The patent process consists of the following steps:
The preliminary search is the first and essential steps during the patent process in order to determine if your invention has been previously patented by someone else, avoiding to spend time, money, and effort.

Based on the preliminary search, you can decide whether to proceed with the filing and the chances of success to obtain the registration. Remember, filing a patent requires full and complete disclosure of your invention.

During the search, a tedious investigation is completed of the current and pending patents that have been made public in the CIPO patent register, general Internet search, or other online patent databases for prior art search.
During the formalities step, you must follow the structure and format of a patent application rules, as set out in the Patent Act, otherwise your application will be rejected and you will lose your filing date. So it is best that you do it right the first time and write as complete an application as possible.

That said, your patent application should be made up of several elements. Filing your initial application is important since it becomes the basis for your patent. A complete application includes:

  • A petition;
  • An appointment of a representative and/or agent;
  • A signed small entity declaration (if applicable);
  • A statement of legal representative; and
  • An abstract, description, claims, drawings, and sequence listing, if required; and
  • The prescribed fees.

You application is a legal document that must be written clearly, precisely, and in a particular format so as to make it clear to the examiner and anyone else reading your patent.

Once completed, it is time to file your application. The filing date, which is the date the Patent Office receives your application, is the key date in the application process since Canada has adopted the first to file rule. The said rule states that the first person to file the patent is entitled to that patent. Moreover, based on that date, you are allowed to file your patent application within one year of prior public disclosure.
By filing your patent application taking into account the minimum requirements, you must complete your application within 15 months of the filing date or priority date, whichever is earlier.

A priority date is the filing date of an earlier application which could come from an application filed in another country or from an earlier Canadian application to which you would like to add new subject matter.

The patent application is completed by submitting:

  • An abstract
  • Your claims
  • The drawings
  • The sequence listing (if applicable)
  • The name of your patent agent or representative (if applicable)

You must make sure to pay the required fee, otherwise your application will be abandoned if you do not disburse the fees by the prescribed deadline. Reinstatement is available subject to additional fee.
As indicated earlier, the patent process varies, and while your application is pending, you must pay the maintenance fees by specific anniversary dates or your patent application will lapse. For the record, the first maintenance fee is due by the second anniversary of your filing date.

If abandoned, a reinstatement of the patent application is available within 12 months of the abandonment date by sending a request for reinstatement along with maintenance and reinstatement fees.

By the same token, once your patent is granted, fees are also due on defined anniversary for the remaining timeline of your patent, again otherwise your patent will lapse. Again, after the patent goes abandoned, a grace period of one year is available in which you must to pay the maintenance and surcharge fees, or else, your patent becomes expired with no reinstatement possibilities.

In 1985, the Canadian Government introduced “small entity” provisions to encourage universities and small businesses to use the patent system by reducing certain fees by 50 percent. If you are an individual or an organization of 50 people or less, you can submit a signed “small entity” declaration and your fees will be reduced.
During the examination process, the Patent Office will conclude whether a patent should be granted for your invention.

Contrary to the trade-mark examination process, your patent application is not automatically examined, thus, you must formally request the Patent Office, at filing or anytime within five years from filing, to start the examination process of your patent application, pending the disbursement of the required examination fee.

Once the examination process is started, the examiner starts by performing a prior arts search in order to determine if your patent application meets the correct format and requirements, as to whether or not your invention is new, useful, and inventive, based on the description, claims, and drawings information provided in your patent application.

On average, the first examiner’s report is issued within 24 months of receipt of the request for examination. Most of the time, the examiner will issue and Office Action objection or request for changes to your invention, and more particularly, to the claims as described in your patent application. Often, the objection covers the nature of the claim as being too broad in scope or having imprecise and vague wording, and which must either be amended or abandoned.

The patent agent will do its best to argue such objections or amend your patent application by corresponding with the patent examiner, within specific prescribed deadlines, to resolve the outstanding issues covered in the Office Action.
Once the objections or amendments have been resolved, the examiner will allow your patent application by issuing a Notice of Allowance. If the objections are maintained, the patent examiner will reject your patent application and automatically, will be forwarded to the Patent Appeal Board for a review of the objection(s).

Once the Patent Office allows your patent application, as stated above, you will receive a Notice of Allowance giving six months to pay the final fee. Once paid, the Patent Office will prepare and issue your registration.
In the event the examiner rejects your patent application, a final action is issued which gives you the opportunity to bring your application to the examiner’s satisfaction.

The Final Action review is performed by the Patent Appeal Board (PAB), under you have the chance to be heard and present pertinent evidence. Once the hearing is convened and completed, and both parties present their evidence, the PAB will submit its recommendation to the Commissioner of Patents. Based on these recommendations, the Commissioner of Patents renders a final decision. If the examiner’s original position is upheld, you will be informed and given an opportunity to amend your patent application. If the examiner’s original position is rejected, your application will be returned to the examiner for further prosecution.

You have also the chance to appeal the Commissioner of Patents’ decision to the Federal Court of Canada.

Click here to fill out form