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Archived — How your patent application is processed (Page 3 of 5)

From: Canadian Intellectual Property Office

About priority dates

A priority date is essentially the first filing date of your invention. More specifically, it is the filing date of an earlier application that you use as the effective filing date of the invention (subject matter) in a later application. The earlier filing date could come from an application that you filed in another country or from an earlier Canadian application where you want to add new subject matter.

Suppose you file a Canadian application, get a filing date and decide to wait a few months before you finish your application. If you decide to include a recent improvement or a more detailed description of your invention, you cannot add new subject matter to your first application. But you can file a second application that includes the first subject matter plus new information. Then you pay another filing fee, and claim “priority” for the first subject matter back to the first filing date. The priority date applies only to the original material.

If you want to do this, you need to remember two important rules:

Why would I claim priority?

The reason you might want to claim priority is that you get protection for the subject matter in your first application. The risk of not claiming priority is that between your first filing and your second filing someone else could publish an invention that keeps your application from becoming a patent. It also costs more, as you have to pay two filing fees and maintain two applications (unless you abandon the first application.)

The first filing date can come from an application that you filed in Canada or from an application that you filed in another country as long as the country has a treaty with Canada.

Note: This information about priority dates is just for your information. Do not think of it as legal advice. You should speak to your patent agent about any questions you have on priority dates. The Patent Office can provide you with a list of registered patent agents, but we cannot say which one you should use.

Completing your application

If you chose to file the minimum application requirements, you will receive notices from the Commissioner requiring you to submit the missing parts of the patent application (compliance), to appoint a patent agent (if one is required) and to submit a translation of the description of your invention (if you submitted the description of your invention in a language other than English or French).

In addition to your description of your invention, your application must contain:

While there is no fee to submit these other elements, your application will be deemed abandoned if you do not send them within three months of the notice from the Commissioner. If you want your application reinstated, you have to pay an additional fee.

Your statement of entitlement can be included in your petition or in a separate document

Keeping your application or patent alive

The process to get a patent after you file a patent application can include many steps and lots of back and forth communication with the Patent Office. While your application is pending, you will need to pay annual maintenance fees as well as request examination of your patent application, or your application can be deemed abandoned. If you do not pay your maintenance fees on time, the commissioner will send you a notice requiring that you pay the maintenance fee and the late fee, the later of 2 months after the date of the notice or six months after the initial due date. If you do not pay the fees as requested, your application will be deemed abandoned; you can have it reinstated within 12 months of the date it was abandoned if you send in a request for reinstatement along with the maintenance fee, the late fee and the reinstatement fee. See Chapters 9 and 10 of the MOPOP for more information.

Once your patent is granted, you still have to pay fees on specific anniversary dates. If you do not pay the maintenance fees on time, the Commissioner will send you a notice requiring that you pay the maintenance fee and the late fee, the later of 2 months after the date of the notice or six months after the initial due date. If you do not pay the fees as requested, your patent will be deemed to have expired. Should your patent is deemed expired; you have twelve months of the date of expiry to request the reversal of the deemed expiry, pay the maintenance fees, the late fee along with any additional prescribed fee. See chapter 27 of the MOPOP for more information. You can pay fees every year or for several years at a time. To give you an idea of the time frames involved and the fees you have to pay, consult the fee table.

If you are an individual or a small organization of 50 people or less, you can submit a signed small entity declaration and your fees will be reduced. Just remember to apply as a small entity.

If you decide to continue patenting your invention, the next step is to request examination.

Requesting an examination

Examination is the process the Patent Office uses to decide whether your application is good enough for you to be granted a patent.

We do not automatically examine your application after it is filed: You must formally ask us to examine it and you must pay an examination fee. You can ask us to examine your application when you file it or anytime within four years of filing.

An examiner will decide if your patent application meets the requirements under Canadian law. For example, she or he will judge if your invention is new, useful and inventive. (See A patent is for… for more information about these three criteria.)

The examination is based on the description, claims and drawings in your application. The patent examiner will also check to see that you have written your application using the proper format. He or she will do a search on other patents and technical documents. Then the examiner will either produce a report or, if the defects identified are minor, the examiner may contact you or your agent by phone to discuss the defects (for information on examination timelines, please see our performance standards).

Examiners typically object to one or more of the claims in a patent application. They may object to how you wrote the claim (for example, the claim may be too general or the wording may not be precise enough) or they may find that your invention does not meet the criteria for a patent. In the majority of cases, examiners write a report about their objections and any changes they want you to make. This is called an "examiner's requisition". You now have three options: you can argue against what is in the report; you can fix your application; or you do not answer within four months of the examiner's report and your application will be deemed abandoned. If you decide to argue or to fix your application, the next phase in the patent process involves you corresponding with the Patent Office to solve the issues. You must do this within the timeframe that the examiner specifies or your application will be deemed abandoned.

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