Since patent rights are territorial, a patent application must be filed in each country in which patent protection is sought. In addition, the novelty requirement means that a patent application must be filed prior to the earliest non-confidential disclosure of the invention anywhere in the world, subject to a one-year grace period in certain countries such as Canada and the US. However, the Paris Convention for the Protection of Industrial Property (the “Paris Convention”), to which 177 countries are signatories (including Canada and the US), allows an applicant from one contracting state to use the filing date of their first-filed patent application as the effective filing date for subsequently filing applications in other contracting states if each subsequent application is filed within 12 months of the first-filed application’s filing date. Thus, in general, so long as an initial application is filed prior to any public disclosure, and subsequent applications in other countries are filed within 12 months of the first application’s filing date, the applicant may make public disclosures of the invention as of the first application’s filing date without violating the novelty requirement for the subsequent applications. This article discusses some considerations for deciding where and what to file as the first application.

For many applicants, a provisional patent application is an attractive option for the initial application. A provisional filing can help defer a portion of the filing costs since it requires lower filing fees than a non-provisional application, and does not need to include a full set of claims (i.e. the numbered claim paragraphs found in each patent which define the scope of protection conferred by the patent). If it is properly drafted with an enabling disclosure, a provisional application allows the applicant to make public disclosures of the invention as of the provisional application’s filing date, since the filing date of the provisional application may be used as the effective filing date for subsequent applications under the Paris Convention. A provisional application is not examined and cannot result in a granted patent, but acts as a placeholder for the subsequent filing of a non-provisional application. While a provisional application cannot be filed in Canada, Canadian applicants can file a provisional application in Paris Convention signatories that provide a provisional filing option (e.g. the US). To claim the effective filing date of the provisional application, a non-provisional application in a Paris Convention contracting state or a Patent Cooperation Treaty (PCT) application needs to be filed within 12 months of the provisional application’s filing date. Descriptions of any developments to the invention conceived after filing the provisional application (and before filing the non-provisional or PCT application) can be added to the disclosure in the non-provisional or PCT application, although any specific claims directed to such developments will have the effective filing date of only the non-provisional or PCT application rather than of the provisional application.

Where the applicant does not anticipate making further developments to the technology or does not need to defer costs through a provisional filing, or simply wishes to expedite the patent protection process, the applicant may decide to start with filing one or more non-provisional applications in the desired countries, or a PCT application (the latter would be followed by national phase filings in the desired countries). Strategic considerations–including the particular countries in which the applicant desires protection, budget and timing of available funds, prosecution strategy considerations for increasing the odds of obtaining an allowance, and any applicable litigation considerations–may determine whether it is preferable to file directly in individual countries or via a PCT application. For example, a PCT application allows the deferral of national filings (and the associated costs) by up to generally 30 months from the priority application. A PCT application also results in a Written Opinion on patentability by an International Searching Authority which may help inform the applicant’s national phase filing decisions as well as prosecution during national phase. Thus, a PCT application may be preferable in cases where the applicant desires patent protection in a larger number of countries, or needs further time to make filing decisions and acquire funding to support the patent filing and prosecution costs.

Where the applicant requires patent protection in a country that is not a signatory to the Paris Convention, then the applicant must file a separate patent application in that country prior to making any non-confidential disclosure of the invention. A list of all of the contracting states of the Paris Convention can be found here.  Countries that are not parties to the Paris Convention may nonetheless recognize a right of priority in some cases, e.g. Taiwan allows a foreign applicant to claim priority to a first-filed foreign application in certain cases, e.g. where the first-filed foreign application is in a WTO member state and filed by a WTO member national or filed in a country with a reciprocal priority agreement with Taiwan

In some countries, foreign filing license requirements or restrictions may dictate that the applicant file their first application domestically, if one or more of the inventors or applicants reside in or if the invention was developed in that country. Countries with foreign filing license requirements or restrictions include: the United States, China, Russia, India, France, Italy, Spain, Greece, Singapore, Malaysia and Vietnam. Some countries have foreign filing license requirements and restrictions with respect to applications covering particular subject matter (e.g. national security or military). Canada has a unique foreign filing license requirement attaching only to government employees.  Canada’s Public Servants Inventions Act imposes certain requirements on government employees who make an invention, including a requirement to disclose in the patent application that she/he is a public servant, and a requirement to obtain the consent of the appropriate minister prior to filing a foreign patent application. Failure to comply with a country’s foreign filing license requirements or restrictions may jeopardize any patent rights obtained and/or may result in sanctions.

Since patent filing requirements and restrictions vary between countries and depend on the particular circumstances, if you wish to obtain protection abroad it is advisable that you consult with a patent attorney prior to filing a first patent application.

by Amy Fong