Despite their similarities and shared historical roots, the patent prosecution processes in Canada and the United States have evolved in distinct ways, resulting in notable procedural and substantive differences. Understanding these differences is crucial for applicants seeking to protect their inventions in both jurisdictions, as strategies that are effective in one country may not necessarily yield the same results in the other.
The following sections highlight some of the key distinctions that practitioners and applicants should be aware of when navigating the patent systems of Canada and the U.S.
First-to-file
Both Canada and the US have a "first-to-file" system, with the US transitioning from a "first-to-invent" system in 2013 under the America Invents Act.
In both countries, it is important to file applications as soon as possible as the citability of prior art turns completely on the filing date and any priority dates. It is not possible in either country to "swear back" to an earlier date of invention to avoid prior art, or to challenge a competitor's co-pending application under an interference proceeding.
Provisional applications
The United States offers provisional patent applications, which provide a simplified filing option with a 12-month pendency period and lower filing costs. These applications do not require formal claims or an oath/declaration, allowing inventors to establish an early priority date.
In contrast, Canada does not have a provisional application system. However, Canadian applicants can achieve similar results by filing a regular application and then abandoning it after filing a subsequent application claiming priority to the first application within 12 months. This strategy allows applicants to establish an early priority date while developing their invention further before committing to full prosecution costs.
Expedited examination available in Canada
In the United States, expedited examination is available through several programs including Track One Prioritized Examination, the Patent Prosecution Highway (PPH), Accelerated Examination, and special status for age, health, or green technology. Most of these options require additional fees and documentation, although some, such as special status for age or health, may not require a fee.
In contrast, "accelerated examination" in Canada is currently being granted through several mechanisms including the Patent Prosecution Highway (PPH) or by advancing examination by filing a request with a broad affirmation that "the failure to advance the application for examination is likely to prejudice the Applicant's rights" and payment of a government fee. It is not necessary to provide any evidence or further details to support this affirmation, to perform any prior art searching, or to provide any commentary regarding the prior art or the application.
Advancing examination in Canada typically results in an Office Action issuing within three to four months, in dramatic contrast to the 18 to 24 months or more for regular examination.
Final Actions / requesting continued examination
Canada has implemented a prosecution practice that is more similar to the United States in that it encourages applicants to bring prosecution to a close. In the U.S., Patent Examiners typically issue a Final Action if claims are amended in response to an Office Action, which limits the applicant's ability to make further amendments without additional expense.
Similarly, under the 2019 Patent Rules amendments in Canada, the applicant will be required to file a request for continued examination and pay additional government fees if the Examiner has issued a third Office Action and the application still does not comply with the Patent Act or Rules. Following that request for continued examination, the applicant will then have two opportunities before being required to file a further request for continued examination.
However, the Canadian process remains somewhat more flexible, and filing substantive claim amendments in response to Examiner's concerns can often help avoid a Final Action and advance prosecution toward allowance.
Filing claim amendments in Canada
In the United States, applicants are discouraged from amending claims during prosecution as such amendments can strictly narrow the scope of protection.
Historically, this was not the case in Canada, and further, the prosecution history of a patent application could not be cited before the courts in Canada for the purpose of construing the claims of the patent. However, this changed with the 2022 amendments to the Patent Act which introduced a form of prosecution history estoppel through Section 53.1. This amendment allows courts to consider communications with the Canadian Patent Office during prosecution when interpreting patent claims, particularly when the patentee takes positions inconsistent with those taken during prosecution.
This represents a significant shift from Canada's previous approach and brings Canadian patent law somewhat closer to U.S. practice regarding file wrapper estoppel.
Excess claim fees
Canada now has excess claim fees like the United States, where an additional government fee must be paid for each claim in excess of 20. However, unlike the U.S. where additional fees apply for multiply dependent claims, in Canada, there is not a separate fee. Exploiting this multiple dependency feature can be very advantageous to Applicants.
Methods of medical treatment
Methods of medical treatment may not be claimed in Canada, though they can easily be amended to "use" format which is allowable.
Filing of prior art
There is no "duty of candour" regarding the filing of prior art in Canada. The Applicant's only obligation is to respond to specific requests from the Patent Examiner, though the Examiner is entitled to ask for details regarding the prosecution of corresponding foreign applications (i.e. prior art cited, state of any opposition proceedings, etc.). If the Examiner does request such information the Applicant is obligated to file a complete and honest reply. Often, no such request is made.
With much of the records of foreign prosecution now being available online, the Examiner may have access to a great deal of this information. This presents an interesting dilemma to the Applicant – because the Examiner may be considering the foreign prosecution anyway, there may be an advantage to voluntarily filing prior art to ensure that it is explicitly entered onto the record.
Historically, the Canadian courts have granted deference to the Patent Office and shown reluctance to reconsider art that the Patent Office has already determined to be insufficient to bar a patent. It is possible that the Canadian Patent Examiner could review foreign prosecution records electronically without making this review of record. If there is no record in the prosecution file, then the application may be limited by the foreign art without having the benefit of a record that would cause a court to treat the patent with deference as indicated above.
If the Applicant voluntarily files prior art with the Canadian Patent Office then it will certainly be on the record and hopefully, will make it difficult for others to successfully rely on it in court.
Voluntary filing of divisional applications
While it is common strategy in the U.S. to file voluntary divisional patent applications or continuation applications, this not the case in Canada.
In Canada the courts have raised a distinction between divisional applications which were filed voluntarily, and those which were filed in response to a request from the Patent Office. Voluntarily filed divisional applications run the risk of being held invalid under the "double patenting" doctrine. In contrast, divisional applications filed at the request of the Patent Office may be insulated from this problem.
Thus, it is preferable to put any "divisional"-type claims before the Examiner during prosecution, providing the Examiner with the opportunity to raise a unity of invention objection.
No "Continuation-in-Part" patent applications in Canada
In Canada, as in the United States, the Applicant is not allowed to add "new matter" to an application once it has been filed. Any amendments must be "reasonably inferable" from the application as originally filed.
In the U.S., Applicants may file a "Continuation-in-Part" patent application which introduces new matter to the pending application. In Canada, the Applicant must file a completely new patent application if he wishes to add new matter. The new Canadian application will have a new filing date, the citability of prior art turning on that new filing date (and any available priority dates).
Patent term extension
In Canada, a new Patent Term Adjustment (PTA) system was introduced in 2025, allowing for extensions of patent terms to compensate for unreasonable delays at the Canadian Intellectual Property Office (CIPO). This brings Canadian practice somewhat closer to the U.S. system, where Patent Term Adjustment has been available since 1999.
Under the Canadian system, patent terms can be extended beyond the standard 20-year term when CIPO delays prosecution beyond established timeframes. However, the Canadian system has some distinct features, calculation methods and costs compared to the U.S. approach limiting the possibility of an adjustment.
Reinstatement provisions
In the past, reinstatement of an abandoned patent or patent application was available in Canada within twelve months of the date of abandonment, regardless of the cause for abandonment. But with recent legislative changes, we now have a mix of time limits for late payment and reinstatement, some requiring applicants to demonstrate that the abandonment occurred despite the exercise of 'due care'.
It can be very difficult to reinstate an application under the 'due care' provisions. This brings Canadian practice closer to the United States approach, where applicants must establish that the abandonment was "unintentional" or "unavoidable."
Third party rights during abandonment
Canada's patent system includes provisions for third-party rights during periods when a patent application is considered abandoned. Under the Patent Act, if a patent application becomes abandoned and is subsequently reinstated, third parties who began using or made serious and effective preparations to use the invention during the period between abandonment and reinstatement may acquire intervening rights.
These rights allow the third party to continue using the invention without infringement liability, even after the patent is reinstated. This provides a form of protection to parties who acted in good faith during the period when the application was considered abandoned. In contrast, the U.S. system has a somewhat different approach to intervening rights, primarily focused on reissue patents and reexamination proceedings rather than abandonment and reinstatement scenarios.
Late PCT national phase entry
In Canada, if the 30 month PCT national phase entry deadline is
missed, you may file "late," within 42 months of the
priority date for the PCT application. Starting in 2022, this late
entry now requires applicants to establish that the failure to meet
the 30-month deadline was "unintentional"
—a significant change from the previous system where late
entry was available as a matter of right.
Inventors' signatures
In Canada, it is not necessary to have a Declaration or a Power of Attorney signed by the inventors, as required in the United States.
Furthermore, under the Patent Rules that were effective June 2, 2007, with further amendments in 2019 and subsequent updates, it is no longer necessary to register an assignment of rights from the inventors to the Applicant. The Applicant may simply file a statement or declaration to the effect that the applicant is entitled to apply for a patent.
Though there are advantages to having an assignment executed and registered, the filing of an statements or declaration of entitlement allows the Applicant to control and prosecute their Canadian patent application without having any documents signed by the inventors.
Incorporation by reference
In Canada, documents may not be expressly incorporated by reference, but a document can be identified provided it is available to the public. The Applicant must provide enough information so that the document can be located, and simply avoid the "incorporated herein by reference" wording.
During prosecution, the Canadian Patent Office allows amendments to wording such as: "as described in United States Patent Application Serial No. zz/zzz,zzz, incorporated herein by reference" with wording along the lines of: "as described in United States Patent Serial No. y,yyy,yyy."
Small entity
In the United States, a small entity must generally have fewer than 500 employees, with specific size standards varying by industry. The USPTO also offers a 'micro entity' status that provides a 75% reduction in most fees. To qualify as a micro entity, applicants must meet the small entity requirements, have filed fewer than 4 previous US applications, have a gross income less than three times the median household income, and not have assigned rights to entities exceeding the income threshold.
As of 2022, Canada has updated its small entity definition to include businesses with 100 or fewer employees. However, small entity status is still lost if the company is "controlled" by a large entity. Small entity status in Canada provides approximately a 50% reduction in most patent fees. Universities continue to be allowed to pay government fees at the small entity rate in both countries.
Fee increases
The USPTO typically adjusts its fees every few years, with significant increases occurring in 2020 and more recent adjustments. The USPTO has authority under the America Invents Act to adjust fees to recover operational costs, and generally provides advance notice of 30-60 days before implementing changes.
In Canada, CIPO reviews its fee structure annually, with increases typically tied to inflation. Canadian patent fee adjustments are published in the Canada Gazette with several months' notice before implementation.
Maintenance fees
In contrast to the U.S. where maintenance fees are due 3 ½ , 7 ½ and 11 ½ years after the date of issuance of the patent, maintenance fees are due in Canada on an annual basis, on the anniversary of the filing date. In the case of a PCT national entry application, the effective filing date in Canada is the PCT filing date.
COVID-19 impacts on patent deadlines
Both Canada and the United States implemented temporary measures to extend certain patent deadlines during the COVID-19 pandemic. These extensions have now expired, but they demonstrated the different approaches to force majeure situations in the two jurisdictions. Both patent offices have since established more permanent policies for handling extraordinary circumstances.
Electronic filing and digital transformation
Both the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) have made significant advancements in their digital services since 2020. Electronic filing is now the standard procedure for patent applications in both jurisdictions.
As of 2025, both offices have implemented comprehensive digital platforms, though the USPTO maintains some advantages in terms of advanced features and user interface design.
Conclusion
Understanding the key differences between Canadian and U.S. patent systems remains crucial for developing an effective cross-border IP strategy. While the systems continue to share many similarities, the distinctions highlighted in this article can significantly impact prosecution strategy, costs, and ultimately the scope of protection available in each jurisdiction.
In several respects, the Canadian system offers advantages over its US counterpart, including simpler advanced examination procedures with less documentation requirements, more flexible claim amendment processes without automatic final actions, the ability to use multiple dependency claims without additional fees, and a more streamlined approach to inventor declarations and assignments through Entitlement Declarations.
Read the original article on GowlingWLG.com
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
