May 25, 2021
This article is the third in a 5-part series on Protecting Your Intellectual Property. Check out other parts in the series:
Timing your patent or trademark application can be critical to the development of your innovation or brand. An IP professional can help you plan your IP strategy and make sure you don’t miss any deadlines. From a business perspective however, it’s important to understand a few key timeframes, including:
The Canadian Intellectual Property Office (CIPO) provides roadmaps for both patents and trademarks. While they focus on official milestones, they can also provide a foundational understanding of the process.
Note: The time frames below are general and approximate.
Filing for a trademark (TM) in Canada generally takes 1-2 years to register.
Before registration, an unregistered TM does have some protection. However, that protection is limited in scope depending on the jurisdiction of the province in which it is used. (A registered TM protection is federal, and therefore country wide.) The stages of a TM application are pre-filing, filing, opposition, and registration, as follows:
Filing for a patent in Canada takes about 3 years. The good news is that filling for your patent prevents other subsequent filers in that jurisdiction from obtaining a patent in the innovation. Additionally, as explained below, some protection begins after 18 months.
A key date to be aware of is the priority date. This date establishes the cutoff for prior art, keeps others from subsequently obtaining a similar patent, and starts the clock on the patent’s term. The priority date is the filing date. For Patent Cooperation Treaty (PCT) filings, described below, the priority date is the date of the first national filling.
Stages of a patent application include pre-filing, examination, publication, and award, as follows:
It takes about 18 months from the examination request for your application to be examined and a report to be issued. Often this is the first correspondence in a chain of communications between you/your agent and the patent examiner. You are typically required to respond within 3 months and the examiner has 5-9 months to respond, but this communication process can go much quicker. Canada does not limit the amount of responses. If your application is approved a patent will be issued.
This overview is from the Canadian perspective. While the process is similar in many jurisdictions, it’s important to be aware of distinctions in the jurisdictions you intend to file. In particular, when filling a patent through the Patent Cooperation Treaty (PCT) process, the PCT application must be filled within 12 months of the first national filing. Any national applications must then be filed prior to international publication, which occurs 18 months after the PCT application is filled. See the World Intellectual Property Organization (WIPO) FAQ page for more details.
Jared Sues joins ventureLAB as a law student at Osgoode Hall Law School where he serves as an IP Osgoode Innovation Clinic Coordinator and focuses his studies in intellectual property. Prior to law school Jared practiced as an engineer for 9 years in Canada and the US. Most recently, he summered at OWN Innovation, an IP law firm, and looks forward to helping the next generation of innovators with their IP strategic needs.