May/June 2009 / Features
Patenting in the Great White North
U.S. companies invest heavily in Canada and now represent approximately 70 percent of all foreign-controlled non-financial companies operating there. U.S. based investors often assume Canada’s patent laws are virtually the same as those in the United States, but such assumptions could prove costly. The Canadian Patent Act contains a number of peculiarities.
Canada is a first-to-file system; the United States is first-to-invent. In Canada, patent applications are not automatically taken up for examination. Instead, the applicant must request examination and has up to 5 years to do so once the application is filed. There is a backlog of applications awaiting examination, but Canada’s “special order” examination procedure is easy compared to the expedited process in the U.S.
In Canada, there is no duty of candor regarding the filing of prior art. Patent examiners can ask for details such as prior art regarding the prosecution of corresponding foreign applications. In the United States a single patent application can have many offspring, so-called “continuation” applications, often used to expand protection. In Canada, all requests to divide an application must come from the patent examiner.
There are other differences, enough of them so retaining a Canadian patent agent or lawyer at an early stage is warranted. This, the author says, will result in a smoother process, fewer rejections and broad, commercially relevant claims.
Philip Swain is a registered Canadian and U.S. patent agent with Fasken Martineau in Montreal. He has patent experience in life sciences including pharmaceuticals and biotechnology, as well as in medical devices, telecommunications, software, electrical and mechanical devices and designs. A Ph.D. in synthetic organic chemistry, he is a former in-house IP director, former medicinal chemist and named inventor on several vaccine patents. Contact him at pswain@fasken.com.
