Sunday, February 01, 2009

Benefits of patent examination in Canada?

As discussion of deferred examination make the rounds on blogs, one commenter on the Patent Hawk blog was pushing examination in Canada:

There are many good tactical reasons for using the present deferred exam in the US, particularly with international applications.

Even if I just want a US patent, I would prefer to prosecute a case in Canada over the US any day. My confidence level in US examiners is at a rock-bottom low. I'm in Canada so for Canadian clients or myself, I can file here first with a demand for examination, and file a request for deferred exam with the US application. If I were in the US, I would file in Canada as soon as I get the foreign filing license. Then defer the US case and demand exam in Canada. Canada is pretty quick, so you can prosecute the case to completion then ride the Can-Am Patent highway into the US before the deferred period lapses.

The Canadian filing fees might seem pricey, but compared to all of the idiot petitions, appeals, RCE's etc you're going to be forced to pay by the PTO, you're clients will likely save money in the long run and have protection in all of North America to boot.

[IPBiz notes the commenter is referring to the PPH program. See also]

Separately, Patent Hawk had written:

Last year, everyone was talking about "gold plated" patents. How times change with the economic climate. Now we're talking Wal-Mart patents.

In essence, we have another re-cycled Lemley-ism (gold-plating) biting the dust. See On Gold-Plating Patents in the Nov. 2008 issue of IPT.
Patent Hawk did not mention how thought-provoking Lemley's gold plating was.


Blogger Lawrence B. Ebert said...


Filing Patents In Canada: A Tactical Advantage

There are significant financial and tactical considerations which suggest that there may be benefit to filing initially in Canada and requesting expedited examination in that jurisdiction before filing a regular application in the U.S. and fighting through the myriad formal and substantive complexities and cost of prosecution before the USPTO, says Dennis S.K. Leung of Ridout & Maybee LLP.

4:40 PM  

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