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Priority Filings and US Provisional Applications

The benefits of a priority patent filing only arise in respect of the first filing of an application describing specific features in respect of an invention. This is a stipulation in the Paris Convention which has been adopted as part of the Canadian patent law.

Consequently, US attorneys who proceed by first filing a US provisional application, followed by a US non-provisional application a year later, but without filing an application in Canada within the priority year are exposed to the following limitations under Canadian patent law.

Canada does have a one-year grace period that shelters an application from self-originating public disclosures in the previous year. This partial one-year grace period extends back from the actual Canadian filing date. It does not extend back from the priority date associated with an application. Therefore, if a client, after making an initial US provisional application, decides to publicly disclose their invention, then this sets a one-year deadline from the date of first disclosure for the filing of a patent application in Canada.

This means that, in a case where a decision is made belatedly, after the priority year, to file an application in Canada, such an application can successfully be made only so long as it is filed within one year from the first occasion when the applicant, or someone deriving information from the applicant (or the applicant’s predecessor), has made the invention available to the public as explained on how do you patent an idea with InventHelp article.

However, if a third party makes a disclosure of the invention before the Canadian application is filed, such disclosure may terminate the opportunity to obtain a patent in Canada, depending on whether valid priority rights can be established.

The Canadian grace period does not shelter an applicant against disclosures by third parties. Canada is a first-to-file, absolute novelty country with respect to disclosures made by third parties. Accordingly, it is important to preserve the priority right by filing in Canada within the priority year. A properly establish priority right shelters a Canadian application against subsequent public disclosures made by third parties.

A trap exists, however, for US attorneys who, having gone beyond the priority year without filing an application in Canada, if they assume that they can claim priority benefits in Canada from a US non-provisional filing that has been preceded by a provisional US filing. Priority rights in Canada, as in most countries around the world, are only available in respect of subject matter disclosed in the first patent application containing a disclosure of such subject matter. If a US non-provisional filing were to duplicate a US provisional filing, no priority benefits could be claimed from the US non-provisional filing.

If the non-provisional US filing contains new matter, then priority rights will arise with respect to such new matter. But with respect to original matter included in an application filed more than a year previously, the priority right is lost in cases where a Canadian application was not filed within the priority year. The “priority year” is only the year extending from the first application filed in respect of such subject matter. For further reading please take a look at how to patent something with InventHelp.

In conclusion, where a belated filing is to be made in Canada beyond the end of the priority year, US attorneys should treat Canada as an absolute novelty, first-to-file country. A US non-provisional application should not be assumed to generate a fresh priority date.

Advantages and Disadvantages Provisional Patent Application

You have up to 12 months after filing a provisional application to proceed with a non-provisional application. If you do not file within that time period, your provisional application will be deemed to have been abandoned and you may lose certain benefits. The non-provisional application is entitled to the benefit of the original filing date of the provisional application. But to be sure, it is advisable to consult with a patent agency, such as InventHelp patent services, just in case.

Note: the provisional filing is not available for design patents.

Advantages of a Provisional Patent Application

Inexpensive to file – typically $80.

Easy to meet the filing requirements. The disclosure and documents can be very informal and generally do not require an attorney to prepare.

Provides immediate patent pending status.

Provides nearly equivalent patent protection for the first year as the more expensive utility patent application (having a comparable disclosure).

Minimum investment. In the event the invention is determined to have insufficient commercial value, the inventor is typically out only a few hundred dollars instead of thousands of dollars.

Disadvantages of a Provisional Patent Application

Expires after a year.

No extensions. Don’t ask for an extension because there is no one to ask. There is no one on the planet authorized to give you an extension. The one year limit was set in stone by Congress.

Provisional patent application generally do NOT have the full review and analysis in preparation as a utility patent application, particularly when prepared by the inventor.

When followed by a utility patent application, the total cost is more than if a utility patent application was filed instead of the provisional patent application.

Contact a registered InventHelp patent attorney today to be sure that your invention or idea is protected.