CanadaPatentBlog

Every attorney practicing patent law has experienced the difficulty of explaining to clients the principles of patent law. This exercise is particularly challenging when the client, subjectively, has made a substantial advance which the attorney feels is not likely to support the grant of a patent.

Typically, when interviewed, the inventor will describe a number of significant features respecting his/her invention which he/she has developed and believes to be novel. Since these features apparently have not been incorporated into a marketable cartridge made by others, the inventor has the impression that a patent should be obtainable on such a device. As all attorneys know, unfortunately, that is not the full story. Even if the inventor has subjectively made an invention, it is necessary to explain to the inventor the distinctions of patent law and the reasons why a patent may not necessarily be granted. What follows is yet another attempt to present this explanation. Read the rest of this entry »

The priority filing under the world patent system, established by the Paris Convention, reserves the first filing date for a patent application for up to one year for use in making filings in foreign countries. A United States Provisional patent application can serve as such a priority filing. However, US attorneys on occasion may not understand an important feature of the world priority filing system.

A priority filing establishes the right to file for the same subject matter essentially anywhere else in the world, reserving the original filing date, so long as the other world filings are made within one year of the first patent application filed anywhere in the world. However, this privilege may only be acquired once. It applies only to the first filing made anywhere in the world in respect of specific subject matter.

Typically, a US attorney will file a Non-provisional U. S. application within the 12 month period running from the original filing date of the U. S. Provisional application. A temptation may exist, however, to delay filings elsewhere for up to a further year. If this is done, the benefits of the original application, the Provisional application filed as much as two years earlier, will not be available in Paris Convention countries around the world. This is because the second, US Non-provisional application will not have been the first application to disclose subject matter which is also reflected in the earlier US Provisional application.

The second Non-provisional application can give rise to priority rights.
But it can only do so in respect of new matter that has not appeared in an earlier patent application filed anywhere in the world.

Thus a danger exists that, where an American applicant has already
made a U. S. Provisional filing, they may wait for up to nearly a further year beyond the date of the US Non-provisional filing before sending instructions for a filings to be made in countries outside of the United States. They may delay mistakenly assuming that they have reserved a second priority filing date based on the second, US Non-provisional filing. This would be in error.

An application made in Canada on this basis will vulnerable to any third-party disclosure that has occurred before the priority date to which the Canadian application is entitled. That priority date only applies in respect of new matter, appearing first in a foreign application, within no more than one year before the actual Canadian filing date.

The Canadian law does provide a grace period of one year running back from the actual Canadian filing date. The Canadian grace period does not extend back from the original, US Provisional priority filing date. And this one-year Canadian grace period only shelters applicants from public disclosures that originate from themselves.

If a third party has disclosed an invention publicly before a proper priority date has been established, then it is too late to file an application in Canada. Between competing inventors, Canada is on a first-to-file system, and if an independent inventor discloses an invention publicly before a priority date which can be legitimately claimed in Canada, this third-party disclosure terminates the rights of all persons other than the third-party to make a patent application in Canada.

The solution is to always make foreign filings for which priority is to be claimed within one year from the original U. S. provisional filing date.

Additionally, a US attorney should always inquire of the client as to when the invention was first made available to the public by the applicant. Arrangements must then be made to have an application on file in Canada within a year from that first event. This is due to the fact that the Canadian grace period extends back only from the actual Canadian filing date, and is not tied to any priority claim.

“We frequently simply re-file US provisional applications to start new one year periods where clients are not ready to proceed.”

The above quotation is from a US attorney handling a PCT filing on behalf of a US resident inventor. This response was given when, as representative of the beneficial Canadian owner, I inquired about abandoning the US provisional application prior to the filing of a further application in order to restart the priority date. Unfortunately, the abandonment of a US provisional application, while automatic at the end of 12 months from the original filing date, cannot be arranged on short notice prior to that deadline.

The regulatory entitlement to voluntarily abandon the US provisional application is not entirely clear:

USPTO MPEP 201.04(b) Provisional Application
http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_04_b.htm#sect201.04b

The US patent office takes the position that a voluntary abandonment is not effective until it is entered by the office. They recommend that applicants allow a delay of three months for this to occur.

In these circumstances, what problems can arise by “ simply re-filing US provisional applications to start new one year periods where clients are not ready to proceed”?

Article 4C(4) of the Paris Convention provides that:

“ A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.”

Paris Convention Article 4 Priority right
http://www.uspto.gov/web/offices/pac/mpep/documents/appxp_4.htm#parart4

Countries are not obliged to adopt all of the limitations in this paragraph but most probably do. Canada certainly does. The right to restart a priority date is limited in the Canadian Patent Act by the following:

28.4 (5) A previously regularly filed application mentioned in section 28.1 or 28.2 (i.e. the right to claim a priority date for each respective claim) or subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be considered never to have been filed if

(a) it was filed more than twelve months before the filing date of

(i) the pending application, in the case of section 28.1