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Information about Canadian patents: The Fundamentals.
Cost to file: ~$1,000
Total, start to allowanace: ~$4,000
Does not include maintenance fees. Assumes eligiblity for ’patent prosecution highway’ examination.
The aim of this page is to provide information about Canadian patents: to answer as many of the most frequently asked questions about Canadian patents. But don’t worry: this is for information purposes only. You are not on your own: our job is to guide you step-by-step to make the process as simple and trouble-free as possible.
Why file a Canadian patent? A US patent does not protect your rights in Canada. Only a Canadian patent grants you patent rights in Canada. In fact, may inventions that are patented in the US are not patented in Canada and thus are freely available and open for use by all in Canada. Canada is approximately the 10th largest national economy in the world, has a large, diversified economy and its citizens enjoy one of the highest standards of living in the world. Accordingly, if your invention is worth patenting, it is probably worth patenting in Canada.
Costs. Patent costs in Canada are not high compared to most of the rest of the world. The total cost to file a national entry patent in Canada is approximately $1000 (details here). After filing the total cost to prosecute a patent application in Canada if you use the patent prosecution highway is approximately $2500. Patents can be filed in Canada in English or French so for most applicants there are no translation costs. There are no additional fees for additional claims. The cost of prosecuting Canadian patent applications can usually be kept modest because examination can be deferred without cost for up to 5 years, and when examination is requested, a bilateral patent prosecution highway agreement may be available to dramatically reduce the effort required to prosecute the Canadian patent application. Detailed information on our fees for Canadian patents can be accessed here.
Canadian patent agents. If you are applying for a patent in Canada, you need to designate a Canadian patent agent to represent you (at the very least to pay maintenance fees and receive correspondence). In Canada the individuals authorized to represent patent applicants before the Canadian Intellectual Property Office (CIPO) are called “patent agents”. While a fair number of patent agents are also lawyers, there is no designation of “patent attorney”. Lawyers who litigate patent matters are most commonly called “patent lawyers” or “patent litigators” in Canada.
Deadlines for filing patents in Canada are similar to the deadlines in the United States: 12 months from the earlier of disclosure or the priority filing or 30 months for PCT national entry. Canada is an absolute novelty patent jurisdiction vis a vis disclosures by third parties (not the applicant). Canada provides a statutory grace period of 12 months from first public disclosure of the invention by the applicant anywhere in the world. Note that the latest possible date of disclosure of an invention for which there is a US patent application pending is month 18, when the patent application is published, and thus the absolute latest possible date for filing a Canadian patent application that corresponds to a US patent application is month 30. A PCT national entry must be filed in Canada within 30 months of the international filing date, but, upon payment of an additional fee, this can be extended to month 42. If you have filed a US provisional patent application and intend to replace it with a US utility application (not a PCT) and claim priority to the provisional, then the deadline for filing the corresponding Canadian patent application is usually the same as the deadline for filing the non-provisional US application: the earlier of 12 months from first disclosure of the invention or the provisional filing. If you miss this deadline for the Canadian applicatioin, depending on the date of first disclousre of the invention you may have some time to file in Canada without priority to the US provisional patent application. More detailed information on the deadlines for filing a patent application in Canada is found on this page.
Searches. You can search Canadian patents online for free at the CIPO website. The user interface is not very user-friendly, but it works quite well. Patent applications in Canada are published (‘laid open’) 18 months after filing.
Patent term. Canadian patents are valid for 20 years from the international filing date. As there are no provisional patent applications in Canada, there is no de facto extension of patent rights to 21 years as there is in the United States.
Maintenance fees. Patent maintenance fees (or ‘patent annuity fees’) for Canadian patents are about one half of US maintenance fees, but they are payable annually. The amount of each Canadian patent maintenance fee depends on whether the applicant is a ‘small entity’ or a ‘large entity’. Detailed information on the ‘small entity’ size and declaration rules for Canadian patents is found here. Details of the amount of patent maintenance fees in Canada are found on this page.
Maintenance fees for Canadian patents are payable annually for both pending applications and allowed patents.
In Canada the first patent maintenance fee is due 24 months after international filing date of the patent. Subsequent patent maintenance fees are due on successive anniversaries of these dates.
If you have missed a deadline for paying the patent maintenance fee it may be possible to reinstate the Canadian patent up to 12 months after the missed deadline by paying a small fee and the applicable maintenance fee. However, while this is possible it should be used only in exceptional circumstances and is not a wise strategy.
If the International Filing date for a patent filed in Canada is 11 or 12 months after the priority date, then the deadline to make the first annual Canadian patent maintenance fee payment is 5-6 months after the 30 month national entry deadline. Care should be taken as this date may occur sooner if the international filing has been made early in the priority year.
Prior to grant, the Canadian patent mainteance fees must be paid by the Canadian patent agent who is the designated agent on the patent.
After the Canadian patent has been granted, the mainteance can be paid by anyone.
Small Entity or Large? The government fees payable for Canadian patents depend on the size of the entity that is the applicant (or patentee, after grant). There are only two categories: large and small entities. In rough terms ‘small entities’ pay half the fees of ‘large entities’. For Canadian patent matters a small entity has under 50 employees or is a university. It is very risky to claim small entity status if you do not qualify – previous cases have held the patent invalid as a result. We strongly recommend only claiming small entity status when it is extremely clear that it applies to your circumstances. More information on the details on the small entity status rules for Canadian patents is found here.
Ownership/entitlement. For Canadian patents, the applicant is the owner of the patent rights – it need not be the inventor(s), and will not be the inventor(s) if the rights have been assigned to an employer or other entity. The applicant for a Canadian patent must file a Declaration of Legal Representative (this has replaced the earlier, and much more cumbersome, Declaration of Entitlement) in which the applicant confirms that it is entitled to apply for the rights claimed in the patent application. Detailed information on the Declaration of Legal Representative for Canadian patents including a template is found here. Ownership of patents in Canada is transferred by assignment which must be filed with the Canadian patent office. The Canadian patent office requires that the signatures on assignments be witnessed (but not notarized). Detailed information on assignments for Canadian patents including a template is found here.
Provisional patents. There are no provisional patent applications in Canadian patent practice. It is common to file a patent application in Canada that claims priority to a US provisional. However, in this case the deadline for filing the patent application in Canada is the earlier of 12 months from the date of first disclosure of the invention or the US provisional patent application (ie. when the US utilty patent must also be filed). The deadline for filing a Canadian patent that claims priority to a US provisional is not 12 months from the US non-provisional filing.
Design patents – industrial designs. Called “design patents” in the United States, they are called “industrial design registrations” in Canada. These rights protect the ‘non-functional aesthetic features’ of an article or design. Strictly speaking these industrial design rights are not ‘patent rights’ at all in Canada as the protection arises from the Industrial Design Act and not from the Patent Act, and registering a design patent (industrial design) in Canada is more akin to registering a trademark or copyright than it is to registering a patent. The great news for applicants is that the protection is available relatively readily at modest cost. Much more information on design patents in Canada including deadlines, requirements and costs is found here.
