We do many Canadian convention filings of patent applications for United States attorneys. Below is some general information on convention filings.

If you have any specific questions please contact Sean Goodwin at (403) 203-0107, or via email.

Timing

Clearly, to retain Paris Convention filing priority dates, if any, we must receive the materials prior to expiry of the one year convention filing date. While some advance notice is preferable, in this business we recognize that the decision to file often ends up being made or confirmed at the last second. As long as we are given adequate warning, we could file electronically or by facsimile on the same day. A facsimile filing will have to be replaced with a clean copy afterwards. As a last resort, we could file using registered mail; the postmark date of which will then become the application's filing date.

Required Materials

The materials we require on filing are:

• A French or English language copy of the specifications, drawings, claims and abstract as filed (a diskette or email version is appreciated)
• Name and postal address of the inventor(s)
• Name and address of any assignee.
• Entity (Small or Large)

Preferred on Filing:

• Declaration of Entitlement:
•   Details regarding the Entitlement of the Applicant (if not the inventor(a)) to file
•   A copy of an assignment, employee agreement as evidence of same, alternatively, a Declaration can be prepared for signature by the Applicant how are asserting their entitlement

The materials we require in due course are:

• Declaration of Entitlement if not able to provide on filing. If not provided on filing, there will be a demand for such a Declaration of Entitlement in due course and which could result in additional cost. 
• Assignments - Although we prefer to receive them on filing, any copies of the assignment documents, including US recordation if available, can be submitted afterwards (in response to a completion requirement). If an assignee exists, but the documents are not in place, we can file in the name of your assignee and will then receive the completion requirement to provide the documentation. Assignments must be witnessed and include the witness's name and address (notarization, although superior, is not required).
• Formal drawings - These also can be submitted after filing in response to a completion requirement.

We do not need the inventor's signature on any filing documents. We may file the petition for application on behalf of the client without the applicant's signature. As long as you (the US attorney) are the agent for the client, and we are to act as your agent, then your instruction to file is sufficient and usual practice. We execute the paperwork on behalf of your client.

Estimated Cost

The approximate costs for filing a Canadian Convention filing (in Canadian Dollars) comprises:

Canadian Intellectual Property Office Fees (The fees quoted below are the January 2009 current fees payable to the Patent Office and may be subject to change.)

• Large Entity $400
• Assignments - $100 per document
• Request for Examination - Small Entity $400 (for existing applications) or Large Entity $800 (Canada allows for the Request to be deferred for up to five years from the international filing date).

Our Fees

• Amendment to conform the filing to Canadian standards (typically $200 - 400 + GST)
• Filing a usual case $450 to $650 + GST tax
•      (In our discretion, lower filing rates are applied to known associates providing clear instructions with low overhead filings)
• Registration of a first assignment - $200 + GST tax
• Disbursements (Photocopies / Postage) - $55 + GST tax

Maintenance fees are due annually; comencing on the second anniversary from the Canadian filing date.

Generally, as a Large entity, with no assignment, deferring examination and a usual convention OR 30 month entry PCT national, the cost would total about $1200 Canadian . With an assignment and an immediate request for examination the total would be about $2300 Canadian.

Please note that the above quoted costs are only general estimates and that GST tax is not included in the quotes. For a quote for particular situations please contact us.

Small Entity Status

Simplistically, under Canadian law, an applicant is a small entity if it is a person or entity that employs 50 or fewer employees. However, if there is an obligation, such as a license or transfer to a large entity (except a university), then even a small entity is considered a large entity.

Knowing the CORRECT ENTITY STATUS ON ENTRY IS importatnt.  While mistakes are correctable under changes in Canadian Patent rules, the cost to correct greatly exceeds having paid as large entity in the first instance.

We believe the safest course of action which presents the least risk to our clients, with regard to a later costs of review and any possible, future challenges of the patent validity based on a potentially incorrect entity payment, is to pay Large for all clients.

Office Actions

It is our policy to forward to you any Canadian Examiner's requisitions (our office actions), and ask whether you wish to prepare the response yourself, before we proceed to formulate one. If you have prosecuted the corresponding US case, then we would appreciate receiving copies of the actions, responses and amendments which would assist us in understanding what ever actions the Canadian Intellectual Property Office may forward.

Examination

Canada is very slow in examining patent application. Hence, after the request for exam you can expect a delay of 2 to 3 years for an office action. However, if there is evidence of prejudice to the applicant (such as an inventor's advanced age or infringement) during the delay we can ask the Patent Office and pay the official fee to accelerate prosecution .

The Patent Prosecution Highway is available if a corresponding and priority US case has moved favourable towards issuance including some of all of the claims being allowed.

Publication

In Canada patent applications are published, or laid open, at 18 months from the priority date.  One can strategically request an early laid open date.