Going Global
Filing and Prosecuting
Your Patent Application Internationally
Patent 101: What is a patent?
Patent is a legal “fence” around your invention
An 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
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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
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When assessing if the potential invention is
new, useful, or inventive, patent office needs
a fixed reference time point
Moreover...
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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
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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 date
Priority date?
When the patent office moves the
reference time point to an earlier date, its
called priority in patentspeak
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Priority Date as the reference point
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To recap:
When the filing date doesn’t cut it, the
patent office uses the priority date as the
reference point
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This reference point is still called the claim
date
More on Priority
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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 application
2) Convention Priority: move date to an earlier
foreign application filing date
Convention Priority
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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;
OR
In 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 country
2) 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
countries
2a) Priority of at least 30 months from
international filing date during national entry
2b) Priority of up to 42 months if entering
Canada