The US is presently the only country in the world still operating under a “first-to-invent” system, in which a patent is granted to the first person to conceive the invention. All other countries have a “first-to-file” system, in which a patent is granted to the inventor who is the first to apply to patent the invention, regardless of the date of invention. However, under the new America Invents Act (“AIA”), the US will change to a first-to-file system applicable to US applications with an effective filing date of March 16, 2013 or later. New worldwide novelty requirements will also take effect in the US which lend to some interesting scenarios in comparison with Canadian patent law.
Scenario #1: Pre-filing public disclosure by the inventor
The AIA requires worldwide novelty for claimed inventions–i.e. the invention must not have been made available to the public anywhere in the world. This novelty requirement is subject to a grace period exempting disclosures made by or derived from the inventor within one year before the “effective filing date.” Canada also has a worldwide novelty requirement subject to a one-year grace period for inventor disclosures. In Canada, however, the grace period exempts disclosures made by or derived from the inventor within one year before the “filing date” (not the effective filing date). As a result, if ABC Corp. wants both Canadian and US patent protection and it plans to make the first non-confidential disclosure of its invention on 16 March 2012, ABC Corp. will need to file a Canadian application by 16 March 2013. ABC Corp. will then have until 16 March 2014 to file a US application (which claims priority from the Canadian application to secure an effective filing date of 16 March 2013). The additional one year delay for filing in the US might be useful to defer costs. Note, however, that many countries do not have any grace period. If patent protection is desired in such countries, a patent application must be filed before any non-confidential disclosure.
Scenario #2: Pre-filing offer for sale or public use
The US novelty requirements are in some respects stricter than corresponding Canadian novelty requirements, because certain activities that would not trigger a novelty bar under Canadian patent law are considered novelty-destroying under the AIA. In particular, the AIA provides that the invention must not have been “described in a printed publication, or in public use, on sale, or otherwise available to the public” anywhere before the effective filing date (note that unlike current US patent law, under the AIA public use or sale activities need not be in the US to trigger the novelty bar). In Canada, the invention must not have been disclosed “in such a manner that the subject-matter became available to the public in Canada or elsewhere.” It is possible that an invention can have been “in public use” or “on sale” so as to trigger the novelty bar in the US, but not have been disclosed in such a manner so as to have been “made available to the public” to trigger the novelty bar in Canada. This difference should be kept in mind when determining when an application needs to be filed.
For example, suppose ABC Corp. plans to make a confidential offer for sale of its invention on 16 March 2012. This offer for sale could arguably start the clock running in the US (although it remains to be determined by a court as to whether a confidential offer for sale is indeed putting the invention “on sale” in accordance with the new AIA novelty provisions), but not in Canada, regardless of where the offer for sale was made. To be safe, ABC Corp. should file its US application before 16 March 2013. However, ABC Corp. could defer filing in Canada until one year after the earliest non-confidential disclosure of the invention.
Scenario #3: Pre-filing disclosure not by the inventor
The one year grace period in Canada exempts only disclosures made by or derived from the inventor. As a result, if ABC Corp. files a Canadian application for an invention, but XYZ Ltd. independently conceives the same invention and publicly discloses such invention prior to ABC Corp.’s filing date, then ABC Corp. would not be entitled to a patent given XYZ Ltd.’s prior disclosure. If XYZ Ltd. files a Canadian application after ABC Corp. files its application, XYZ Ltd. would also be out of luck–it would not be entitled to a patent because ABC Corp.’s previously-filed application would count as prior art against XYZ Ltd.’s application. Given XYZ Ltd.’s disclosure, the only way anyone would get a patent in Canada is if XYZ Ltd. files its application before ABC Corp. does and within one year after XYZ Ltd.’s disclosure–in such case, XYZ Ltd. would be entitled to a Canadian patent in accordance with the first-to-file rule.
One would assume that the incoming first-to-file system in the US would operate similarly. However, the AIA introduces some unusual exemptions for intervening disclosures that are not found in Canadian patent law. These provisions effectively remove from prior art any disclosures or applications filed by a third party after the original disclosure of an invention. Suppose XYZ Ltd. makes the original non-confidential disclosure of the invention. After the disclosure, ABC Corp., and then, XYZ Ltd. file US applications covering the same invention (all within one year after the original disclosure by XYZ Ltd.). In this case, XYZ Ltd. would be entitled to a US patent, even though XYZ Ltd. was not the first to file. The AIA therefore gives preference to those who make the original disclosure of an invention.
As demonstrated by these scenarios, the AIA provides modified first-to-file and novelty requirements which differ in some ways from Canadian patent law. Anyone interested in securing both Canadian and US patent protection should be aware of these differences when reviewing their invention disclosure, use and marketing plans and patent filing strategy. In any event, the best practice remains to file a patent application before any public disclosure of an invention, so as to preserve the option to protect the invention in as many countries as possible.
by Amy Fong