An anticipation rejection under Section 28.2 means the Canadian Intellectual Property Office (CIPO) believes your invention is not completely new. To overcome this, you generally need a patent lawyer to amend your patent claims or prove that the older documents (prior art) do not exactly match your invention.
Understanding Novelty and Section 28.2 Rejections
Getting a patent in Canada requires your invention to be completely new to the world. When you submit your application to the Canadian Intellectual Property Office (CIPO) in Ottawa, a patent examiner will search through older patents, published articles, and public documents. These older documents are legally known as “prior art.” If the examiner finds a single piece of prior art that describes your exact invention, they will issue an anticipation rejection under Section 28.2 of the Canadian Patent Act.
Receiving an Examiner’s Report with a Section 28.2 rejection can be incredibly frustrating. 📝 Whether your tech startup is based in Toronto, Vancouver, Calgary, or Montreal, you might feel like your hard work has been stolen. However, this type of rejection is actually a very standard part of the patent process. It simply means the examiner needs more clarity on what makes your specific invention different from what already exists.
We strongly recommend hiring a registered patent agent or a specialized patent lawyer from our directory to help you respond. Responding to CIPO requires complex legal arguments and precise adjustments to your claims. Doing it incorrectly can permanently ruin your chances of securing your intellectual property rights in Canada.
Step-by-Step Process for Handling Anticipation Rejections in Canada
When CIPO sends you an Examiner’s Report citing a lack of novelty, you are placed on a strict legal deadline to reply. Here is how a patent law firm generally approaches an anticipation rejection.
Step 1: Reviewing the Cited Prior Art
The very first step is to carefully read the older patent or article the examiner found. 🔍 Under Canadian law, for a prior art document to “anticipate” your invention, it must contain all the essential elements of your claim in a single document. If the examiner is combining two different documents to reject your claim, that is an obviousness rejection, not anticipation. Your lawyer will look for missing elements in the examiner’s single cited document.
Step 2: Identifying the Differences
Next, you and your patent lawyer will compare your invention to the prior art side-by-side. You must find at least one physical feature, step, or specific function in your invention that is completely absent from the older document. For example, if the older document describes a bicycle with two wheels, but your claim specifically includes a triangular third wheel for stability, your invention has a novel feature.
Step 3: Amending the Claims
Often, the best strategy is to narrow the scope of your claims. 📣 If your original claim was too broad, your lawyer will rewrite it to specifically include the unique feature that the prior art is missing. By amending the claims, you are telling CIPO: “We are only trying to patent this specific, newer version, which the older document never mentioned.”
Step 4: Submitting a Formal Written Response
Finally, your patent lawyer will file a formal response with CIPO. This document will include your amended claims and a written legal argument explaining exactly why Section 28.2 no longer applies. In Canada, you must respectfully point out the examiner’s errors or explain how the amended claims completely bypass the prior art.
How Much Does it Cost in Canada?
Responding to an office action at CIPO involves both government fees and professional legal fees. All amounts are in Canadian dollars (CAD) and reflect rates as of May 2026.
- CIPO Government Fees: Filing a response to an Examiner’s Report generally does not require a fee, but if you need to request an extension of time, CIPO charges $297.00 CAD.
- Patent Lawyer Fees: Having a registered patent agent or lawyer review the prior art, draft amendments, and write the legal arguments typically costs between $1,500 and $4,000 CAD, depending on the complexity of the technology.
- Excess Claim Fees: If your amendments increase the total number of claims beyond 20, CIPO charges an excess claim fee of $117.94 CAD for standard entities ($58.97 CAD for small entities) per extra claim.
How Long Does the Process Take?
When CIPO issues an Examiner’s Report with a Section 28.2 rejection, you are generally given exactly 4 months to submit your response. 🕑 If you miss this deadline, your patent application will go into “abandonment.” Once you submit your response, it usually takes the examiner another 4 to 8 months to review your arguments and either approve the patent or issue another report.
Anticipation vs. Obviousness
| Legal Standard | Canadian Patent Act Section | What it Means |
|---|---|---|
| Anticipation (Novelty) | Section 28.2 | Your exact invention is already described in one single older document. |
| Obviousness (Inventive Step) | Section 28.3 | Your invention is slightly different, but the difference is too obvious to patent. |
| Utility | Section 2 | Your invention does not work or has no practical use. |
Frequently Asked Questions (FAQ)
What is a “Grace Period” in Canadian patent law?
Canada offers a 12-month grace period for novelty. If you, the inventor, publicly disclosed your own invention (like publishing a paper or showing it at a trade show in Toronto), you have exactly one year from that disclosure date to file your patent application. If you wait longer, your own disclosure becomes prior art against you under Section 28.2.
Can a US patent be used as prior art in Canada?
Yes. Under the Canadian Patent Act, prior art includes any document published anywhere in the world, in any language, before your claim date. A patent filed in the United States, Europe, or Japan can absolutely be used by a CIPO examiner to issue an anticipation rejection.
What happens if my application becomes abandoned?
If you fail to respond to the Examiner’s Report within the 4-month deadline, CIPO will mark your application as abandoned. You generally have up to 12 months to reinstate it by paying a reinstatement fee of $297.00 CAD and submitting the required response, but it is a risky situation that should be avoided.
Do I have to travel to Ottawa to argue with the examiner?
No. Almost all communication with CIPO examiners is done through written correspondence (responses to office actions) or sometimes via a brief telephone interview conducted by your patent lawyer. You do not need to travel to the CIPO headquarters in Gatineau/Ottawa.
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