How to Obtain a Patent in Canada
By Marcelo Sarkis, Senior Patent Agent - Canada & United States of America, Fellow of the Intellectual Property Institute of Canada, Founder of Prima IP
If you have created a product, process and/or improvements to it that you believe may be unique, innovative and valuable, you may want to consider obtaining a patent to protect your intellectual asset from being copied or used by others without your permission.
In Canada, patents are granted by the Canadian Intellectual Property Office (CIPO), which is responsible for administering the Patent Act and the Patent Rules. In this blog post, we will provide a step-by-step guide on how to obtain a Canadian patent.
Step 1: Conduct a patentability search
Before filing a patent application, it is recommended to conduct a patentability search to ensure your invention has not been previously disclosed. You can search for patents online using the CIPO's Canadian Patents Database or other patent databases, as well as other search engines for non-patent literature.
It is also a good idea to search for patents and non-patent literature in other countries, as your invention may be disclosed elsewhere. You may want to conduct international patent searches using the World Intellectual Property Organization's (WIPO) PatentScope database.
It is important to discuss your search results with a Patent Agent to determine the feasibility of filing a patent application based on the findings of the searches.
Step 2: Determine if your invention is eligible for a patent
To be eligible for a patent in Canada, your invention must meet at least the following criteria:
Novelty: Your invention must be new and not disclosed or available to the public in any way before the filing date of your patent application.
Inventive step: Your invention must not be obvious to a person having ordinary skill in the field of your invention.
Utility: Your invention must be useful.
Step 3: Prepare a patent application
A patent application must include the following elements:
A description of your invention, including drawings or diagrams if necessary
Claims that define the scope of your invention
An abstract that summarizes your invention
It is important to ensure that your patent application is clear and concise, as any ambiguity or lack of clarity may result in a rejection of your application. Working with a registered Patent Agent will help mitigate objections by the Patent Office.
Step 4: File your patent application
You can file your patent application in Canada with the CIPO, either online or by mail, together with payment of the application filing fee charged by the CIPO.
Once your application has been received, the CIPO will assign an application serial number and filing date. Upon requesting examination, your application will be assigned to a Patent Examiner, who will then review and assess whether your invention meets the criteria for patentability.
It is important to work with a registered Patent Agent to ensure your filing date is within the public disclosure time limits.
Step 5: Respond to any objections or rejections
During the patent examination process, the Patent Examiner may raise objections or issue rejections based on issues with the application or the invention itself. You will have the opportunity to respond to these objections or rejections by making amendments to the application (restricted based on the original content) or providing rebuttal to the Patent Examiner position.
It is important to work closely with your Patent Agent during this process to ensure your claims are as robust and broad as possible.
Step 6: Wait for a decision
Once the patent examination process is complete, the Patent Examiner will issue a decision on whether or not to grant your patent. If your patent is allowed and you pay the grant fee, you will receive a Patent Certificate.
If your patent application is rejected, you may appeal the decision.
Step 7: Maintain your patent application and patent
Throughout the application phase, you must maintain your patent application by paying annual fees to the CIPO. Once your patent is granted, you must maintain it by continuing to pay annual fees to the CIPO. Failure to pay these fees can result in your patent application/patent being deemed abandoned and your invention losing any available protection.
Obtaining a Canadian patent involves a detailed process requiring strategic planning. Work closely with a Patent Agent to assist you in identifying and securing your intellectual assets.
This is general information and should not be construed as professional advice. Every situation must be assessed to determine the best approach. Seek advice from a registered Patent Agent.
Marcelo founded Prima IP having practiced for 26 years at a leading intellectual property boutique firm and an internationally renowned multi-disciplinary law firm. Prima IP aims to provide quality intellectual property advice and services to multinationals, SMEs, start-ups and individual entrepreneurs with a focus on value.
Marcelo has extensive experience in the drafting and prosecution of patent applications and industrial designs in the pharmaceutical, chemical, oil and gas, medical device and mechanical areas and has advised clients on the procurement, management and assessment of intellectual property rights. His company, Prima IP is an ecosystem partner with offices in the Launch Kawartha space.