Area of Law: Intellectual Property
Answer # 298
What happens in the Patent application process?Region: Ontario Answer # 298
Applying for a patent is a complicated process and you should contact a registered patent agent for assistance.
In Canada, there are four main steps in the application process and it will usually take two to three years to complete. The four application steps are: filing the application, a request for examination, a prosecution of examination, and the granting of a patent. There is a fee that must be paid for each step in the process. Individual inventors or small businesses pay one amount, all other applicants will pay more.
Filing the application
The first step is to file the application with the Patent Office at the Canadian Intellectual Property Office (CIPO). Applications will be accepted for filing whether or not they are complete. If your application is complete, it will be assigned a number and a filing date. The Patent Office will issue a filing certificate that contains this information. Your lawyer or patent agent will keep a record of the number assigned to your application and refer to it in all correspondence with the Patent Office.
If the application is incomplete but still provides certain basic details, it will still be assigned a number and a filing date. Applicants will be notified of any missing documents or information and will be required to submit the outstanding documents or information within two months of the date they are notified. If they do not, the application will be considered abandoned.
Requesting an examination
The second step is to request an examination and pay an examination fee. The length of time an applicant has to request an examination depends on the date the patent application was filed:
- If a patent application was filed on or after October 30, 2019, the request for an examination must be submitted in writing to the Patent Office within four years of filing the patent application.
- If the application filing date is prior to October 30, 2019, applicants have five years from the date of filing to request the examination.
Prosecution of examination
After the request for examination has been made, the patent examiner will review your application. The examination process may take two or three years. The examiner will review the claims and ensure that your invention is new and non-obvious. The examiner will search for prior art, which is anything of a tangible nature that can be used to dispute your claim of originality, such as a similar invention already in use. If the examiner has no objections to your application, then you will be granted a patent. There is rarely an application that does not have any objections.
If the examiner has objections about some aspect of your application, your patent agent will receive a report or letter of objection, called an ‘examiner’s report” or Patent Office action, from the Patent Office. However, this is not the end of your application. You are given an opportunity to respond to the objection and, if the examiner is satisfied with your response, then the application will be allowed.
Time to respond to examiner’s report
- for examiner’s reports issued on or after October 30, 2019, you have four months to respond
- for examiner’s reports issued before October 30, 2019, you have six months to respond
Your patent agent is experienced in responding to objections. The process of receiving and answering objections may be repeated several times.
If the examiner’s objections cannot be satisfied, your application will be rejected. You or your agent can appeal this decision to the Commissioner of Patents at the Patent Appeal Board. Your patent agent can help you file an appeal.
Granting a patent – Allowance
If the examiner allows your application and indicates a willingness to grant you a patent, your patent agent will receive a Notice of Allowance by mail and notification that payment of the final fee must be made. On average, it takes approximately two years from the filing of an application to get a patent.
The final fee to be paid is due:
- four months from the date of a Notice of Allowance issued on or after October 30, 2019
- six months from the date of a Notice of Allowance issued before October 30, 2019
Amendments to the Patent Act – filing an application
On October 30, 2019 new Rules and Amendments to the Patent Act came into force, which include changes to the requirements for filing a patent application.
These changes include the following:
- Applicants are no longer required to submit a filing fee in order to establish a filing date. If the application fee is not submitted when the patent application is filed, the Commissioner of Patents must notify the applicants that the missed application fee and the late fee must be submitted within three months of the date of the notice. If they are not, the application will be deemed withdrawn.
- Applicants are able to submit their application in a foreign language to establish a filing date, avoiding translation costs.
- Applicants are allowed, for the purposes of establishing a filing date, to substitute a reference to another previously filed application, as opposed to having to resubmit other parts of the application, such as the specifications or drawings.
For more information and current government fees, visit the Canadian Intellectual Property Office website.
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