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21 September 2009
Although there are many similarities between US and Canadian patent law, the following significant differences can affect the key decision of whether to file in Canada.
Sections 28.2 and 28.3 of the Canadian Patent Act provide for a grace period for pre-filing disclosures originating from the applicant that would otherwise be citable for anticipation and obviousness. These sections contain common language that should be kept in mind when developing filing strategies. In particular, both sections refer to a disclosure that occurred "more than one year before the filing date". This 'filing date' is that of the Canadian application, not the convention priority date. In the case of a Patent Cooperation Treaty national phase application, the Canadian filing date is deemed to be the Patent Cooperation Treaty international filing date.
A typical hypothetical scenario that Canadian patent practitioners frequently encounter is that an invention was disclosed by the inventor (or someone deriving knowledge from the inventor) on, say, October 1 2007 and a US provisional (or regular) application claiming that invention was filed on September 1 2008, within one year of the disclosure. The question often posed is: can an application be filed in Canada on September 1 2009 which claims priority from the US application? Unfortunately, the answer is no. The fact that the priority application was filed within one year of the disclosure is irrelevant. The Canadian filing date must be no more than one year after the disclosure.
Practically speaking, this means that where there is a pre-filing disclosure, it may be prudent to file concurrently in the United States and Canada, since a priority claim does not extend the grace period for filing in Canada.
What constitutes a 'disclosure' is also defined by Sections 28.2 and 28.3 of the Patent Act. In Canada, a disclosure occurs when the subject matter defined by a claim in a patent application is disclosed "in such a manner that the subject matter became available to the public in Canada or elsewhere". A leading case on what 'available to the public' means where there has been a sale is Baker Petrolite Corp v Canwell Enviro- Industries Ltd (2002 FCA 158). In Baker Petrolite the Federal Court of Appeal laid out a number of principles governing when an invention has been made available to the public. One such principle is that a sale to the public alone is not always a 'disclosure' within the meaning of Sections 28.2 and 28.3. Thus, there is no absolute 'on-sale bar' in Canada. It is possible for an invention to be sold, but if, due to the nature of the invention, the product sold cannot be reverse-engineered to reveal the subject matter of the invention, there is no disclosure.
Therefore, US practitioners familiar with this methodology should keep in mind that even though the US on-sale bar may operate to prohibit a US patent from being obtained, it may still be possible to obtain a patent in Canada.
Terminal disclaimers are relevant in the context of double patenting. In Whirlpool Corp v Camco Inc (2000 SCC 67) the Supreme Court of Canada confirmed that there are two types of double patenting. One is same-invention double patenting, where the two claims are coterminous; the other is obviousness-type double patenting, where a claim is obvious in view of the other set of claims. Such an objection can be raised against parent and divisional applications. The objection can be raised regardless of whether the applications have a common priority claim.
Where a double-patenting objection is raised in Canada, the question sometimes posed by practitioners familiar with US law is whether a terminal disclaimer can be entered to overcome the double-patenting objection. Unfortunately, Canadian law does not include a terminal disclaimer practice. If a double-patenting objection cannot be overcome by argument, the claims will need to be amended to eliminate the overlap.
In practice, where an applicant has new claims that might be filed in a divisional or continuation application in the United States, it may be prudent in Canada to add those claims to the parent application and wait to see whether there is an objection that requires that the claims be divided out, rather than voluntarily filing a divisional application that may be subject to a double-patenting objection.
In light of these differences, the following Canadian filing strategies should be considered:
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