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Not All Grace Periods are the Same

January 17, 2013

On March 16, 2013, the final portions of the America Invents Act will be implemented and the United States will join the rest of the industrialized world and become a first to file regime. Most first to file regimes require that a patent application be filed before there is any public disclosure of an invention. Some countries such as Canada and the United States provide a grace period so that an inventor may still file a patent application after marketing or selling a product embodying the invention. Understanding the limits of the grace periods that are provided is important to ensure that the right to seek patent protection is not lost.

After March 16, both Canada and the United States will provide a one year grace period. Under the law of each country, the grace period will commence when there is any disclosure anywhere in the world that makes the invention known to the general public. However, there will be important differences between the Canadian and U.S. grace periods.

The Canadian grace period covers any disclosure within one year of the filing date of a patent application in Canada. If a patent application is not filed in Canada within one year of the first public disclosure of an invention anywhere in the world, then the right to obtain patent protection in Canada is forfeited. Once the America Invents Act is implemented, the grace period under the law of the United States will permit patent protection to be obtained in the United States provided:

  1. a patent application is filed in the United States within one year of the disclosure; or
  2. a first patent application is filed in another country and a patent application is filed in the United States within one year of the filing of the first application.

Accordingly, the grace period under the law of the United States could be up to two years. For example, a patent application may be filed in Canada within one year of the first public disclosure and a patent application claiming convention priority may be filed in the United States within one year of the filing of the Canadian application.

One consequence of this change is that freedom to operate reviews in the United States will become more complicated. A search of the records of the USPTO may not locate a pending patent application for a feature in a commercial product. However, as the grace period is up to two years, it is possible that an unpublished patent application is pending in another country and a patent application could still be filed for feature in the United States.

Another significant difference between the grace periods of Canada and the United States is the effect of a disclosure by the inventor prior to the filing of a patent application. In Canada, any disclosure by a third party prior to the filing date (or priority date) of a Canadian patent application by the inventor is citeable as prior art. However, after March 16, a disclosure by the inventor prevents any subsequent disclosure by a third party from being cited as prior art against the inventor’s patent application. Therefore, while the Canadian grace period allows a patent application to be filed even though there has been a public disclosure, a Canadian patent application should be filed promptly to prevent a third party disclosure from being prior art. However, under the law of the United States, as the disclosure by the inventor will prevent any subsequent disclosure by a third party from being cited as prior art against the inventor’s patent application, there is less need to rush to file for patent protection in the United States.

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Philip Mendes da Costa, B.Sc. (Chem. Eng.), LL.B., is a partner with Bereskin & Parr LLP and is the head of the firm's Patent practice group.

 

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Author(s):

Philip Mendes da Costa Philip Mendes da Costa
B.Sc. (Chem. Eng.), LL.B.
Partner
416.957.1695  email Philip Mendes da Costa