The Canadian Patent System

Canadian IP Office

The governmental agency in charge of handling intellectual property rights in Canada is the Canadian Intellectual Property Office (CIPO) located in Gatineau, Quebec.

Filing Patents in Canada

In order to file a direct National Application in Canada, it is necessary to include: patent order form, specifications, claims, and any necessary drawings. In addition, any portion of the specifications not in English or French must be accompanied by an English or French translation. A simple power of attorney is required.

Patent term for patents is 20 years, and the utility model and design terms both expire 15 years from the filing date.

PCT National Stage in Canada

Canada is a member of the PCT and the Paris Convention. When an application is filed as a PCT National Stage application, the national stage entry deadline is 30 months from the PCT application’s priority date. This deadline can be extended by 12 moths (42 months total), upon paying extension fees. Filing power of attorney at the national stage is not mandatory, but other forms are required. There are no fees for excess claims.

Recent IP Legal Trends in Canada

With respect to the Canadian legal market, while it remained stable in the economic crisis, law firms have increasingly competed on the basis of lowering the prices of their IP filings. According to Canadian patent lawyers, many technology companies in Canada have substituted IP ownership originating from their own R&D departments with patented inventions that they purchase from existing patent portfolios.

A recent case law on Canada worth mentioning is the Amazon.com Inc. v. Commissioner of Patents case, addressing the issue of patentability of business methods. While Amazon successfully patented its one-click ordering system in the U.S., the Canadian Patent Office rejected its claims. On appeal, Canadian Federal Court found that this ordering system had practical applications beyond abstract ideas and considered this method patentable. While this decision favors computer related inventions in Canada and brings potentially good news to the IT sector, the Commissioner of Patents filed an appeal to it in November 2011.