While the patent examination procedures in Canada and the United States share many similarities, the two systems have gradually diverged over the course of their development, resulting in significant procedural and substantive differences. In practice, CIPO draws heavily on examination opinions from the USPTO, and patents granted by the USPTO generally also receive CIPO authorization.
The following highlights some key differences between the Canadian and US patent systems:
- First-to-file system
Both Canada and the United States adopt a first-to-file system. The United States switched from a "first-to-invent" system to a "first-to-file" system following the implementation of the America Invents Act in 2013. In both countries, early filing is crucial, as the citable nature of prior art depends entirely on the filing and priority dates. Neither country permits "backdating" to the date of invention to circumvent prior art, nor does it permit interference with the proceedings to challenge a competitor's concurrent application.
- Provisional Application
The United States has a provisional application system whereby applicants can file a simplified description, which is valid for 12 months and at a lower fee. Provisional applications do not require formal claims or declarations/affidavits and can enable inventors to establish an earlier priority date.
Canada does not have a provisional application system. However, Canadian applicants can achieve a similar effect by first filing a formal application, then filing a new application claiming priority within 12 months and abandoning the first application. This strategy allows applicants to further refine their invention while establishing priority and then decide whether to invest in a full examination. (Similar to the "domestic priority" system in the Chinese patent system)
- Accelerated review
The United States offers a variety of accelerated examination mechanisms, including Track One Priority Examination, PPH, accelerated examination, and special accelerated procedures for age, health, or green technology. Most mechanisms require additional fees and document submission.
Accelerated examination in Canada can be obtained only through the PPH or by submitting a request accompanied by a simple statement stating that "failure to expedited examination may prejudice the applicant's rights" and paying a government fee. No evidence, prior art search results, or relevant opinions are required. In Canada, accelerated examination typically results in an office action being issued within 3–4 months, while regular examinations can take 18–24 months or even longer.
- Request for Final Examination/Continued Examination
After the applicant modifies the claims in response to the examination opinion, the USPTO examiner will usually issue a "final rejection", restricting the applicant from further modifying the claims unless the applicant requests continued examination and pays the fee.
Canada also introduced a similar mechanism after revising its patent rules in 2019. If an applicant receives three office opinions and still fails to meet the requirements of patent law or regulations, they must submit a request for continued examination and pay fees. Applicants then have two more opportunities to submit a request for continued examination. However, Canada's system is relatively flexible, and substantive claim amendments made in the response can often avoid final rejection and expedite patent application.
- Claim amendment
In the United States, frequent claim amendments can lead to a narrowing of the scope of protection and become subject to a file wrapper defense.
In Canada, courts are not permitted to use examination records to interpret patent claims. However, following the 2022 amendment to the Patent Act, Canada introduced Section 53.1, which allows courts to refer to communications with the Patent Office when interpreting claims. This brings Canada closer to US practice.
- Claims Surcharge
Both Canada and the US charge a claim surcharge. If a US patent application has more than 20 claims, or more than three independent claims, a claim surcharge will be incurred. Multiple dependent claims will also incur an additional fee. Canada, on the other hand, only charges for claims exceeding 20, but does not charge for multiple dependent claims.
- Medical treatment
In Canada, medical method claims are not permitted, but can be rewritten as "use" to obtain approval. The United States, on the other hand, allows medical method claims.
- Submit prior art (IDS)
The US has a "duty of candour" requirement, requiring submission of prior art relevant to patentability. Canada does not have this obligation, requiring submission only upon the examiner's request. However, the examiner may request submission of prior art or procedural progress related to the corresponding foreign application. In practice, if an applicant proactively submits an examination opinion on a patent family, this may expedite the examination process at CIPO.
Since foreign patent records are public, examiners may refer to them but not necessarily record them. If an applicant proactively submits prior art, it will definitely be included in the examination file, potentially making it more difficult for the court to deny the validity of the patent in litigation.
- Divisional application
The United States generally allows the voluntary filing of divisional or continuing applications.
Canada, on the other hand, distinguishes between voluntary divisions and divisions filed at the examiner's request. Voluntary divisions may be invalidated under the "double patenting" principle, while divisions filed at the examiner's request are generally not subject to this risk. Therefore, in Canada, it is important to file all claims during the examination process to allow the examiner to raise unity objections.
- Partial continued application
The US allows a "Continuation-in-Part" (CIP) application to introduce new content. Canada does not allow this. If new content is required, a completely new application must be submitted, and the calculation of prior art effect will start from the new filing date.
- Patent term compensation
The United States has implemented patent term extensions (PTA) since 1999. Canada just introduced a similar system in 2025, allowing patent terms to be extended due to unreasonable delays by the patent office, but the calculation method and fee structure are different.
- Restoration of rights request system
Canada previously allowed unconditional reinstatement of an application within 12 months, but starting in 2024, CIPO revised its regulations to include a "due care" requirement. This makes reinstatement more difficult if the application is abandoned due to a failure to exercise due care. This is similar to the US requirement that abandonment must be "unintentional" or "unavoidable."
- Third party rights during the waiver period
In Canada, if a patent application is deemed abandoned, a third party who used or prepared to use the invention in good faith during the abandonment period may continue to use the invention even if the application is later reinstated, without infringing the patent. Similar protection in the United States primarily occurs during reexamination or reissue proceedings.
- PCT Grace Period Entry
Canada allows late entry into the PCT national phase, up to 42 months from the priority date, but from 2022 onwards, it must be proven that the delay was “unintentional.” The United States, on the other hand, does not allow unconditional late entry.
- Inventor's signature and ownership
In the United States, a declaration of inventorship or a letter of authorization must be submitted. Canada has simplified this process, allowing applicants to submit a "declaration of ownership" directly since 2007, without the need for the inventor's signature or registration of the transfer.
- Incorporation of References
Canada does not allow the incorporation of documents by "incorporation by reference", but you can cite public documents as long as they are searchable.
- Small Entity
The standard for small entities in the United States is fewer than 500 employees, and there is also a "micro-entity" qualification that allows for a 75% fee reduction.
Canada's small entity standard is less than 100 employees, and universities can also enjoy preferential rates, with a reduction of approximately 50%.
- Fee Adjustment
While the US Patent Office only significantly adjusts its fees every few years, Canada adjusts its fees annually for inflation and publishes them in advance in the Canada Gazette.
- Annual Fee
In the United States, annual fees for invention patents are paid 3.5 years, 7.5 years, and 11.5 years after authorization; in Canada, they are paid annually on the anniversary of the application date.
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