Best Practices for Canadian Patent Applications
The following is a non-exhaustive list of amendments to consider when adapting a patent specification for filing in Canada.1
- Consider removing “Object” statements.
- Include consistory clauses (also known as “statements of invention”) that are at least as broad as the broadest independent claims and which provide written support for the claims.
- Include a brief description of the background art that, as far as is known to the applicant, can be regarded as important for the understanding, searching and examination of the invention.
- Identify all trademarks.
- Documents referred to in the description must be available to the public and properly identified so that third parties can locate them.
- A claim may be held invalid if the description explicitly or implicitly makes a “promise” as to the utility of the claimed invention, but there is insufficient evidence that the claim will deliver on that “promise”. We suggest that the specification be reviewed and possibly amended to reduce this risk.
- Replace “characterized in that” language with “wherein”.
- Amend claims to provide antecedent basis for all claim elements.
- Amend multiple dependent claims so that they refer to preceding claims by number.
- Add multiple dependencies to improve claim scope.
- Add claims for non-claimed embodiments (no excess claim fees are currently payable in Canada).
- Remove reference numerals from the claims.
- Amend or delete claims to non-statutory subject matter (e.g. methods of medical treatment and higher life forms such as plants and animals are not patentable in Canada).
- For pharmaceutical inventions, introduce or amend claims to entitle the ensuing patent to be listed on the Patent Register in Canada, if possible.
If you would like to make one or more of the above amendments, or if you would like us to review a proposed application and make suggestions for amendments, please contact us.
1 While some are required to comply with Canadian practice, others are optional; not all may be appropriate for a particular case.