The Patent Act and Rules contain requirements for establishing a filing date for an application for a patent. In order for Canada to comply with the Patent Law Treaty, changes must be made to the Patent Act and Rules. These changes result in a reduction in the filing requirements and have the effect of reducing the administrative burden on applicants.
To establish a filing date, an application for the grant of a patent must contain an indication, in English or French, that the granting of a Canadian patent is sought, the applicant's name, the applicant's address or that of their patent agent and a document, in English or French, which on its face appears to describe an invention. The applicant must also pay the prescribed application fee.
Proposed new state
In order to establish a filing date, the applicant must provide an indication that the elements submitted are intended to be an application for a patent, information which allows the applicant to be identified and contacted and a document , in any language, that on the face of it appears to be a description. The application fee is no longer a requirement for establishing a filing date. The filing date for an application for a patent is the date on which the Commissioner receives the required documents and information or, if they are received on different dates, the latest of those dates.
If any of the required documents and/or information is not contained in the application, the applicant will be notified and will be required to submit the outstanding documents or information within two months after the date of the notice. If the applicant does not submit the missing documents and information within that two-month period, the application will be deemed to never have been filed.
If an applicant does not pay the application fee on the filing date of the application, the Commissioner will notify the applicant that the application fee and a late payment fee of $150 are required to be paid within three months of the date of the notice. If the applicant does not pay the application fee and the late payment fee within the three month period, their application will be deemed to have been withdrawn.
Although the document describing the invention does not need to be in English or French for establishing a filing date, the applicant is required to submit a translation into English or French of any part of the specification or the drawings that, on the filing date, is not entirely in English or French. If the required translation is not submitted, the Commissioner will send the applicant a notice requiring the submission of the translated document within three months of the date of the notice. If the applicant submits the translation within the three-month period after the notice is sent, the translation will replace the original document. If a translation is not submitted within the required time the application will be deemed to be abandoned.
Reference filings are not permitted in the current Patent system.
In the new system an applicant may submit a statement to the effect that a reference to a specified previously filed application for a patent is being submitted instead of all or part of the specification or a drawing required to be contained in the application. The statement must identify the previously filed application by number and indicate the name of the country or office in which it was filed. It is proposed that this statement must be supplied at the earlier of:
- the later of two months from receipt of the earliest document or information required for establishing a filing date and, if a notice is sent, two months after the date of the notice; and,
- the filing date.
It is also proposed that the applicant must, within two months from the submission of the statement, submit a copy of the previously filed application to the office. If the previously filed application is in a language other than English or French a translation into English or French must be provided. If the required translation is not submitted, the Commissioner will send the applicant a notice requiring the submission of the translated document within two months of the date of the notice. If the applicant meets all the requirements, the specification or drawing in the previously filed application are deemed to have been contained in the application on the date on which the statement is received.
Addition of missing parts
The addition of missing parts is not permitted in the current Patent system.
Where an application is missing a part of the specification or a drawing referred to in the application, the applicant may add the missing part to their application by submitting the addition along with a statement indicating that the addition is made under section 28.01 of the amended Patent Act. Within specific time periods the Commissioner may also notify the applicant that part of the description or drawings appears to be missing. Applicants have the later of two months from the date of a notification from the patent office or two months from the earliest date on which the Commissioner receives any document or information required for establishing a filing date to add the missing part to the application.
Where the missing part and drawing are completely contained in a prior application on which priority has been requested, the applicant may submit the missing information without affecting the filing date. Where the parts being added are not contained in a prior application on which priority has been requested, and the request is not withdrawn before the prescribed date, the missing parts will be added to the application and the filing date will be the later of the date on which the addition is received and the filing date (where other filing requirements have not been met before the addition of the missing part is requested).
For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.
- Application for Patents – Section 27 of the Patent Act (not yet in force)
- Reference to previously filed application – Section 27.01 of the Patent Act (not yet in force)
- Addition to specification or addition of drawing to application - Section 28.01 of the Patent Act (not yet in force)
Proposed Patent Rules:
- Documents not in English or French - Section 15
- Filing Date – Section 71
- Addition to Specification or Addition of Drawing – Section 72
- Reference to Previously Filed Application for a Patent – Section 67