A Canadian patent does not protect your rights in foreign markets. To protect your rights as the inventor in other countries where your invention will be marketed, you should apply for a patent in those countries.

The patent rules in foreign countries may be different from the rules in Canada. For example, in many countries you will not be able to obtain a patent for an invention that has been disclosed to the public before the filing date of your patent application. This means that you must not, for example, sell, advertise, display, or publish your invention until you have filed an application for a patent.

You can apply for a foreign patent either within Canada through the Canadian Patent Office at the Canadian Intellectual Property Office (CIPO) by filing an international patent application under the Patent Cooperation Treaty (PCT), or you can apply directly to the patent office of the country concerned.

Patent Cooperation Treaty

The Patent Cooperation Treaty (PCT) assists applicants who want patent protection for their inventions in other countries. The PCT allows you to file for a patent in as many as 153 member countries through a single application filed in Canada.

The PCT method consists of two phases:

1. International phase: an international application is filed, in one language, and one set of fees is paid.
2. National phase: patent protection is applied for in the national or regional intellectual offices in each of the designated countries. Applicable fees must be paid, including for translation into the languages of the designated countries.

Changes to the PCT came into force October 3^rd, 2022 regarding new translation requirements for Patent Cooperation Treaty (PCT) national phase applications and possibility for corrections after national phase entry.

Refer to CIPO for more information on filing for a foreign patent using the PCT method.

Fees

For the application to be recognized by the International Bureau (WIPO), it must also be accompanied by the required fees. You must pay all required fees within one month from the date that the international application is received; late payments are subject to an additional fee. Fees include:

• Transmittal fee ‐ This fee is intended to compensate the receiving Office (RO) for the work it does in connection with the international application
• International filing fee ‐ This is a fee paid to the RO for the benefit of the International Bureau when filing an international application.
• Search fee ‐ This fee is paid to the RO for the benefit of the International Searching Authority for carrying out the international search.
• Handling fee – This is a fee paid to the IPEA for the benefit of the International Bureau for filing a demand on an international application
• Preliminary examination fee ‐ This fee is paid to the IPEA for conducting an examination of the application.

Convention Priority

Canada is a member country of the Paris Convention for the Protection of Industrial Property, an intellectual property Treaty that allows an applicant for a patent to request “convention priority.” Requesting convention priority is normally referred to as claiming priority, or making a priority claim.

When a priority claim is made the first filing date of a patent application filed in one member country – in this case Canada – will be recognized by other Treaty member countries as long as the patent application is filed in those other countries within one year of the filing date. A priority claim may also be made for a Canadian application that is based on a Canadian application filed in the past.

Time Period for the Request for Priority

An applicant may make a request for priority before the earlier of:

• The date the applicant submits approval for the laying open to public inspection before the end of the confidentiality period, or
• The later of :
  • The end of 16 months after the earliest of the filing dates of the previously regularly filed applications (the priority applications); and
  • Four months after the filing date of the pending application.

More information on applying for a patent outside Canada and convention priority can be found from CIPO.

Patent Prosecution Highway

The Patent Prosecution Highway may be used by Canadian applicants to speed up the examination process for corresponding patent applications filed in the U.S. It can be used if your patent application has a corresponding patent application that is already deemed to be allowable by one of Canada’s PPH partners.

Other information on Priority Claims and filing an application in a foreign country

For applications filed after October 29, 2019:

• A certified copy of the priority claim document must be filed or made available through the World Intellectual Property Organization (WIPO) Digital Access Service.
• To restore priority in cases where the 12-month priority deadline is missed, you will be given an extra 2 months after the original 12-month deadline to make a priority claim if the deadline was unintentionally missed.

Because the rules are sometimes different in foreign countries and because it can be very complicated to apply for a foreign patent, you should contact a registered patent agent to help you patent your invention in foreign countries.

For more information about the patent process, refer to the Canadian Intellectual Property Office.

								
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