Antedating a reference
Canada also allows priority claims to applications filed with the European Patent Office (EPO), PCT applications and applications submitted to intergovernmental authorities such as, for example, the African Regional Intellectual Property Organization (ARIPO). practice, a Canadian patent application may not claim priority to a design patent, an industrial design application, or the like.The Canadian Patent Office also recognizes Paris Convention priority based on foreign utility models and petty patents. S., so-called “domestic” priority claims may also be made to an earlier filed Canadian application. When a priority claim may be made Under Canada’s Patent Rules, a request for priority to an earlier application can be made on or after filing.S., in Canada, certified copies of priority applications are usually not required even in the case of claims for foreign priority.Instead, the Canadian Patent Office’s practice is to attempt to retrieve the priority application from what it deems reliable sources such as, for example, PATENTSCOPE or from the International Bureau.If, however, examiners cannot retrieve the priority application or they have questions as to its accuracy, they may requisition a certified copy.Concluding Remarks All told, while the requirements for claiming priority in Canada and the U. are similar, there are important differences, particularly regarding formalities, that may affect filing strategy and the citability of prior art.That said, the exact contours of these provisions, including whether or not they will apply to domestic priority claims, remain unclear as regulations to support the new statutory provisions are not yet available.
To obtain such advice, please communicate with our offices directly.Restoration of priority to become part of Canadian law Canada does not currently allow restoration of the right of priority in the case of late filings.However, this may soon change: upon the coming-into-force of recent amendments to Canada’s Patent Act, the aforementioned twelve month time limit in which the Canadian application must have been filed in order to have a valid priority claim will, in certain cases of unintentional failure to timely file a Canadian application claiming priority, be extendable by two months.“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” This would be a good case to consult before arguing that a prior art reference is non-analogous.Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to providing wireless network subscribers (e.g., cell phone users) with prioritized search results based on the location of their mobile device (e.g., the nearest gas station).