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.

The materials we require in due course are:

• 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 2004 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

• Filing a usual case $700 + GST tax (In our discretion, lower filing rates are applied to known associates and low overhead filings)
• Registration of a first assignment - $100 + GST tax
• Disbursements (Photocopies / Postage) - $35

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 30 month entry, the cost would total about $1200 Canadian (about $1050 US). With an assignment and an immediate request for examination the total would be $2050 Canadian (about $1800 US).

Please note that the above quoted costs are only general estimates and that GST tax is not included in the quotes. For an exact quote 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 CRITICAL under recent Canadian case law. Bill C-29

For your information, in light of the issues which arose through the Federal Court of Appeal decision in the Dutch Industries case and which have been discussed at great length by practitioners across the country, culminating in a cross-country teleconference Feb 23, 2006, our office has enacted a new policy that as of February 24, 2006, we will file ALL applications as LARGE entity to avoid indeterminable risk and legal costs to the client resulting from futile attempts to definitively settle ambiguity in the small entity definition in Canada.

For applications filed after Feb. 1, 2006, we are unable to take advantage of newly enacted Bill C-29 to correct the entity status payment of the application retroactive to the date of filing as Bill C-29 permits retroactive top-up payments (Small $ to Large$) only for applications filed prior to February 1, 2006. Legislation is still pending (and unknown) at this time which would be directed to deal with Small/Large issues after Feb. 1, 2006.

We believe the safest course of action which presents the least risk to our clients, with regard to a later costs of revie and possible challenge 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 infringement during the delay we can ask the Patent Office to accelerate prosecution.

Publication

In Canada patent applications are publish, or laid open, at 18 months from the priority date.