Area of Law: Intellectual Property
Answer # 301
Obtaining a Patent in a foreign countryRegion: Ontario Answer # 301
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:
- International phase: an international application is filed, in one language, and one set of fees is paid.
- 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.
Refer to CIPO for more information on filing for a foreign patent using the PCT method.
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.
Amendments to the Patent Act – change to Priority Claims
On October 30, 2019 new Rules and Amendments to the Patent Act came into force, which make it consistent with international Patent law and include changes to the requirements for filing a patent application in a foreign country and priority claims.
For applications filed after October 29, 2019, these changes include the following:
- 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.
For more information about the patent process, refer to the Canadian Intellectual Property Office.
The rules are usually different in foreign countries and it can be very complicated to apply for a foreign patent. For legal assistance with your patent application, or other intellectual property matters, contact our preferred lawyers and see who’s right for you:
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