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 Tips
For Managing Your Canadian Patent Rights During This Global
Economic Downturn
Jonathan Roch
While
the worst of the global economic downturn may be over, it
still is not
business as usual.
Credit may still be in short supply for some time to come and
many companies continue to look for ways to
cut
costs and improve cash flow.
When dealing with
intellectual property assets,
especially patents,
an obvious way
for companies to cut costs is to streamline portfolios and
reduce filings by, for example, limiting the geographic scope
of their patent protection. Given the inevitable up turn in
the economy, companies should ensure that these cost reducing
measures do not adversely impact the scope of protection
provided by their patent portfolio, which in turn impacts
their future revenue, market position and
business
growth.
There are a number of reasons why Canada should continue to be
part of one’s patent portfolio and there are options to
control and reduce patent costs in the short term.
Why Canada is an attractive country in which to obtain patent
rights
1. Canadian
Patent Office fees and legal fees are amongst the lowest of
industrialized countries.
2. There
is no limit to the total number of claims that may be included
in an application and claims can be added to the application
until issuance without incurring additional government fees.
3. Canada
has the ninth largest economy in the world and is poised to
come out of the economic downturn much sooner and on a much
stronger footing than many other countries. Of particular
interest, the number of businesses declaring bankruptcy during
this downturn has actually declined.
4. Canada
has a unique position as the
closest neighbor
and
largest trading
partner with the
world's
largest national
economy – the
United States.
5. Unlike
the
United States where restriction practice has been forcing
applicants to partition subject matter into more than one
application, and thereby increasing the costs to obtain full
patent protection, Canada’s prosecution practice can often
lead to broad-based and layered claims in a single patent
which translates into good value for every dollar spent.
6. Given
Canada’s history and diverse population it has
close
cultural and economic
ties with many
different regions of the world.
7. Given
Canada’s bilingualism (English
and French) patent applications can be filed and
prosecuted in either English or French.
8.
The
Canadian court system provides a relatively patentee friendly
environment and an inexpensive litigation testing ground for
patent owners considering enforcing their rights in the
United States or in multiple jurisdictions.
Approaches to control and reduce patent costs in the short
term
-
Late entry for Canadian National Phase
applications (extra 12 months for $200)
National Phase Entry into Canada can be delayed up to 42
months from the earliest priority date of a PCT application by
paying a nominal $200 late entry fee. This allows applicants
to spread out their overall National Phase Entry filing costs
or defer the decision of whether or not to file a Canadian
National Phase application.
-
Small entity applicants (savings of up to
$3,000 over the life of patent)
The Canadian patent regime provides applicants who qualify for
small entity status a 50% reduction when paying certain
government fees including the filing fee, examination fee,
final fee and maintenance fees. While many Canadian patent
agents have adopted a practice to only pay government fees at
the standard (large entity) rate, applicants who in
consultation with counsel believe they qualify for small
entity status may still take advantage of these reduced fees
which can represent a savings of up to $3,000 over the life of
a patent.
-
Reinstatement (extra 12 months for $200)
Reinstatement of an abandoned application is available in
Canada as a matter of right provided the prescribed
requirements for reinstatement are strictly complied with. If
a patent application or a patent becomes abandoned for failure
to pay a fee, request examination or reply to an Office Action
within the prescribed time limit, it can be reinstated within
twelve months of the date of abandonment. In respect of each
failure, the applicant must make a request for reinstatement,
take the action that should have been taken in order to avoid
the abandonment and pay a nominal $200 reinstatement fee in
addition to any other prescribed fees that may be outstanding
by reason of the abandonment.
-
Prosecution Management (six to eight years)
The cost of prosecuting a patent application to allowance can
account for a significant portion of the overall cost of
obtaining a patent. In Canada, examination of a patent
application is not automatic and can be deferred for up to
five years from the filing date of the application. In
addition, due to backlogs in examination, it typically takes
18 months to three years after examination has been requested
before a first Office Action is issued. By deferring
examination up to the five year limit, prosecution costs can
be effectively deferred by six to eight years from the
application’s filing date.
-
Maximize the potential benefits of the
Canada/U.S. Patent Prosecution Highway (PPH) pilot program
to reduce prosecution costs
The PPH can potentially be an effective tool for applicants to
reduce prosecution costs by relying on favorable allowed U.S.
claims. This pilot program has been extended until
January 28, 2011.
For more information see the March 2008 article
Canada
Joins the Patent Prosecution Highway.
-
Leverage Canada’s prescribed expedited
examination procedure to reduce U.S. prosecution costs and
potentially obtain broader claims
Expedited examination may be useful to obtain issued claims in
Canada that can be used to strategically facilitate
prosecution of a corresponding U.S. application. The
information required by the Commissioner to expedite
examination is minimal in that no commentary regarding prior
art is required to support that request and the $500
government fee is modest given the potential cost savings for
U.S. prosecution. It is possible to have
an issued Canadian
patent within 12 to 14 months utilizing expedited examination
depending on technology area.
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2009 Newsletter
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