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US Provisional or Canadian application?

US Provisional or Canadian application?
« on: October 19, 2018, 04:48:15 PM »
Hello Brad,

I've been looking into starting a Canadian application and came across this on the government website.

"The U.S. provisional application process does not offer the same advantages that it used to since the America Invents Act (AIA) came into full force:

The AIA, which came into effect on March 16, 2013, now uses a "first-to-file system" instead of the old "first-to-invent" system, and takes away the need for dispute litigation. Under the U.S. first-to-invent system, disputes could come up about who was the first inventor. In the past, the process for settling these disputes seemed to favour applicants who first filed in the U.S.
Since March 2013, the Hilmer doctrine is no longer in effect. Under this doctrine, applicants who filed outside the U.S. first could not rely on their foreign filing date to prevent other applicants in the U.S. from patenting similar inventions. The AIA takes away this other pressure to file first in the U.S.

Can you confirm if I apply for a Canadian application then I don't need a provisional?

Thank you kindly,

Awesome forum btw.


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Re: US Provisional or Canadian application?
« Reply #1 on: October 20, 2018, 08:27:50 AM »
This is interesting and the first I have heard of this.   Trying to read between the lines here, it sounds like this statement is trying to "sell" people on filing in Canada first instead of the USA provisional.   Their argument seems to be that in the past it may have been better to file the USA provisional first to establish priority but now after AIA you also have the option to file in Canada first.

To answer your question, "yes" you can file directly in Canada first and then within 12 months file in the US.   You could also do the reverse which is file in US first and then within 12 months file in Canada.

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