Filing Away into USA

An article in the Globe & Mail on January 17, 2011 highlights the record number of patents issued to Canadians in 2010, and included the interesting statistic that “U.S. patent authorities issued a record 5,223 patents to Canadian firms and individual inventors last year, up 20 per cent from 2009.”[1]

The article goes on to discuss this as a sign of Canadian inventiveness, relative to other countries which do not receive as many US patents, “Still, at No. 6, Canada ranks ahead of many other large European countries, including France, Britain and the Netherlands, as well as China.”

One of the problems with this approach is that the number of patents filed in the US is not a great proxy for patents filed worldwide, as for a variety of historic and economic reasons companies and individuals from some countries are more likely to file in the US than others.

For example, Canadians are significantly more likely to file in the US than in Canada. In 2010 there were 5,223 US patent grants to Canadians, but Canadians received only 2,061 Canadian Patents.[2]

This is likely not a surprise to most Canadian patent agents, as for a variety of reasons, making the first filing into the US often makes sense for Canadian based patent applicants.

The US is a large market in which many Canadian companies want to protect their innovations. The US market provides many potential benefits to a Canadian applicant, such as the ability to file a simple and low-cost US provisional which can, if later desired, be converted into a US patent, and international applications through the Patent Co-operation Treaty (PCT), and a patent prosecution highway to allow quick grant in Canada if a US patent has been granted.

Just as many Canadian companies seek to file in the US, many foreign companies seek to benefit from Canada’s strong patent protection. Only 11% of the patents issued by CIPO in 2010 were granted to Canadian applicants (2,061 of 19,120)[3] , while more than 46% of the patents were issued to Americans (8,804 of 19,120)[4].

These numbers highlight the importance for Canadian IP Practitioners to have a strong network of relationships with IP firms in other jurisdictions, and the careful decision that patent applicants must make in choosing which country or countries to file their applications in.

By James Wagner

[1] http://www.theglobeandmail.com/report-on-business/your-business/grow/new-product-development/canada-picks-up-pace-in-patents/article1873617/
[2] CIPO Database search for: (CA INVTCOUNTRY) (ISD>=2010-01-01) (ISD<=2011-01-01)
[3] CIPO Database search for: [(ISD>=2010-01-01) (ISD<=2011-01-01)]
[4] CIPO Database search for: (CA INVTCOUNTRY) (ISD>=2010-01-01) (ISD<=2011-01-01) (US INVTCOUNTRY) (ISD>=2010-01-01) (ISD<=2011-01-01)