Before starting preparing the application, we will also discusses with you so that you can make an informed decision whether to file the patent application initially in Canada, the United States or as a Patent Cooperation Treaty (PCT) patent application at the World Intellectual Property Organization (WIPO). We will take into account the particularities of the requirements in your desired jurisdictions in drafting the patent application. After we draft the patent application, we will send it to you for review and approval.
Provisional Application for Patent in the United States
Many Canadian patent practitioners will recommend you to file a provisional application for patent in the United States first, and then file a patent application in Canada, in the United States, and/or as a PCT patent application based on the provisional application for patent.
One advantage of the provisional application for patent that may be important to you is that you essentially have up to one additional year to test the market or to seek funding because the patent term is calculated from the filing date of the nonprovisional application for patent. However, this route of filing the patent application may not be suitable for your business needs. Ultimately, you need to make the decision based on your business needs. For example, if you are a small entrepreneur and only intend to practice your invention in Canada, it may not make sense for you to file the provisional application for patent in the United States first.
On the other hand, if you have an urgent need to stake a claim to your invention, for example, you are going to display your device shortly, it would be preferable to file a provisional application for patent in the United States first to get the filing date. The provisional application has a lower requirement to receive a filing date. For example, a formal patent claim or an oath or declaration is not required for a provisional application for patent. Thus, a provisional application for patent can be more quickly filed for a lower cost.
Canadian Patent Applications
If you decide to initially file the patent application in Canada, within one year after filing the patent application in Canada, you can file a patent application in the United States or a PCT patent application based on the patent application in Canada, just like you could file patent applications based on the provisional application in the United States. Furthermore, unlike the provisional application in the United States, you are not required to file a nonprovisional application to eventually obtain patent rights.
PCT International Patent Application
If you want to obtain patent rights in multiple jurisdictions, for example, Canada, United States, the Europe Union, and China, you should consider filing a PCT patent application with WIPO, which can be the initial patent application or an application based on a provisional application for patent in the United States or a Canadian patent application.
For more information about PCT patent application, please check here.
Filing in Foreign Jurisdictions under Paris Convention
Alternatively, you may consider entering the jurisdictions under the Paris Convention, which requires the subsequent patent application to be filed separately in each jurisdiction within one year after the filing date of the initial application in order to benefit from the filing date of the initial application.
We can file the patent application directly in Canada, the United States (for Canadian applicants), or as a PCT patent application. We can arrange and supervise filing in other jurisdictions.