Canadians Invent for America 


January 2012

Intellectual Property Bulletin

In 2010, Canadian entities filed almost 5000 applications for United States patents1, representing about 2.3% of all patent applications filed at the U.S. Patent and Trademark Office ("USPTO"), and just short of the 5200 applications for Canadian patents2 filed by Canadian entities at the Canadian Intellectual Property Office ("CIPO"). As the United States is Canada's largest trading partner, and by far a bigger market, it is no surprise that Canadians file almost as many patent applications in the United States as they do in Canada.

The America Invents Act (‘AIA') signed into law by president Barack Obama on September 16th, 2011 brings about sweeping changes to the United States' patent system, some of which may require Canadian applicants to adapt their current filing strategies to consider changes from south of the border. Other mechanisms have also been put into place that may be used as strategic tools going forward.

One change that may alter the approach companies take to monitoring the patent filings of competitors and others operating in the same space is the introduction of substantial mechanisms for third parties to raise various forms of oppositions to the granting of another party's patent. These changes come into effect on September 16th, 2012, meaning that patent applications currently being filed may be subject to these mechanisms.

Third-party submissions of relevant references may be submitted before the earlier of (i) the issuance of a notice of allowance; or (ii) the later of six months from the date of first publication or the date of the first Office Action. Effectively, this requirement requires that third-party submissions be made before the examination process is underway. Third parties will have the possibility of having substantial influence over the examination of a patent application. This mechanism may thus prove to also be significant for companies wanting to prevent overly-broad claims from issuing to a competitor, and provides an incentive for enhanced monitoring of competitor patent filings. Preventing a patent application from issuing, or more accurately, preventing overly-broad claims of a competitor from issuing, could result in substantial cost savings in mitigating the risk of litigation after issuance of a patent. The implementation of a system for monitoring competitor patent filings, triggering alerts to potentially-troublesome filings, and making submissions to the USPTO in respect of these filings should be considered.

The AIA also provides a post-grant review process that permits a third party to file a petition with the USPTO to challenge the validity of a patent within nine months of its issuance. Of note, and in contrast to the prior rules, the validity of a patent may be challenged on any grounds and is not limited to prior art-based objections. The post-grant review process is an ex parte review. An inter parte review process is also available that permits substantial involvement by the third-party requestor.

It remains to be seen how widely used these mechanisms will be, but they do have the potential to be effective defensive tools forming part of a comprehensive IP strategy.

by Yasin Bismilla

1 "Patent Counts By Country/State And Year" published by the USPTO, March 2011.

2 "CIPO Annual Report 2009-2010" published by the CIPO.

a cautionary note

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2012