CANADA Law and Practice Contributed by: Mark Davis, Andrew Skodyn, Sean Jackson, Kassandra Shortt and Mackenzie Stewart, Cassels Brock & Blackwell LLP
While an inventor can file a patent application on their own in certain situations, it is recom- mended that they obtain the assistance of a pat- ent agent. Preparing and prosecuting a patent application is time consuming and complicated. An applicant lacking the necessary experience and knowledge may fail to obtain a patent alto- gether or may obtain a patent that confers nar- rower rights than they may otherwise be enti- tled to. An experienced patent agent can help secure robust patent rights in an efficient and timely manner. CIPO has increased its filing fees for 2025. Standard fees for filing, requesting an exami- nation, and finalising the patent are roughly CAD2,172. Late fees, reinstatement fees, agent or legal fees, and maintenance fees are an addi- tional cost. Small entities may pay discounted rates. The process for obtaining an industrial design is generally faster than for a patent. Once an application is filed, the examiner’s report or a notice of allowance is typically issued within the first year. The proprietor of a design may file the application on their own, but the assistance of a qualified professional is recommended. Begin- ning in January 2025, the filing fee for an indus- trial design is CAD591.95. Associated fees, like advanced examination, maintenance and legal fees are additional costs. 1.4 Term of Each Intellectual Property Right The term of patent protection in Canada is 20 years from the Canadian filing date or the inter- national filing date for applications that entered from the national phase. Certificates of supple- mentary protection may be obtained for patents pertaining to the medicinal ingredient or com- bination of medical ingredients contained in a
drug that is approved for sale in Canada if there were delays in the regulatory approval process. Certificates of supplementary protection may provide up to two years of additional protection and take effect upon expiration of the patent. On 22 June 2023, Canada amended the Pat- ent Act to provide an additional term of protec- tion for patents whose issuance was impacted by unreasonable delays caused by CIPO. The amendments will come into force on 1 January 2025 and will apply to patents that were issued later than five years from the application filing date, or three years from the date of request for examination, whichever date is later. This amendment will only apply to applications filed on or after 1 December 2020, and the patentee must apply for the additional term of protection and pay the associated fee within three months of the patent issue date to obtain it. The length of the additional term of protection will be calculated by subtracting time delays caused by the applicant (late fees, delay in response to notices from CIPO, etc) from the total extra time over the three- or five-year threshold that it took to issue the patent. No additional term of pro- tection will be granted if the calculated time is a negative value or zero. CIPO notes that the earliest date that a patent could theoretically be eligible for an additional term would be 2 December 2025. Industrial design protection lasts for ten years from the registration date or 15 years from the filing date, whichever ends later. A trade secret may be maintained indefinite- ly, provided that the confidential information remains confidential.
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