Canadian Patent Prosecution Basics

In "Canadian Patent Prosecution ; Compared with U.S. Patent Law, the Differences Are in the Details," Marcus Gallie and Fraser Rowand write for the Fall 2005 issue of The Patent Lawyer that the novelty question in Canada is whether the subject-matter of the invention has been disclosed "in such a manner that the subject-matter became available to the public in Canada or elsewhere."

Therefore, some activities that may raise a disclosure bar in the United States, such as offering an embodiment of the invention for sale, do not necessarily cause a problem in Canada unless the activity makes the invention available to the public. Similarly, there are activities that may pose a novelty problem in Canada but not in the U.S., such as a public use or sale outside the United States that results in the subject matter of the invention becoming available to the public.

With respect to certain disclosures, like the United States, Canada provides a one-year grace period prior to the filing of an application in Canada during which such disclosures are not considered a bar to obtaining a valid patent. However, . . .
it is also important to note that the one-year grace period is measured back from the filing date in Canada, and not the filing date of any foreign priority applications.

. . . There is no statutory requirement for an applicant to file relevant prior art in Canada, although the Canadian Patent Office may request information relating to the prosecution of corresponding applications, including cited prior art. In any event, we recommend that the applicant always voluntarily disclose the prior art information at the outset since the examiner routinely will request it, it simplifies examination and prosecution, and, most importantly, should the resulting patent be subject to a validity challenge based on prior art, Canadian courts generally will refuse to consider any prior art which has already been considered by the examiner during prosecution.

. . . As a result of a March 2003 decision from the Federal Court of Appeal ("Barton"), small entity status is determined at the time that the patent regime is first engaged, normally at the time of filing the application and is not changed after that, regardless of subsequent transfers or licenses. In other words, the determination of entity status need only be made once.

Other aspects of Canadian practice to be aware of:

• No prosecution history estoppel.
• No excess claim fees or restrictions on multiple-dependant claims.
• No special treatment for means-plus-function claims.
• The deadline for entering national phase from a PCT application may be extended by twelve months with the payment of a government fee, although such extensions arenot available for regular Paris Convention filings.
• Signatures on an assignment need to be witnessed in order forthe Canadian Patent Office to record the assignment (unlessthe assignment has been recorded with the USPTO, in whichcase the Canadian Patent Office will accept the assignment ifsubmitted with the USPTO recordal page).