Filing Requirements

Introduction

This document focuses on the documents and information that must be submitted in order to secure a filing date for a regular filed patent application.

1.0 Requirements to obtain a filing date for a patent application

In order to secure a filing date under subsection 28(1) of the Patent Act, an applicant is required to provide the following documents and information, as prescribed by section 71 of the Patent Rules:

  1. an indication that the elements submitted are intended to be an application for a patent;
  2. information which allows the applicant to be identified;
  3. information which allows the applicant to be contacted ; and
  4. a document, in any language, that on the face of it appears to be a description.

When the prescribed documents and information are submitted on different dates, the filing date accorded to the patent application will be the latest of those dates.

Submitting an application fee is not a requirement to secure a filing date for your patent application. If the application fee is not submitted when the patent application is filed, the Commissioner will send the applicant a notice, as required by subsection 27(7) of the Patent Act, requiring the submission of the application fee and the late fee within three months of the date of the notice. If the application fee and late fee are not submitted within the 3 months from the date of the notice, the application will be deemed withdrawn pursuant to subsection 66(1) of the Patent Rules.

1.1 Failure to provide all of the information and/or documents to secure a filing date.

If any of the required documents and/or information is not contained in the application, the applicant will be notified, as required by subsection 28(2) of the Patent Act, of any document(s) or information that are missing. The applicant will be required to submit the outstanding documents or information within two months after the date of the notice.

If the applicant submits the outstanding documents or information within two months after the date of the notice, the filing date accorded to the patent application will be the latest date where they were submitted.

If the applicant does not submit the missing documents and information within that two-month period after the date of the notice, the application will be deemed to never have been filed pursuant to 28(3) of the Patent Act.

1.2 Description provided in a language other than English or French

Although the document describing the invention does not need to be in English or French for establishing a filing date, the applicant is required to submit a translation into English or French of any part of the specification or the drawings that, on the filing date, is not entirely in English or French. If the required translation is not submitted, the Commissioner will send the applicant a notice, as required by subsection 15(4) of the Patent Rules, requiring the submission of the translated document within two months of the date of the notice.

If the applicant submits the translation within the two-month period after the notice is sent, the translation will replace the original document. If a translation is not submitted within the required time the application will be deemed to be abandoned under 73(2) of the Patent Act as prescribed by subsection 133(a) of the Patent Rules. For more information please consult the document regarding abandonment and reinstatement.

1.3 Providing a reference to a previously filed application for patent (to secure a filing date)

1.3.1 Reference statement

Pursuant to subsection 27.01 of the Patent Act, in order to secure a filing date, an applicant may choose to submit a reference statement, in English or French, to the effect that a reference to a specified previously filed application for a patent is being submitted instead of all or part of the specification or drawings required to be contained in the application.

Pursuant to subsection 27.01 of the Patent Act and paragraph 67(2)(a) of the Patent Rules, the reference statement must include the following information regarding the previously filed application:

  1. the statement referred to in subsection 27.01 (1) of the Patent Act must indicate the name of the country or office of filing of the previously filed application; and
    1. if the number of the previously filed application for a patent is known, the statement must indicate the number of the previously filed application, and
    2. if the number of the previously filed application for a patent is not known, the statement must indicate:
      1. the provisional number for the previously filed application given by that office,
      2. the date on which the previously filed application was sent to that office, and the statement must be accompanied by a copy of the request portion of the application, or
      3. the reference number given to the previously filed application by the applicant and indicated in it, the name and postal address of the applicant, the title of the invention and the date on which the previously filed application was sent to that office; and
  2. if the previously filed application for a patent was not filed in or for Canada, the application must, not later than two months after the date of the submission of that statement, either:
    1. submit to the Commissioner a copy of the previously filed application for a patent, or
    2. make a copy of the previously filed application available to the Commissioner in a digital library that is specified by the Commissioner as being accepted for that purpose, and inform the Commissioner that it is so available.

The prescribed period to make a complete reference statement begins the date on which we receive any document to receive a filing date and ends the earlier of:

  1. two months from receipt of the earliest document or information required for establishing a filing date or, if a notice is sent under subsection 28(2) Patent Act, two months after the date of the notice; and,
  2. the filing date.

This prescribed time period also restricts that a reference statement can't be made to submit a divisional application. Add consequence of not complying with this, deemed never to have filed.

1.3.2 Copy of the previously filed application

If the previously filed application was not filed in Canada, the applicant will be required, pursuant to paragraph 67(2)(b) of the Patent Rules, within two months from the submission of the statement, to submit a copy of the previously filed application to the office or make a copy of the previously filed application available to the Commissioner in a digital library that is specified by the Commissioner and inform the Commissioner that the copy is available.

1.3.3 Copy of the previously filed application is not in English or French

If the previously filed application is in a language other than English or French a translation into English or French must be provided. If the required translation is not submitted when the copy of the previously filed application is submitted, the Commissioner will send the applicant a notice, pursuant to subsection 15(2) of the Patent Rules, requiring the submission of the translated document within two months of the date of the notice.

Failure to provide the translation of the previously filed application will result in the application being deemed abandoned pursuant to paragraph 133(a) of the Patent Rules. Once an application is abandoned, the applicant can reinstate the application. For more information please consult the document regarding abandonment and reinstatement.

If the applicant meets all the requirements, the specification or drawing in the previously filed application are deemed to have been contained in the application on the date on which the statement is received and this will be the filing date of the patent application.

1.4 Addition to specification or addition of drawing

If an application is missing a part of the specification or a drawing referred to in the application, the applicant may add the missing part to their application by submitting the addition along with a statement indicating that the addition is made under section 28.01 of the Patent Act. If within two months after the earliest date on which the Commissioner receives any document or information under subsection 28(1) of the Patent Rules, the Commissioner finds that part of the description or a drawing appears to be missing, they must notify the applicant of the missing element.

1.4.1 Prescribed time period for addition

Applicants have two months from the earliest date on which the Commissioner receives any document or information required for establishing a filing date, pursuant to subsection 28(1) of the Patent Act, to add the missing part to the application.

If the Commissioner notifies the applicant of a missing part, the applicant must make the addition before the earlier of:

  1. the end of two months after the date of the notice, and
  2. the end of the six months after the date on which the Commissioner receives any document or information pursuant to subsection 28(1) of the Patent Act.

1.4.2 Effect on filing date

If the missing part and drawing are completely contained in a prior application on which priority has been requested, the applicant may submit the missing information without affecting the filing date.

In order to secure the original filing date, the applicant will have to ensure the following, under subsection 28.01(2):

  1. The applicant has, on the earliest date the Commissioner received any document or information under subsection 28(1) or the Patent Act, made a request for priority in respect of that application under section 28.4 of the Patent Act;
  2. The addition is completely contained in a previously filed application on which the request is based;
  3. The applicant requests that the filing date be the filing date referred to in subsection 28(1) of the Patent Act; and
  4. Complies with any other prescribed requirements.

If the prior application was not filed in Canada the applicant is required to either provide a copy of the prior application or make a copy available to the Commissioner in a digital library that is specified by the Commissioner as being acceptable.

If any part of that prior application is in a language other than English or French, the applicant is required to provide a translation in English or French of that part. They must also indicate where in that prior application or in the translation the addition is contained.

Where the parts being added are not contained in a prior application on which priority has been requested, and the request is not withdrawn before the prescribed date, the missing parts will be added to the application and the filing date will be the later of the date on which the addition is received and the filing date (where other filing requirements have not been met before the addition of the missing part is requested). Consequence is an amended filing certificate.

Considering the short timelines, the Office will expedite the assessment of whether or not the parts being added are contained in the priority application. The Office will do its best to inform applicants rapidly if they are not to give the applicant the opportunity to withdraw the addition and maintain the original filing date.

Since the potential consequence of an addition to the specification may result in a later filing date, applicants should ensure their original submission of their patent application is complete and free of errors.

The Patent Rules also indicate that addition of missing parts does not apply to divisional applications.

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