing date • Date on which application became open to public inspection. • Date of grant of patent • List of inventor/inventors
