Print| Email

Securing Patent Protection in the United States

By: Christopher Heer, Dominic Cerilli | Last updated: June 13, 2021

The Value of Applying for U.S. Patent Protection

The U.S. is not only the biggest economy in the world by nominal GDP, but also Canada’s biggest trading partner by a large margin. As such, it comes as no surprise that many Canadian businesses looking to commercialize innovative products consider filing for intellectual property protection not only in Canada, but also in the U.S.

Patent rights are instrumental in ensuring innovative products are protected against infringement by competitors looking to profit from your intellectual labour. However, patent rights are granted on a jurisdiction-by-jurisdiction basis. This means that filing a patent application and receiving a successful patent grant in Canada does not provide protection in the United States or in other nations or regions. Consequently, many Canadian businesses looking to commercialize their intangible assets file patent applications in both Canada and the U.S. to align their legal protections with the markets in which they regularly do business. With the U.S. being home to many of the world’s biggest technology companies and with the U.S. recently seeing over 300,000 patent applications filed per year by non-U.S. residents, filing for patent protection in the U.S. can be a strategic point of entry for Canadian businesses into the most innovative economy in the world.

Key Differences Between U.S. and Canadian Patent Filings

There are several important differences between U.S. and Canadian patent filings, but there are also strong similarities. In fact, if you retain a Canadian patent professional to draft the substance of a Canadian patent application and decide to also file for patent protection in the U.S., the vast majority of the legal work done by the Canadian patent lawyer can be reused in the U.S. patent application. This substantially reduces the costs associated with filing in both the U.S. and Canada and is the foundation of many cost-effective multijurisdictional filing strategies.

Nonetheless, there are some key differences to note between the process of filing a U.S. and Canadian patent application, including:

  • In the U.S., there are utility patents, design patents, and plant patents. A U.S. utility patent is comparable to a Canadian patent, whereas a U.S. design patent is comparable to Canadian industrial design registration and a plant patent is comparable to a Canadian application for a plant breeders’ rights certificate. If you wish to file a patent application in the U.S., it is important to understand what legal rights are afforded under each type of patent and which set of rights is most pertinent to your business objectives.

  • You can file a provisional patent application in the U.S. to secure an earlier filing date. The U.S. provisional patent application is a unique filing route for utility or plant patent applications that allows you to file an application without a formal patent claim, oath or declaration, or an information disclosure statement that lists relevant patent documents, publications, or products. A provisional patent application is not examined by the U.S. patent office but provides a 12-month period within which the provisional patent application can be finalized into a non-provisional patent application that is examined at the U.S. patent office. Securing the earliest filing date possible is especially important because patent offices ultimately review and assess patent applications on a first-to-file basis, not a first-to-invent basis.

  • Examination is automatically requested upon filing a U.S. non-provisional patent application. In Canada, examination can be requested either upon filing a patent application or within 4 years of the filing date. In the U.S., by filing a non-provisional patent application it is automatically set for examination by a patent examiner at the U.S. patent office.

  • The U.S. patent office has different administrative filing requirements and uses different formatting conventions. While the specification and figures of a U.S. application encompass substantially the same content as a Canadian application, each follows different formatting conventions and must be accompanied by different administrative filing documents. For a U.S. non-provisional utility patent, this involves the use of an Application Data Sheet (ADS) to identify who invented and owns the proposed invention, an oath or declaration affirming inventorship, and the submission of an Information Disclosure Statement (IDS) which lists all patents, publications, applications, or other information relevant to the patentability of the application.

  • The U.S. patent office provides discounted fees based on unique small and micro entity classifications. While Canada also discounts patent-related fees for applicants that meet a Canada-specific small entity definition, the U.S. provides a distinct fee reduction regime. Particularly, U.S. patent-related fees are reduced by 50 percent if the applicant meets the small entity definition under 37 CFR § 1.27(a) or by 75 percent if the applicant meets the micro entity definition under 37 CFR § 1.29(a).

    • Small entity status may be appropriate if the applicant is a person, small business concern, or non-profit organization and has not assigned any rights in the invention set forth in the application and is under no obligation to assign such rights to any entity that does not qualify as a person, small business concern, or non-profit organization.

    • Micro entity status may be appropriate if the applicant qualifies as a small entity and has either a gross income less than three times the median household income for the preceding calendar year as reported by the Bureau of the Census or qualifies as an institution of higher education. The applicant also cannot have assigned any rights in the invention set forth in the application and must be under no obligation to assign such rights to any entity that does not qualify for the same. To qualify for micro entity status, neither the applicant nor the inventor nor a joint inventor can be named on more than four previously filed patent applications for which filing fees have been paid, excluding those applications which have been assigned to another entity as a result of employment.

  • U.S. patent maintenance fees follow a different payment structure. Maintenance fees must be paid to preserve certain patent rights at a patent office. In Canada, maintenance fees are due on a yearly basis starting on the second anniversary of a patent application’s filing date. By contrast, U.S. maintenance fees are due by 3.5, 7.5, and 11.5 years after the original grant of a utility patent. U.S. maintenance fees may be paid within the six months preceding these deadlines and will otherwise incur a surcharge if paid within the six months following these deadlines. There are no maintenance fees in the U.S. for design patents or plant patents.

  • A U.S. patent application for a U.S. resident applicant must be filed by a U.S. resident U.S. patent agent. While Canadian patent lawyers may be registered as a patent agent in the U.S. for Canadian resident applicants, U.S. residents must use a U.S. resident U.S. patent agent if they wish to file a U.S. patent application. Nonetheless, many patent lawyers are part of a transnational network of patent agents that facilitate foreign filings. Operationally, this means a Canadian patent lawyer and agent can draft the substance of an application and file that application in Canada for a U.S. resident, then coordinate with a U.S. resident U.S. patent agent to file a U.S. patent application directed to the same proposed invention. Put another way, U.S. residents can still draw upon the expertise of Canadian patent lawyers in drafting a U.S. patent application.

  • Canadian and U.S. utility patent applications are examined for patentability in view of different jurisprudence. For a claimed invention to be patentable in the U.S., it must be useful, novel, non-obvious, and directed to eligible subject matter. While the Canadian standard for patentability is very similar, there are nuanced differences between how these four required elements have been shaped by each nation’s laws and administrative practice guidance. In the U.S.:

    • Usefulness or utility must be specific, substantial, and credible. A U.S. utility patent application may be rejected if it is not apparent why a proposed invention is useful, there is no well-established utility, or there are specific grounds of inoperativeness. Nonetheless, such a rejection must not be based on grounds that are frivolous, fraudulent, or against public policy.

    • Novelty requires that the claimed invention was not patented, described in a printed publication, or in public use, sale, or otherwise available to the public before the effective filing date of the claimed invention. However, there are some exceptions for disclosures made less than one year before the effective filing date of the claimed invention. The U.S. novelty analysis is also greatly shaped by U.S. common law, and thus retaining a patent professional is instrumental in understanding whether a proposed invention may be novel.

    • Non-obviousness requires that the differences between the claimed invention and the prior art are such that the claimed invention as a whole would not have been obvious before the effective filing date to a person having ordinary skill in the art to which the claimed invention pertains. Similar to the standard of novelty, the legal test for non-obviousness is greatly shaped by U.S. law, and consulting a patent professional with expertise in the relevant technical discipline is invaluable in assessing whether or not the proposed invention is non-obvious.

    • Eligible subject matter means a claimed invention must be a process, machine, manufacture, or composition of matter and must not be a judicial exception. Whether or not a claimed invention constitutes a judicial exception to patentable subject matter is determined by U.S. common law, wherein courts have found abstract ideas, laws of nature, and natural phenomena, including products of nature, to qualify as judicial exceptions.

Overview and Strategic Considerations for U.S. Patent Filings

Before filing a U.S. patent application, consider what type of U.S. patent protection is most valuable to your business and whether your proposed invention is patentable. This may involve independent research into comparable products, speaking with a patent lawyer about developing a protection and commercialization strategy, or having a formal patentability assessment conducted. If you are contemplating filing in multiple jurisdictions, a worldwide patentability assessment can be vital to understanding the risks associated with filing in, for example, Canada and the U.S. before incurring the costs associated with preparing and filing such applications. Also consider discussing with an intellectual property lawyer whether a utility patent, design patent, or plant patent would be best suited to achieving your business objectives.

If you decide to file a U.S. utility patent or plant patent, consider the strategic benefits of starting with a provisional patent application. A provisional patent application can help secure an early filing date, which is especially important in view of patent offices operating on a first-to-file basis. That is, patent rights are only granted to the earliest applicant for a particular invention, not the earliest inventor. Also note that once a provisional patent application is filed, you have 12-months within which you can finalize the technical details of your proposed invention, seek additional investment, gauge market interest, and file a non-provisional patent application.

Once a non-provisional patent application is filed, it will be taken up for examination in due time at the U.S. patent office. The U.S. patent office may then issue objections to the patent application which require an argumentative response or amendments to the application itself to overcome such objections and secure a patent grant.

Filing a U.S. patent application should be a calculated undertaking and it is often valuable to file for patent protection not only in the U.S., but also in jurisdictions like Canada that have strong ties to the U.S. economy. If you are considering commercializing products in the U.S. and would like to learn more about how patent protection can add value to your business, call us today for a complimentary and confidential initial telephone appointment.