The rules are similar not identical to the United States.
Claiming priority from a patent filied outside of Canada (eg. a US patent application) you must file in Canada:
- Within 12 months of the initial filing;
- Within 30 months of the initial priority date for a Patent Cooperation Treaty (PCT) filing. This deadline can no longer be extended easily. The 30 month deadline can on occasion be extended by 12 months but only on proof that the delay was unintentional and payment of a additional fee. Contact us for details.
Not claiming priority, the deadline for filing your Canadian patent application is controlled by:
- Canada is an ‘absolute novelty’ jurisdiction vis a vis disclosures of the invention by third parties.
- In Canada, the ‘statutory bar’ for disclosures by the inventor is 12 months after the disclosure (ie. there is a 12 month grace period after disclosure of the invention by the inventor during which the inventor may file a patent application in Canada).
Disclosure by the inventor
The definition of what consitutes disclosure of an invention by an inventor is different in Canada from the United States. Specifically:
- Disclosure must be ‘enabling’;
- Any enabling disclosure to the public triggers the the statutory bar (12 month grace period). There are no specific requirements that disclosure constitue a publication in any particular nature, form, or location;
- There is no ‘on sale’ bar. Again, disclosure must be ‘enabling’. If the invention is in a black box, then offering the product for sale is not ‘enabling disclosure’. Conversely of course, if offering a product that emodies the invention for sale discloses the invention, then a mere offer to sell the product not under duty of confidence, anywhere in the world, is a disclosure;
- Publication of a US patent application by the USPTO (automatically at month 18) is disclosure of the invention for the purpose of the statutory bar in Canada . If the inventor has not previously disclosed the invention and did not file a PCT application but did file US patent application, then the absolute drop dead deadline for filing a patent application in Canada is likely 30 months after the US application was filed (12 months after the publication at month 18 by the USPTO).
If there is no claim to priority based on a patent application outside of Canada, the deadline for filing a Canadian patent application will be driven entirely by “novelty” considerations. Specifically, the key rules are:
a) Canada is an absolute novelty jurisdiction vis a vis disclosure of the invention by third parties. In other words, either you must file your Canadian application before the invention that it contains is disclosed anywhere in the world by anyone else or, you must be the first person to have disclosed the invention, and, file before the statutory bar (see next paragraph).
b) In Canada, an invention is no longer ‘novel’ and thus a patent may not issue if the inventor has disclosed the invention anywhere in the world more than 12 months prior to filing the Canadian patent application.
If you have a corresponding US patent application, note that the patent will be published by the USPTO 18 months after your US filing date. Accordingly, the latest possible date that you can file a Canadian patent application which corresponds to a pending US patent application (assuming you have not otherwise disclosed the invention to anyone) is 30 months after the filing date of the US patent application.