Canada

competent authority

Canadian Intellectual Property Office (CIPO)

(http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/home）

Canadian intellectual property law consists of patent law, trademark law, design law, copyright law, integrated circuit topography law, and plant breeder's rights law.

The Canadian Intellectual Property Office is responsible for patent law, trademark law, design law, copyright law, and integrated circuit topography law.

Treaties to which we are a party

 

The Canadian Patent Act only provides for utility patents (ordinary patents).

There are three types of applications:

Furthermore, there are two types of methods for amending a patent:

Applications can be made via the Paris route and the PCT route.

However, it can be extended for up to 42 months if the applicant pays an additional fee.

An English or French translation is required.

If you enter the Canadian national phase more than 30 months after your earliest priority date, you will be required to pay a reinstatement fee (CAD $200). You must also submit a statement that your failure to enter the Canadian national phase within 30 months of your earliest priority date was unintentional.

Application, specification and claims, abstract, necessary drawings

However, if a patent application is filed directly with the Canadian Patent Office rather than via the PCT, even if the directly filed patent application is filed in a language other than English or French, it will still be recognized as a valid filing date. However, the translation must be submitted within two months.

If the number of claims exceeds 20, an official fee of CAD 20 per claim will be charged for the portion in excess of 1 claims.

In the case of a PCT application, if the priority is restored in the international phase or the request for priority restoration is filed within one month from the date of the national phase, the priority date can be restored in the Canadian national phase application. Masu.

If the supplementary documents are fully included in the priority document, the applicant can complete the missing required documents without losing the original filing date. However, only Canadian direct applications are eligible; applications that enter the Canadian national phase of PCT applications are not eligible.

In the case of a PCT application, if a certified copy of the priority document was not filed during the international phase, the applicant must file a certified copy with the Canadian Patent Office.

The following items are subject to patent protection (Article 2 of the Act):

Please note that the following items are excluded from protection:

A patent application or documents submitted in connection with a patent application will be published 18 months after the filing date or the priority date, whichever is earlier. (Article 10 of the Act)

1 Request for examination

・Deadline for requesting substantive examination: Within 4 years from the PCT filing date or Canadian filing date.

・Deadline for requesting substantive examination of a divisional application: This must be done by the deadline for requesting substantive examination of the parent application (4 years from the parent application date) or 3 months from the filing date of the divisional application, whichever is later ( (including payment of examination request fee).

2 Screening details

Section 27(1) of the Act provides that a patent will be granted if all the requirements for the grant of a patent under the Act are met. Specifically, the following will be examined:

3　Office action response period

Four months. However, it can be extended for 4 months. However, as the acceptable reasons necessary for applying for an extension of the response deadline are strictly determined, an extension may not be granted for reasons such as the need for time to consider the office action.

4　Introduction of Request for Continued Examination (RCE) (applicable to cases requesting examination after October 2022, 10)

The number of Office Actions issued is limited to three and an RCE must be filed in order for the review to continue.

Additionally, after filing an RCE, the number of Office Actions issued is limited to two, and additional RCEs must be filed to continue the review. Please note that there is no limit to the number of RCEs.

5 Grace Period

A publication will not be considered for novelty in the following cases (Article 28.2(1)(a) of the Act):

Please note that this one-year grace period is calculated from the filing date, not the priority date.

6 Accelerated examination

There are three types of accelerated examination systems:

7 Submission of information on corresponding foreign applications

The examiner may request the applicant to submit information on the corresponding foreign application.

8 Applications related to nuclear energy

When a patent application is filed for an invention that the Commissioner of the Japan Patent Office recognizes as being related to the production, application, or use of nuclear energy, the content of the invention is notified to the Nuclear Safety Commission before it is examined. (Article 22 of the Act)

The Nuclear Safety Commission can recommend to the Commissioner of the Japan Patent Office that certain restrictions be imposed on the examination, etc. of the patent application concerned.

9 Claim format for medical use inventions

For medical use inventions, the following claim formats are allowed:

10　Double patent

If a parent application and a divisional application are both pending and you receive a notice of double patenting, the double patenting will be resolved by abandoning one of the applications.

On the other hand, if a parent application is registered and you receive a notice of double patenting in a divisional application, the double patenting will not be resolved even if you abandon the parent application.

1. Timing of correction

Amendments can be made at any time after the application is filed and before the patent takes effect (Article 38.2 (1) of the Act).

*Amendments can be made between notification of permission and payment of registration fee. However, if a permission notice was issued after October 2019, 10, amendments after the permission notification are generally not allowed, except for those to correct obvious errors.

*If the examiner determines that the corrected clerical error is not obvious when making an amendment after the notice of permission is issued, the amendment will not be allowed and the patent will be filed without the amendment being incorporated. If the applicant does not request withdrawal of the notice of permission, the deadline for payment of the registration fee will not change.

*If the amendment after the notification of permission does not correct an obvious error, the applicant may withdraw the notification of permission and request that the application be resubmitted for examination. Such requests must be made within four months of issuance of the permission notice.

*If a Notice of Patent Allowance has been issued, it is possible to restart the prosecution by withdrawing the Notice of Patent Allowance and paying the office fee (CAD $400) before paying the “final fee (Issue Fee)”. It becomes.

2. Scope of correction

Addition of new matters is not permitted. However, even if the matter is new, if it is clearly stated in the description that it is prior art, it is possible to amend the matter to include it in the description (Article 38.2(2)(3) of the Act).

When a patent application is filed in a foreign language other than English or French and a translation into English or French is filed, amendments made after the patent application are filed include the original specification (foreign language) and the translation of the specification ( (English or French) must be reasonably concluded from both sides.

3 Clarification of deadline for correcting errors

There are clear deadlines for correcting ``clerical errors.'' Specifically, the application of the deadline is limited to (i) correction of errors in priority claims, (ii) correction of errors in inventor and applicant, and (iii) correction of obvious errors in patents. (Rules 104-106).

4 Simplifying post-grant correction practices

Before paying the “final fee (issue fee),” it is possible to restart the prosecution by withdrawing the Notice of Grant and paying the office fee (CAD $400).

It is possible to file a divisional application before the patent for the original application is issued (Article 36 (2) of the Act).

It is possible to file a divisional application (grandchild application) from a divisional application.

The term of a patent is 20 years from the filing date (Article 44 of the Act).
Patents related to pharmaceutical products have a patent term extension system (effective September 2017, 9 due to amendments to the Canadian Patent Act).

*The extension period is determined as follows.
　Extension period = (marketing approval date - patent application date) - 5 years
　*However, for a maximum of 2 years

Any person may request reexamination after a patent has been registered (Article 48.1 of the Act). A patentee who is dissatisfied with a reexamination decision can appeal to the federal court (Article 48.5 of the Law).

*In order to prevent the grant of a patent, a third party can submit prior art (provide information). Additionally, a third party may file a request for reexamination to have a granted patent revoked. In Canada, there is no public notice system or opposition system.

In the event of patent infringement, the patentee can request that the wrongful act be stopped and compensation for damages (Article 55(1)(2) of the Act, Article 57(2) of the Act).

*As most lawsuits are handled in federal courts, the venue cannot be chosen in principle.

*The scope of discovery is narrower than in the United States.

*There is no jury system, and all trials are conducted by a judge.

*The principle of package estoppel does not apply in patent infringement lawsuits (i.e., the prosecution history is not taken into consideration when interpreting claims).

*In principle, there is no treble compensation.

The Attorney General of Canada or any interested party may bring an invalidity action against a patent or patent claims (section 60 of the Act).

*An infringement lawsuit is an independent invalidation lawsuit. Unlike in Japan, courts can determine patent invalidity.

*The effect of invalidity has a universal effect.

 

 

On June 2023, 6, the Government of Canada published the new patent regulations (SOR/21-157) in “Canada Gazette, Part II Volume 13, Number 2023”. This new patent regulation will come into effect from January 113, 2024.

 

On October 2022, 10, the Canadian Patent Act was revised and the new systems (3) and (1) below were introduced.

The new system will apply to cases where a request for review is filed after October 2022, 10 (the new system will not apply to cases where a request for review is filed by October 3, 2022).

Patent person: Patent attorney Yukari Hashimoto (Nagoya)
Design/Trademark Person: Patent Attorney Tomoharu Ishiguro (Tokyo)

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