Q: When you file a patent in a jurisdiction, lets say US. But not in Canada. The prior art in US does not impact Canada

You have filed all your patents in the US. If you filed a patent in Canada, does the prior art in the US affect the prior art in Canada during examination?

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Chapel Hill, NC

A: With respect to a printed publication or a patent application, the impact is not limited by national borders.

There may be instances where the US laws on the one year grace period means somethings are not prior art in the US but are prior art in other countries (like a post by the inventor on web site which becomes prior art immediately in many systems is not prior art in the US until the end of a one year grace period).

In other instances, a quote under an NDA from a vendor to make a patented product for an inventor counts in the US after one year but never counts in some other systems.

A separate issue is what is your duty to tell an examiner in a second country what prior art was considered in a first country. This varies from country to country. In the United States you normally need to disclose prior art that turned up in other pending applications in other countries. But the US rules are not replicated in all other countries. Some systems require listing of previously considered prior art but many do not.

You will need to work with your patent attorneys to synchronize what you do across several systems.

I hope that this helps.

Kevin E Flynn

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