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Going Global
Filing and Prosecuting Your Patent Application Internationally
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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)
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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
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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
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Patent Office: Point of Reference
● When assessing if the potential invention is new, useful, or inventive, patent office needs a fixed reference time point
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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
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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
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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
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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
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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
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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
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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)
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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
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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
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Convention Priority: Patent Cooperation Treaty (PCT)
International Patent Application? Does that mean an international patent that is enforceable anywhere in the world?
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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
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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.
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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
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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
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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
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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
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PCT National Entry in Canada
How long back can you get priority?
You may get a priority up to 42 months
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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
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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