Wilson Lue LLP Patent & Trademark Agents, Intellectual Property Counsel

Patent filing strategies

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If you wish to obtain patent protection in multiple countries, you must file a patent application and obtain a patent in each country. Although certain “regional” patents exist, there is no single patent that provides worldwide protection for an invention.

Patent applications are usually filed before the invention is commercialized. At such an early stage your funding may be uncertain, or you may be undecided about where to seek patent protection. The costs associated with filing a patent application in each country of interest are not trivial: in addition to professional and government fees, translations must be prepared for countries that do not accept filings in your language.

Fortunately, Canada is party to international treaties that provide flexibility in filing patent applications abroad. This guide details international patent filing strategies that may be available to you to help you defer the decision to file in foreign jurisdictions, as well as their associated costs.

Before you read on, it is important to remember that most countries have an absolute novelty requirement for patentability, meaning that you must obtain a patent filing date for your invention before making any public disclosure of your invention. Failure to do so may prevent you from obtaining a valid patent. Some countries, including the United States and Canada, do permit you to make a public disclosure before you obtain a filing date. If a public disclosure is made, you must file your patent application in Canada and you must obtain a filing date in the United States no later than 12 months after the earliest public disclosure.

The best practice is to get professional advice before you reveal your invention to anybody.

We strongly recommend that if you share any information about your invention pre-filing, you use confidentiality agreements and physical safeguards to prevent dissemination of information about your invention. But not every disclosure is necessarily a public disclosure: if you provided information about your invention to a third party before filing a patent application, we can advise on whether this disclosure impacts the timing of a patent filing or affects the novelty of your invention.

Paris Convention filings

Permits you to postpone filing in second and subsequent countries by up to 12 months

Most cost-effective when already know you will only seek protection in a few countries

If you have already made a public disclosure, you may not be able to delay your patent filings using this mechanism

Most countries adhere to the terms of the Paris Convention for the Protection of Industrial Property. This permits you to file a first patent application in one participating country (or region) to obtain a filing date, and then take up to 12 months to file more applications for the same invention in any other participating country, claiming priority to your first filing date (often referred to as your “effective filing date” or “priority date”). These countries will treat your application as if it had been filed on the same day as your first application.

This strategy is useful in the case where a public disclosure of your invention is imminent: you can file the first patent application, disclose your invention, and still be able to file further applications in the 12 month period following your effective filing date in other countries without destroying the novelty of your invention. This enables you to defer the cost of filing additional applications for up to 12 months, and gives you time to do market research or patentability and infringement studies.

If you have already made a public disclosure before filing the first application, then you will only be able to file patent applications in those countries that provide you with a “grace period” after public disclosure to file your application. In Canada, the United States, and some other countries, you have 12 months from your earliest public disclosure to file a patent application. Some other countries provide a 6 or 12 month grace period for specific types of public disclosures. Many countries, however, do not provide any grace period at all.

For most of these grace period countries, you must file your patent application in that country before the expiration of the grace period, even if the 12 month Paris Convention period ends later. You cannot file your first application during the grace period, and then file the rest of your applications in the other countries after the grace period expires. If it has been close to a year since your earliest public disclosure, the next strategy discussed below might be a better choice.

Patent Cooperation Treaty filings

Permits you to postpone the process in individual countries by up to 31 months

Most cost-effective when you want to seek protection in several countries or keep your options open for more than 12 months

Can still be used if you have already made a public disclosure, but you may not be able to obtain protection in several countries; also, some countries do not participate in the PCT system

Sometimes the 12 month delay afforded by the Paris Convention strategy is not enough time to raise funds or decide which markets are of interest. In that case, a Patent Cooperation Treaty (PCT) application can be used to secure a filing date for all 150+ countries that participate in the PCT, while deferring the cost of national filing and translations for 20 to 31 months depending on the individual country, with the added benefit of a search conducted by a patent examiner. Note that the PCT application does not mature to a single, international patent.

Under the PCT, you can file your first patent application as a PCT application in a single language. In the first stage of the PCT process, the “international phase”, a search is made by an International Searching Authority for the most relevant prior art documents relating to the invention claimed in the application. After that search is done, you have the option of making amendments to your claims and requesting examination by an International Preliminary Examination Authority to obtain a preliminary examination report and make further amendments. Neither the search report nor the examination report is binding on national patent offices during the later national phase, but the reports do provide insight into the patentability of the invention and may enable you to accelerate the examination process in national patent offices. Generally, under the Paris Convention strategy, the first patent office in which you filed will not have had time within the initial 12 months to examine your application unless you paid for accelerated examination, if available in that country.

Within 20 to 31 months of your PCT filing date, you must enter the “national phase” or “regional phase” in each country or region in which you wish to seek patent protection. Most countries of interest (for example, those with the largest markets or manufacturing industries) provide at least a 30 month deadline. Your PCT application will be sent to the patent offices of the countries you have selected, and you will be required to comply with each country’s rules concerning fees and translations. Each national patent office will then examine your application for patentability under its own laws, but will treat your application as though it had been filed on your PCT filing date.

Like the Paris Convention strategy, the PCT strategy is useful in the case where a public disclosure of your invention is imminent. You can file the PCT application, make your disclosure, and then enter the national phase in one or more countries. The PCT application filing fees are higher than direct national filings, but you do receive the search report and additional time to commercialize your invention and make national filing decisions.

The PCT strategy is potentially more useful than the Paris Convention strategy when you have already publicly disclosed your invention. Although you are now restricted to obtaining patents only in grace period countries, your PCT filing date will count as the filing date for all of these countries; it does not matter that you will only enter the national phase 20 to 31 months later. You’ll still benefit from this delay to commercialize your invention and decide where you want to obtain patent protection.

Paris Convention + PCT filings

Gives you more time to decide whether to commit to the PCT process; you can still postpone filing in national patent offices by up to 31 months from your earliest filing date

Most expensive option, but defers the cost of PCT application by up to 12 months

You may not be able to delay the PCT filing by 12 months or at all if you have already made a public disclosure; also, some countries do not participate in the PCT system

The Paris Convention and the PCT can be combined. This doesn’t give you any more time to enter the national phase than the PCT strategy discussed above, but it does allow you to defer the greatest expenses a little more, and permits you to use a provisional application (see the discussion of provisional applications on at the end of this guide). This way, you will only incur the cost of drafting and filing the first application at the start, and then file the more expensive PCT application within the following 12 months. If your first application is a provisional application, you will still have the option of letting the application expire unpublished if you decide not to pursue patenting.

Just as with the Paris Convention strategy, you will maximize the benefit of this strategy if you have not yet made a public disclosure of your invention. You can file the first application, make your public disclosure, then file your PCT application within 12 months of the first application.

If you have already made a public disclosure before filing the first application, you can still file a PCT application, although you would then only enter the national phase in grace period countries. You must also ensure that the PCT application is filed within 12 months of your earliest public disclosure, even if the Paris Convention 12 month period ends later.

Regional patent applications

Some countries are party to regional conventions establishing regional patent organizations that receive, examine, and issue patents effective for their member countries. Some of these regional patents require validation in individual member countries in order to take effect.

The most significant regional patent is the European patent, governed by the European Patent Convention (EPC). Over thirty countries are party to the EPC. European patent applications are examined by the European Patent Office (EPO). Once granted by the EPO, the patent must be validated in the specific EPC countries in which protection is sought.

There are also regional patent organizations serving countries in Africa (African Regional Intellectual Property Organization and Organisation Africaine de la Propriété Intellectuelle) and Central Asia and Eastern Europe (Eurasian Patent Organization), and the Arab States of the Persian Gulf (Gulf Cooperation Council Patent Office). With the exception of the Gulf Cooperation Council Patent Office, these organizations are accessible via the PCT as well as by direct filing. Some individual countries that are party to regional conventions specify that if you wish to engage their patent system using the PCT, you must do so via their corresponding regional patent office rather than their national patent office.

What about provisional applications?

Sometimes it is necessary to make a hasty decision about filing a patent application before you fully commit to the patent process and to the publication of your patent application as part of that process. Patent applications are automatically published 18 months after their effective filing date, and sometimes you may wish to avoid this in the event you later decide to postpone the patenting process while still keeping your invention secret. You can choose to withdraw an application after it is filed, but only if you give notice to the patent office before it has begun technical preparations for its publication.

If you are concerned about your first application being made available to the public even if you decide not to pursue a patent, you can file your first application as a United States provisional application. A provisional application has a lower government filing fee, and expires automatically in 12 months. It will only be made available to the public if you decide to proceed with a regular patent application and claim priority to your provisional application. Even if you let a provisional application expire, you may still be able to file the application again as long as you do not make any untimely public disclosures of your invention. However, if someone else files a patent application for the same invention in the meantime, they may be entitled to the patent, and you may lose your rights.
The provisional application can be used as the first filing in the Paris Convention options described above.



Choosing a strategy

The filing strategies discussed above are not necessarily cost-saving strategies. Rather, they are deferral strategies that permit you to “buy” time to commercialize your product, raise funds, or conduct prior art assessments so that you can make a more informed decision about filing for patent protection. Once you have selected your filing strategy, there may be streamlining measures available to reduce the cost of prosecution in individual patent offices.

Generally, the more deferral opportunities you build into your filing strategy, the more you will spend in total; however, the costs will be spread over a longer period.

The filing strategies described above are not the only possible strategies. There are other factors that may affect your decision, such as your progress in research and development of your invention, and different national rules concerning patentability of specific types of inventions.