Should I request examination at filing in Canada or wait until closer to the deadline?

Unlike many countries, a patent examiner in Canada does not automatically examine a patent application upon filing. A request for examination must be submitted to the Canadian Intellectual Property Office together with a fee in order for the application to be queued for review by an examiner. After that, it takes another 12-18 months for an examiner to pick up the patent application for examination, and subsequent to that, often 2-3 more years of prosecution before a Canadian patent finally issues.

If examination is not requested until closer to the deadline of 4 years from filing, (or 5 years if the filing date is before the coming into force (CIF) date of the new Rules) issuance could be deferred by as much as 7 years from the original filing date, perhaps even longer if the application is subject to difficult prosecution. So why would an applicant want to wait this long to obtain an issued patent?

One good reason to put off examination until later is to defer costs. The request for examination costs $800.00 for a large entity and $400.00 for a small entity, plus a legal service fee. Since requesting examination also speeds up prosecution, the costs associated with responding to an office action are borne earlier than if examination were deferred. For example, if three office actions are received, this could amount to $2,000.00 to $4,000.00 that is payable within 2-3 years after the examination request. If an applicant needs more time to determine whether there is a market in Canada, it makes sense to defer this cost until they have a better understanding of the market potential in Canada. For patent applications covering technology subject to regulatory approval, it might make sense to defer examination until after approval is granted. This is especially pertinent to patent applications directed to new pharmaceuticals subject to approval by Health Canada.

Yet a further reason that a patent applicant may defer examination is to allow foreign counterpart applications to reach a more advanced stage of prosecution. This can provide an applicant with valuable information regarding the scope of the claims that can be attained in Canada. For example, if a counterpart U.S. application issues to patent, the issued claims can be substituted for the claims on record in Canada by way of voluntary amendment. After examination is requested, the examiner will review the new claims corresponding to those that issued in the United States and often allow the application with only minor objections raised concerning formalities of Canadian practice. It may also be advisable at this stage to submit a “Patent Prosecution Highway (PPH) Request”. The submission of such a request allows an application to be examined out of its routine order based on claims issued in a country that is party to the PPH program, but can only be requested if a first office action has not yet issued. Advantageously, such request does not require any government fees. While there are instances in which placing issued U.S. claims on file does not expedite allowance in Canada due to differences in laws between the two countries, in most instances such practice can at a minimum place the application in better condition for allowance. Effectively, by using the PPH route, an application can remain pending for the time necessary to obtain an issued patent elsewhere and then examination can be expedited at such time. Not only does a PPH request speed up the process at this point, it also can save cost since the claims are based on those issued elsewhere and so usually only minor formalities are raised by the Canadian examiner.

However, there might be instances in which issuance should be sped up in Canada. Perhaps the applicant has a product or process covered by the patent application that has already been commercialized in Canada or is close to being market-ready. Or perhaps the applicant is aware of a competitor’s use of technology that falls within the scope of the pending claims and wishes to sue for infringement sooner than later. In either scenario, it makes sense to request examination without delay.

In fact, it might be advisable to speed up prosecution even further by requesting advanced examination in Canada. The cost of advancing examination of an application in Canada out of its routine order is $500.00. To advance examination, the application must be open to public inspection (which usually coincides with publication of a PCT application) and an examination request must be submitted along with the request to advance examination. For applications directed to green technology, no fee is required to expedite examination, although a statement must be made on the record that the application “relates to technology, the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources”. To avoid having to make such a statement, many applicants instead opt to pay the $500.00 fee for regular advanced examination.

Regardless of the specific route used to advance examination, speeding up the prosecution process potentially can result in a Notice of Allowance within 2-3 months from making the request and an issued patent within 9 weeks after paying the final fee. In a best case scenario, an issued Canadian patent could be obtained in as little as 6 months from filing, although about a year is more typical provided the claimed subject matter is patentable.

Thus, there are a number of options that can be pursued to tailor the speed at which you wish to obtain an issued patent. Whether to slow down or speed up the examination process involves taking each of the points raised above into consideration. If in doubt, I typically advise clients to forego making an examination request at filing. However, if no such request is made at filing, it is essential that you communicate this to your client and advise that the application will not be advanced until such a request is made and to let you know immediately if their patent strategy changes. Sending frequent correspondence to your direct clients to make them aware that examination was not requested can avoid future misunderstandings regarding the status of a Canadian patent application. Tracking the deadline properly is also essential. It should be kept in mind that for applications with a filing date before October 30, 2019 (international filing date for applications arising from PCT applications), the deadline for requesting examination is 5 years from filing, but for applications with a filing date after this date, the deadline for requesting examination is 4 years from filing.

My recommendation as to whether to request examination at filing or wait until closer to the deadline will vary depending upon your circumstances and so the above should not be taken as legal advice as the facts for each case differ. However, if you need assistance with making the decision, I am always happy to help.

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