CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
1. Intellectual Property Rights and Granting Procedure 1.1 Types of Intellectual Property Rights Inventions are patentable in Canada under the terms of the Patent Act. A patent is a statutory monopoly. When a patent is granted, the paten- tee has the exclusive right to make, use, sell and offer for sale the invention claimed in the patent for a period of 20 years from the filing date. The visual appearance of an invention may also be protected by industrial designs under the Industrial Design Act. Industrial designs are similar to design patents in the United States and protect the visual features, like the shape and ornamentation, of an article. An industrial design provides the owner with the exclusive right to make, sell or import articles embodying the claimed design or a design that does not differ substantially from the registered design. Trade secrets can also protect inventions. Trade secrets include any business information that has commercial value derived from its secrecy. In Canada, there is no federal trade secrets act or equivalent statute. Instead, trade secrets are protected under common law. 1.2 Grant Procedure To receive patent protection, a patent applica- tion must be filed with the Canadian Intellectual Property Office (CIPO). The Patent Cooperation Treaty process may be used to enter the national phase in Canada. The application must, amongst other things, describe the invention and how to make it. The application must also include claims setting out the scope of the invention, and any relevant drawings or figures. With a few exceptions, all documents must be filed in Eng- lish or French. The applicant must request that their application be examined within four years
of filing. During the examination process, the examiner may raise substantive and technical objections based on the requirements of the Pat- ent Act and the Patent Rules. If all objections are overcome, and all other requirements are met, the application will be allowed. Once an issue fee is paid, the patent will be granted. Industrial designs are also obtained by filing an application with CIPO. If the application is in order, the applicant will receive a notice of fil- ing that confirms the filing date. The application will then be examined to ensure that it complies with the statutory requirements. The examiner may raise objections to the application and the applicant has an opportunity to address the objections. If the examiner is satisfied that the design is registrable, the applicant will be noti- fied, and the design will be entered in the Reg- ister of Industrial Designs. Unlike patents and industrial designs, there is no application process for trade secrets. A trade secret arises by the fact that the information has been kept confidential and remains confidential. 1.3 Timeline for Grant Procedure In general, the patent application process can take between two and three years from the filing of the request for examination until the issue of the patent. This period can vary depending on several factors, including the number of objec- tions raised by the examiner and how long the applicant waits to request examination. An appli- cant has up to four years from filing to request examination (or four years and two months upon payment of a late fee). Examination may be expedited by paying an additional fee, or through the patent prosecution highway where a corresponding patent application has previously been allowed in a different jurisdiction.
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