You control the timing of patent examination in Canada.
Examination of a Canadian patent application will not start until the applicant requests it. However, a request for examination must be made within 4 years of the the International Filing Date.
Fee Payable When Examination Requested
The exam fee is due when examination is requested, and not before. Therefore, deferring a request for examination defers substantial fees and expenses of prosecuting patents in Canada.
Excess Claims Fee Payable When Examination Requested
The fee for each ‘excess’ claim above 20 is due when when examination is requested, and not before. Therefore, reducing the number of claims before a request for examination will reduce excess claims fees.
Rarely Requested Immediately
It is rare to request examination when you first file your Canadian application, unless you have an urgent need to pursue infringers. Deferral of examinition saves money (both the examination fee, and subsequent prosecution costs), and sets you up to use the PPH (Patent Prosecution Highway), formally or informally, upon allowance of your claims elsewhere.
Fees for requesting examination of your patent application in Canada
The government fees are changing frequently. Please ask us for current values.
Requesting conventional examination:
Our fees: $340 CDN.
Accelerated Examination:
Our fees: $690 CDN (including request for examination, request to accelerate examination, request to be laid open to public inspection early); docketing & reporting.
Tip 1 for reduced costs:
Use deferred patent examination in Canada to lower patent prosecution costs in Canada. It is often a good idea to defer requesting examination in Canada in order to await the outcome of examinations and other jurisdictions. Deferring examination will allow the claims to remain open to amendment.
In addition, deferral of examination of the patent in Canada is particularly important if you want to use a ‘patent prosecution highway’ agreement to save costs by relying on the patent examination conducted in another country before CIPO. More on the PPH is found here.
If the need for examination arises, e.g. an infringement situation occurs in Canada, examination may be requested at that time.
When examination is requested in Canada, the claims and disclosure should be amended to incorporate all changes entered in other jurisdictions. Additional government and agency charges will apply for entering amendments, if not already effected prior to the request for examination.
Tip 2:
Use accelerated patent examination in Canada to lower patent prosecution costs in other countries. Accelerated patent examination is available in Canada on request. Nominal reasons suffice to obtain accelerated examination and a first examiner’s search and office action will typically issue in three months. This is an advantageous procedure as Canada is a PCT search and examination authority.
With the various patent prosecution highway agreements, and with the low threshold to request accelerated patent examination in Canada (and the low fees payable to CIPO) well-advised patent applicants with applications pending in multiple jurisdictions may want to use Canada as a preferred forum for rapid examination. For instance, if a PCT application has been filed without a claim of priority, but designating Canada, claims allowed by the Canadian patent office can be used to obtain accelerated examination before the US patent office under the US patent office Patent Prosecution Highway program.
Tip 3:
Remove excess claims above 20. Excess claims fees are payable for each claim above 20 when examination is requested. You can reduce costs by removing unnecessary claims.
