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, it will still be assigned a number and a filing date if certain base requirements are met. However, the application must be completed within a specific time, or your application will be considered abandoned.
Requesting an examination
The second step is to request an examination. A request for an examination must be submitted in writing to the Patent Office within five years of filing your patent application.
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 a 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. If the examiner is satisfied with your response, then the application will be allowed. Your patent agent is experienced in responding to objections. The process of receiving and answering objections may be done several times.
If the examiner’s objections cannot be satisfied, your application will be rejected. You 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
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. The patent will be granted within 12 weeks after the final fee is paid.
New Patents Act
On December 16, 2014, Bill C-43 received Royal Assent, amending the Patent Act to make it consistent with international Patent law. The new Act is not yet in force.
Under proposed amendments, the following changes would be made to the requirements to file a patent application:
- Applicants will no longer be required to pay a filing fee in order to establish a filing date;
- Applicants will be able to submit their application in a foreign language to establish a filing date, avoiding translation costs;
- Applicants who have submitted a previous application – in the last six months – would be allowed submit a statement referring to the previous application, as opposed to having to resubmit the specifications or drawings;
- Individuals who are not residents of Canada, who wish to file a patent application, will no longer have to appoint a person or firm residing or carrying on business in Canada as a representative; and
- Applicants must be notified by the Commissioner of Patents of a missed application fee due date, at which time the applicant will have a specific amount of time to pay the applicable fee and a late fee to avoid the application becoming abandoned. The new due date cannot be earlier than 12 months from the date of abandonment.
For more information and current government fees, visit the Canadian Intellectual Property Office website.
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