Author: Joe Conneely, Conneely PC
A Canadian patent application will become abandoned for a number of reasons including: failure to respond to an office action (or requisition) by the due date specified in the office action; failure to pay a maintenance fee by the prescribed due date; failure to request examination and pay the required examination fee by the prescribed due date; and, failure to pay the final fee (or issue fee) by the prescribed due date. The date of abandonment will generally be the due date by which a response to the office action should have been filed, the maintenance fee should have been paid, the request for examination should have been made, and/or the final fee should have been paid. Each failure to act will result in a separate cause of abandonment. As such, a patent application may stand abandoned for multiple failures to act. An abandoned patent application may be reinstated within one year from the date of abandonment by submitting a request for reinstatement, performing the action that should have been taken (e.g., responding to an office action), and paying the prescribed reinstatement fee. If there are multiple causes of abandonment (e.g., failure to respond to an office action and failure to pay a maintenance fee), the patent application must be reinstated separately for each cause. The reinstatement fee prescribed by the Canadian Patent Rules is currently CA $200.00. This fee must be paid for each reinstatement if there are multiple causes of abandonment.
The one year reinstatement period may be extended by submitting a request for an extension of time and the prescribed extension of time fee (currently CA $200.00) before the reinstatement period expires. Note that a retroactive extension of time is not possible.
Recall that a patent protects the function of a product, that is, how the product works or how the product is made. It protects a new and non-obvious invention. The invention may relate to a new computer system, a software application, a method for making an item, a mechanical or electrical device, or a chemical composition. In addition, a patent application should be filed before the invention is publicly disclosed. Canada has a one year grace period after a public disclosure of an invention during which an application may be filed. Finally, a patent application must be filed in each country where protection is desired, for example, Canada and the United States.
For further information, or if you have any questions, please contact us.
At Conneely PC, we expertly draft, file, and prosecute patent applications. We have drafted and prosecuted patent applications covering a number of technologies including patent applications for wireless devices, energy management systems, batteries, automotive systems, mining equipment, software applications, user interfaces, electronics, communication systems, medical devices, unmanned aerial vehicles, industrial equipment, augmented/virtual reality systems, artificial intelligence systems, apparel, and wearable tech. If you need an experienced Canadian patent lawyer, agent, or attorney for prosecuting your patent applications in Canada, please contact us. By specializing, using the latest technology, and controlling overhead costs, we deliver great service for reasonable fees.
