On July 19, 2016, the Canadian Intellectual Property Office (CIPO) announced that it will be reducing the process for the issuance of patents. Currently, CIPO issues a patent approximately 10 weeks after payment of the final fee (sometimes called the “issuance fee”). In view of CIPO’s announcement, this period will be reduced to 8 weeks as of August 16, 2016, with a further reduction to 6 weeks planned to begin this fall.
This is a positive development for patent owners who will receive additional patent term. However, a shortened process for the issuance of patents also means that applicants will have less this time to file any divisional patent applications.
Under Canadian patent law, divisional patent applications must be filed before the parent application issues. Since CIPO is decreasing the amount of time between payment of the final fee and issuance of the patent, this means that applicants will also have less time in which to file divisional applications.
There are two types of divisional patent applications in Canada. Mandatory divisional applications are filed in response to an Examiner’s unity of invention objection. Mandatory divisional applications claim the subject-matter of additionally claimed inventions from the parent application. In contrast, voluntary divisional applications are filed where the applicant wants to claim an additional invention that was not claimed in the parent application. Voluntary divisional applications commonly arise where an applicant would like their Canadian application to mirror counterpart U.S. continuation applications (continuation and continuation-in-part applications do not exist under Canadian patent law).
If the filing of a voluntary divisional application is being considered, the applicant should speak to their Canadian patent agent as soon as possible upon receipt of the Notice of Allowance on the parent application to determine whether the proposed claims meet the definition for a divisional application under Canadian patent law.
If an Examiner finds that the subject-matter claimed in a voluntary divisional application is not patently distinct from the subject-matter claimed in the parent application, the Examiner will raise a double patenting invention against the divisional application. This type of objection can be fatal because terminal disclaimers, which exist in the U.S., do not exist in Canada. Therefore it is often preferable to insert the proposed claims into the initial application. If the Examiner then raises a unity of invention objection and a mandatory divisional application is filed, such a divisional application is shielded from a double patenting objection.
A Canadian patent application cannot be amended after payment of the final fee, except for the correction of clerical errors. Therefore applicants and their agents should carefully consider a divisional patent application filing strategy before paying the final fee in view of CIPO’s shortened process for patent issuance.