Changes in U.S. law introduced by the America Invents Act (AIA)
have shone the light on the issue of public disclosures of
inventions for patent applicants filing in Canada. While Canada
allows an applicant to file a patent application within one year
from the invention's first public disclosure, the effect of
such a public disclosure may now be quite different than in the
United States. As such, applicants with the intention of filing in
Canada should be aware of certain acts that may be more harmful to
their Canadian rights than they might expect. Fortunately, the
impact of these situations can be minimized with appropriate
internal management practices.
Applicants filing in European or Asian countries would typically
not consider it prudent to disclose an invention before filing a
patent application, as their patent rights could be jeopardized.
Even unintentional early disclosure will cause an irreparable loss
of rights in many jurisdictions. However, Canada is in a group of
countries that are more permissive in this regard. Thus, if early
disclosure of an invention takes place — be it by design or
accidentally — it may still be possible to obtain patent
rights in Canada and certain other economically significant regions
of the world.
Recently, changes in patent law in the United States under the
AIA have altered the patent landscape significantly, including the
provisions dealing with public disclosures prior to filing. While
the effect of many changes remains to be seen, it appears that
under some of these new provisions, an applicant's own
disclosure may, under certain circumstances, act as a
"shield" against intervening third-party disclosures, if
a patent application is filed somewhere in the world within one
year of that original disclosure.
However, the situation is considerably different in Canada,
where an applicant that has disclosed its invention must not only
be the first to file a patent application, but must also ensure
that the Canadian patent application is on file within one year of
the first public disclosure.
Specifically, applicants who render their inventions available
to the public anywhere in the world have one year within which to
obtain a Canadian filing date. This can be achieved by filing a
Canadian patent application or a Patent Cooperation Treaty (PCT)
application at any PCT receiving office. However, third-party
disclosures of the invention that precede the Canadian filing date
(or the priority date, if applicable) are fatally damaging to the
Canadian application. That is, unless it is by "a person who
obtained knowledge, directly or indirectly, from the
applicant," a public disclosure that occurs before the
Canadian filing date (or the priority date, if applicable) is
citable against the Canadian application, even if this disclosure
occurs subsequent to an earlier disclosure by the applicant.
Thus, from the perspective of obtaining a valid Canadian patent,
public disclosure of an invention prior to filing the Canadian
patent application would seldom be considered beneficial, and, at
best, can be neutralized if prompt action is taken. That is, to
preserve Canadian patent rights should an invention be disclosed to
the public anywhere in the world, a priority application should be
filed as soon as possible. If this priority application is
non-Canadian or non-PCT, a Canadian patent
application must be filed within one year of the public disclosure.
Unlike what may be the case elsewhere, the filing of the priority
application is not sufficient to avoid the
disclosure bar in Canada.
Practically speaking, therefore, applicants that intend to file
in Canada and are faced with a premature public disclosure should
file a priority application promptly following the disclosure
and ensure that the Canadian (or PCT)
application is filed within twelve months of the
disclosure in order to preserve their Canadian patent
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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