Nov 02 2011

On September 16, 2011, the United States enacted the Leahy Smith America Invents Act (AIA). The Act revises U.S. patent law in several important ways, including changing the U.S. patent system from “first-to-invent” to “first-inventor-to-file”, changing the way in which foreign priority claims are handled, and changing the calculation of the one-year “grace period”.

Certain provisions of the AIA, which come into effect in March of 2013, will put a foreign priority claim on equal footing with a U.S. filing date, thereby eliminating disadvantages traditionally associated with relying on a foreign priority claim in the U.S. patent system. These changes, combined with other features of the Canadian patent system, may make Canada a more attractive jurisdiction for patent applicants to make their initial patent filing.

Currently, the provisions of 35 USC 102(e) allow a U.S. Examiner to cite a pending or granted U.S. patent as a prior art reference against a U.S. application if the reference has a U.S. filing date which is before the date of invention of the application being examined.  This is sometimes referred to as “secret prior art”, since the prior art reference becomes effective as of its U.S. filing date rather than the date on which the prior art reference actually became public knowledge.

The effect of 35 USC 102(e) results in more favourable treatment of a U.S. filing date than an international priority claim, since a U.S. application with an early U.S. filing date has an enhanced power to block competing U.S. applications filed by other parties.  As a result, applicants often make their initial patent filings in the United States.

However, this strategy may no longer be relevant after March of 2013. The AIA does away with such “secret prior art” and introduces an “effective filing date”, which puts a foreign priority claim on an equal footing with a U.S. filing date.  For foreign applicants, there will therefore no longer be a strategic disadvantage to relying on a foreign priority claim.

With the elimination of the “secret prior art” provision in U.S. law, Canada becomes a more attractive choice as a jurisdiction of first filing for several reasons:

• a filing date can be quickly and inexpensively secured in Canada with only a minimum of formalities; there is no need for an inventor’s oath, an applicant’s declaration, or formalized drawings (the remainder of the application can be completed over the 12 months following filing in Canada);
• the Canadian Intellectual Property Office (CIPO), the United States Patent and Trademark Office (USPTO), and the patent offices of six other countries participate in a multilateral Patent Prosecution Highway program that can expedite examination in a participating country on the basis of an allowance from a Canadian Examiner, or an examiner at any other participating patent office; and
• Canada, like the United States, recognizes a one-year grace period for disclosures of the invention prior to filing, which provides a safeguard for applicants seeking to rely on the U.S. grace period.

As of March 2013, the AIA will also revise the existing one-year grace period in the U.S. in a manner that appears to encourage early disclosure of an invention. This is despite the fact that most of the world does not provide a similar grace period, which means it is always best to file a patent application before any disclosure is made. Nevertheless, for those who have already disclosed their invention, or those who intend to take advantage of the revised U.S. grace period, an initial filing in Canada may be an attractive choice.

An inventor who discloses his or her invention during the revised U.S. grace period will be protected against the effects of a subsequent third party disclosure for the remainder of the 1 year grace period (see 35 USC 102(b)(1)(B) and 35 USC 102(b)(2)(B) as amended). The resulting system therefore appears to reward the first party to disclose their invention during the applicable grace period, as it will lock in an earlier material date for the assessment of prior art in the United States.

The revised grace period in the U.S. will be calculated from the “effective filing date”, which is the earlier of the U.S. filing date or the priority date. In contrast, the Canadian grace period is only calculated from the actual Canadian filing date. Accordingly, if an inventor has disclosed or intends to disclose his or her invention before filing, the applicant can derive maximum benefit from the grace period offered in Canada and the United States if the first filing is made in Canada, as illustrated below:

U.S. Filing Date
Cdn Filing Date

Priority Claim
(1 year)

U.S. Grace Period
(1 year)

Cdn. Grace Period
(1 year)

As a result, practitioners looking to take advantage of the revised U.S. grace period would be best served by filing first in Canada, so as to prevent having the applicable Canadian grace period reduced by a later Canadian filing date.

Together, the changes introduced by the AIA and the features of the Canadian patent system make Canada an advantageous first filing jurisdiction for applicants seeking to protect their rights in the United States and internationally.

This article is for information purposes only and does not constitute legal or professional advice.

Back to blog overview

Tags: Patents