Patents for Canadians

Provisional to PCT

 

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Notes.

1.   Provisional Patent Applications

a.   Generally, a provisional application should be filed as soon as possible.  Delay creates risk – risk of disclosure, other inventors, competing applications. 

b.   A provisional patent application is precisely that.  It is provisional.  It will expire in 12 months.  It is never examined and never published. You must replace it with a full patent application within a year or lose your priority date. 

c.   A good provisional patent application is not a ‘quick and dirty’ application, or an invitation to amateurs to try their hand at patenting.  Ultimately, your claim to priority, and likely the  validity of your patent claims will depend upon the disclosure in the provisional application. If the provisional is weak or poorly done, you will suffer. 

2.   Search

a.   We strongly recommend carrying out good prior art searches as soon as practicable.  Usually, this is immediately after the filing of the provisional patent application.  

b.   The results of the search will teach you many things including :

                      i.     The scope of your possible claims and whether they must be narrowed to avoid prior art and/or broadened to deal with a wider range of embodiments.

                      ii.     The potential strength of your patent and its ability to block others.

                      iii.     Efforts of others to solve the same or similar problems.

 

3.   Improve. With the results of your search in hand, and increased knowledge of the precise nature and scope of the invention and its marketability, you may choose to:

            a.   Retain the provisional patent as is;

b.   File a supplemental provisional application that describes the invention in greater detail, broadens its scope, or otherwise navigates better around existing prior art. 

 

4.   Abandon.  You may choose to abandon your provisional patent application.  If you do, you need to decide if you wish to:

a.   Retain the invention secret, either as a trade secret, or for potential subsequent patenting; or,

b.   Disclose the invention.  If you do, you should consider disclosing the invention as thoroughly as required to preclude anyone else filing a patent application that might prevent you from using , making or selling the invention. 

 

5.   Patent.  As this stage you must replace your provisional patent application with a full patent application that contains a fulsome disclosure and claims. The full application can be a worldwide application (“PCT”) that maintains your right to file in most countries throughout the world; or it can be directed to a few countries (e.g. U.S, Canada).

 

6.   PCT National Entry.  If you make use of the Patent Co-operation Treaty for filings in many counties, you must complete the national entry phase for most countries at month 30.  You should anticipate substantial costs for local representation and government fees at this stage.