Demystifying the U.S. and Canadian patent application processes

Did you know there is a fast, simple and inexpensive way to get a filing date in Canada that is similar to the U.S. provisional process?

What are the facts?

Fact 1

There has been a process in Canada since 1996, which is similar to the process in the U.S., where you can get an early filing date in Canada without filing a complete patent application. To get a filing date for a patent application in Canada, you need to send us:

  • a request in writing that you want us to grant you a patent
  • a document in English or French that describes your invention
  • the applicant's name
  • the applicant's address (or their patent agent's address)
  • the filing fee
Fact 2

There are not many differences between the Canadian application process and the U.S. provisional application process as far as speed, complexity, flexibility and cost go (see below for details).

Fact 3

The U.S. provisional application process does not offer the same advantages that it used to since the America Invents Act (AIA) came into full force:

  • The AIA, which came into effect on March 16, 2013, now uses a "first-to-file system" instead of the old "first-to-invent" system, and takes away the need for dispute litigation. Under the U.S. first-to-invent system, disputes could come up about who was the first inventor. In the past, the process for settling these disputes seemed to favour applicants who first filed in the U.S.
  • Since March 2013, the Hilmer doctrine is no longer in effect. Under this doctrine, applicants who filed outside the U.S. first could not rely on their foreign filing date to prevent other applicants in the U.S. from patenting similar inventions. The AIA takes away this other pressure to file first in the U.S.
Fact 4

In both countries, only the subject matter that was in the original application as of its filing date can be linked with that filing date. While new subject matter can be added in the subsequent application, that subject matter will be associated with the new, later date.

Fact 5

Both Canada and the U.S. provide a grace period that protects an applicant if they have made certain disclosures (publicly discussed their invention) before their filing date. However, some disclosures may be covered in one country but not the other.

As a result, applicants who want to benefit from the grace period have to file an application in Canada within 12 months of the first disclosure. In the U.S., they may file an application up to 24 months from the first disclosure (if that application successfully claims priority over an application filed in the U.S., Canada or another member of the Paris Union within 12 months of the original disclosure). In the U.S., applicants can also convert a provisional application into a non-provisional application up to 24 months after the first disclosure if the provisional application was filed within 12 months of the original disclosure.

Comparison between Canadian and U.S. patent application processes

Summary of the process

U.S. provisional Canadian application
  1. File a provisional patent application.
  2. File a regular patent application that refers to the provisional application or convert the provisional application into a non provisional application.
  1. File a Canadian patent application.
  2. File a second Canadian patent application claiming (internal) priority over the previously, regularly filed application or pursue the prosecution of the original patent application.

Filing cost for the first application (regular)

U.S. provisional Canadian application

Filing: US$260

For every 50 pages in excess of 100: US$400

CAN$400

Filing cost for the first application (small entity)

U.S. provisional Canadian application

Filing: US$130

For every 50 pages in excess of 100: US$200

CAN$200

Cost of converting a provisional application into a regular application or completing an incomplete application

U.S. provisional Canadian application

US$140Footnote 1 and must include the filing fee for the regular application (described below)Footnote 2

US$70 (small entity)

If the application is finished within 15 months from the filing date: no cost

If the application is finished later than 15 months from the filing date: CAN$200

Filing cost for the second application (regular)

U.S. non-provisional Canadian application

Filing: US$420

*Additional fees may apply

CAN$400

Filing cost for the second application (small entity)

U.S. non-provisional Canadian application

Filing: US$210

*Additional fees may apply

CAN$200

Minimum requirements to get a filing date

U.S. provisional Canadian application

The application must include:

  • a written description of the invention
  • any drawing necessary to understand the inventionFootnote 3

The cover sheet and filing fee are not needed to get a filing date but there is an extra charge if these are given at a later date (within a time limit)Footnote 4

The application must include:

  • an indication that you want us to grant you a patent
  • a document in English or French that describes your invention
  • the applicant's name
  • the applicant's address (or their agent's address)
  • a filing feeFootnote 5

Time limit to file second application

U.S. provisional Canadian application

12 months

12 months

Can the application become a patent?

U.S. provisional Canadian application

No, unless it is changed into a non-provisional application

Yes

Can new matter be added into the second application?

U.S. provisional Canadian application

Only subject matter disclosed in the first application can be associated with the filing date of the original application.

New matter may be added but will be awarded a new claim date.

Only subject matter disclosed in the first application can be associated with the filing date of the original application.

New matter may be added but will be awarded a new claim date.

Can other amendments be made?

U.S. provisional Canadian application

Yes

Yes

Is the content of the first application made public?

U.S. provisional Canadian application

Not necessarily. If the provisional application is converted into a non provisional application, the non provisional application may be published. Otherwise, it is not.

Not if the application is withdrawn within 18 months of its filing. Otherwise, yes, at the end of 18 months.

Length of patent protection

U.S. provisional Canadian application

When converting the provisional into a non-provisional application: up to 20 years from filing of the provisional application.

When filing a non-provisional application claiming the benefits of the provisional application: up to 20 years from the filing of the non provisional application.

When pursuing the prosecution of the original application: 20 years from the filing date of the original application.

When filing a second application claiming priority over the original application: 20 years from the filing date of the second application.

Date modified: