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When an applicant decides whether to file a patent in Canada with the Canadian Patent Office (CIPO), it is important to consider that the laws in Canada are so similar to that of the US in particular that in about 90% of cases, you can take the same allowed claims and use them to streamline the process to grant in Canada without an objection from the patent office. Additionally, after your initial filing at the 30-month deadline, there is an additional 3 1/2 years to file the request for examination, which will enter your application into the queue to be examined, so hopefully, if your application is not granted when filing in Canada initially, during that 3 1/2 year period prior to requesting examination your US or European application will have been granted for use in Canada as well.
A pending application does offer some protection – i.e. a claim for infringement can include a claim for reasonable compensation for damages from the date of publication. However, you cannot sue for infringement until a patent is issued. Because Canada does not have continuation applications, some applicants like to keep their Canadian application pending as long as possible to keep the option of amending the claims further open for longer.
Here is the relevant provision of the Patent Act:
Liability damage before patent is granted
55 (2) A person is liable to pay reasonable compensation to a patentee and to all persons claiming under the patentee for any damage sustained by the patentee or by any of those persons by reason of any act on the part of that person, after the specification contained in the application for the patent became open to public inspection, in English or French, under section 10 and before the grant of the patent, that would have constituted an infringement of the patent if the patent had been granted on the day the specification became open to public inspection, in English or French, under that section.
The national phase deadline in Canada is 30 months from the priority date.
Since the examination can be deferred for an additional 3 1/2 years from your 30-month deadline in Canada, an amendment can be filed in conjunction with filing a request for examination to defer the additional fee.
A request for examination must be filed within five years of the international filing date if claiming priority in Canada?.
If a divisional application is desired in Canada, then it must be filed before or at the time of paying the grant fee.
Voluntary divisional applications are permissible in Canada. However, they are not recommended because Canada does not have the equivalent of terminal disclaimers if there is a double patent allegation. If you have claims that you are considering for a divisional application, we should add them to the present application first and if the Examiner raises a lack of unity objection, then file the added claims in a divisional application. However, adding claims that have not been allowed in the US patent, prevent us from filing a PPH request.
In Canada the grant fee is due within six months of receiving the Notice of Allowance. Maintenance fees apply to pending applications and are due no later than the anniversary of the international filing date beginning on the second anniversary.
Official Filing fee: $165 (USD)
Official Examination fee: $325 (USD)
Official Examination fee (CIPO was ISA): $80 (USD)
Official Extension fee: $165 (USD)
Official Reinstatement fee: $165 (USD)
Official Issue fee: $125 (USD)
Official Maintenance fees (2-4 each year): $40 (USD)
Official Maintenance fees (5-9 each year): $75 (USD)
Official Maintenance fees (10-14 each year): $95 (USD)
Official Maintenance fees (15-19 each year): $170 (USD)