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
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months from filing, and will not be published so long as the
application is withdrawn within 18 months of its filing.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
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
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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