Archived — Demystifying the U.S. and Canadian patent application processes

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:

• an explicit or implicit indication that you want us to grant you a patent
• a document in any language that appears to be a description
• the applicant's name (or some other identifying information)
• information allowing the applicant to be contacted (ie the applicant's postal address)

There are 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).

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• Since March 2013, the Hilmer doctrine is no longer in effect.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.

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.

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.