Going Global

Filing and Prosecuting Your Patent Application Internationally

Patent 101: What is a patent?

Patent is a legal “fence” around your inventionAn invention means you claim to have created something that:a) Is useful (Utility)b) Has not been disclosed before (Novel)c) Can be protected under the Patent legislation(Subject Matter)d) Inventive (Nonobvious)

Patent 101: What is a patent bargain?

You do not have a natural right to a patent

The government allows you to build this legal “fence” around your invention after carefully reviewing your application

The Dealmaker: Patent Office

● Patent office is the government body that advocates on behalf of the public

● They ensure the public is getting adequate bargain from the inventor

● Examine the patent application if it meets the standard of patentability — new, useful, nonobvious

Patent Office: Point of Reference

● When assessing if the potential invention is new, useful, or inventive, patent office needs a fixed reference time point

Moreover...

● You, as a potential inventor, need a time point after which you can claim your invention if it gets patented

● You need a date on which you can say you erected your fence

Filing Date vs. Priority Claim Date

● The first logical choice for such a reference point is the date on which the application is filed, or filing date, with the patent office

Filing Date vs. Priority Claim Date

Why?Because there are situations that give your application a priority datePriority date? When the patent office moves the

reference time point to an earlier date, its called priority in patentspeak

Priority Date as the reference point

● To recap:When the filing date doesn’t cut it, the patent office uses the priority date as the reference point

● This reference point is still called the claim date

More on Priority

● You get priority when the patent office moves the reference time point to an earlier date

● You can get priority in two situations:1) Internal Priority: move date to an earlier domestic application2) Convention Priority: move date to an earlier foreign application filing date

Convention Priority

● The filing date of the earlier filed foreign application becomes the claim date

● This priority applies to any patent claim that is supported by what you disclosed in the earlier foreign application

Convention Priority in Canada

In Canada, you may get this priority from an earlier filed foreign patent application through the Paris Convention or any bilateral treaties to which Canada is a signatory

Example: Patent Cooperation Treaty (PCT)

Convention Priority: Patent Cooperation Treaty (PCT)

Provisions of PCT allow for the filing of a single “international” patent application designating over 140 contracting states

By filing a PCT application, all PCT contracting states are automatically designated

Convention Priority: Patent Cooperation Treaty (PCT)

In a nutshell,

PCT prevents you from having to start from 0 every time you want to patent something in a different PCT designated country

Convention Priority: Patent Cooperation Treaty (PCT)

International Patent Application? Does that mean an international patent that is enforceable anywhere in the world?

Convention Priority: Patent Cooperation Treaty (PCT)

No!PCT, just like any other convention priority, PCT simply provides a way for securing an earlier filing date

Convention Priority: Patent Cooperation Treaty (PCT)

In Other words:You can file a subsequent application in another country for the same patent effective as of the date of first filing.

Filing International Patent Application

An international patent application must be filed either at the International Bureau in Geneva, Switzerland; ORIn a PCT Receiving Office in which at least one of the applicants is a resident or national

Filing a PCT Application in Canada

● Can file with CIPO to get an international filing date● At least one of the applicants must be resident or

national of Canada

Filing a PCT Application in Canada

● Must provide an indication that it is intended to be an international application

● Must include a part which appears to be a claim or claims; and a part which appears to be description of the application

PCT National Entry

Recall that a PCT application is not a worldwide patent. It is a system that helps you acquire a patent in each participating PCT state

PCT National Entry in Canada

How long back can you get priority?

You may get a priority up to 42 months

Canadian National Entry: 42 = 30 + 12

You said up to 42 months. Can you explain?The priority you get is earlier of:1) 30 months: PCT gives you a 30 month period within which to begin national filing procedures in the designated country2) 12 months: Canadian Patent Act provides a further 12 month deferral period

Conclusion

PCT is a robust convention priority that offers:1) International filing access to 140 designate countries2a) Priority of at least 30 months from international filing date during national entry2b) Priority of up to 42 months if entering Canada