Canada: Canadian First Filing: Something Worth Considering

International patent strategies for many applicants have typically involved filing first in the United States to establish a priority claim. The practice of filing first in the United States has largely been based on the advantages that were provided under the United States patent regime prior to the changes brought in by the America Invents Act (AIA).1 Historically, a United States priority date had the unique ability to establish the date on which an application became prior art2 and for calculating the one-year grace period3 in the United States. These advantages have since become obsolete, giving rise to new filing strategies and, in particular, giving applicants reason to consider other jurisdictions for establishing a priority claim.

Like many things Canadian, the advantages of Canada as a first filing jurisdiction may have gone unnoticed for the most part. When in fact, Canada as a first filing jurisdiction offers applicants several distinctly Canadian benefits:

Canada's "Provisional" Application

The U.S. provisional application continues to be a mainstay in most international patent strategies for its ability to secure a filing date quickly and inexpensively. While the Canadian patent system does not include "provisional" applications per se, Canada does offer a process for securing an early filing date that is comparable in terms of speed, complexity, flexibility, and cost. A filing date in Canada can be secured with a minimum of formality requirements which can then be "completed" within the following 15 months into a regular application.4 Meanwhile, the "incomplete" application can serve as the basis of a priority claim within 12 months from filing, and will not be published so long as the application is withdrawn within 18 months of its filing.

Canada's Multijurisdictional Influence

Coordinating an international patent strategy across multiple jurisdictions takes both time and money; and the ability to leverage worldwide patent systems to streamline patent prosecution can be effective to manage these costs as well as to expedite patent protection. The Canadian patent system offers several mechanisms that can be strategically leveraged to influence prosecution in multiple jurisdictions. For example, the pace of examination in Canada can be slowed or accelerated to enable the applicant to strategically synchronize and align prosecution with corresponding applications in other jurisdictions. Moreover, the ability to leverage Canada's patent system has recently been extended to 16 international patent offices through the Global Patent Prosecution Highway Program,5 which allows examination in a participating jurisdiction to be expedited based on an allowance from the Canadian Patent Office. Through such mechanisms, the Canadian patent system offers a wide range of opportunities to leverage Canada's patent system to potentially influence patent prosecution worldwide.

Grace Period for Pre-Filing Disclosures — Two Birds with One Stone

Canada, like the United States and a limited number of other jurisdictions, provides a grace period for disclosures of the invention made prior to filing. Since the changes brought in by the AIA, the one-year grace period available under U.S. law has become more similar to Canada's, specifically, providing a one-year grace period for disclosures made by inventors. The distinction, however, is in how the grace period is calculated. In Canada, the grace period is calculated from the Canadian filing date whereas the U.S. grace period is calculated from the "effective filing date," being the earlier of the priority date or the U.S. filing date. As a result, applicants who have disclosed an invention before filing, will need to file a Canadian patent application within 12 months of the disclosure in order to benefit from the grace period. This same Canadian patent application can also operate to trigger the grace period in the United States so long as a U.S. application is subsequently filed within 12 months of the Canadian filing and priority to this application is claimed, i.e., within 24 months of the original disclosure. In effect, the Canadian first filing affords the applicant the benefit of a grace period in two jurisdictions.

The changes brought in by the AIA have given rise to new filing strategies offering applicants ever-increasing options for effectively protecting their assets worldwide. In view of these changes, and the distinct features of the Canadian patent system, applicants have reason to consider Canada as a first filing jurisdiction.

Footnotes

1 Leahy-Smith America Invents Act (AIA) enacted September 16, 2011, effective March 16, 2013

2 35 USC § 102(e), pre-AIA

3 35 USC § 102(b), pre-AIA

4 Canadian Patent Rules Sections 27.1 and 94

5 As of January 6, 2014, Canada participates in the Global PPH agreement

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.

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