Applications, Applications, Applications…What’s in a Name?

You have probably heard the terms “Provisional,” Formal,” “PCT,” “International Application”, “National Application,” “Divisional,” “Continuation,” “Continuation-in-Part”…but what do they all mean and how do these different patent documents relate to one another?

For over a hundred years, there has been an agreement between most industrialized countries relating to the filing of patent applications. This agreement, known as the Paris Convention, says that if a national or resident of one of the signatory countries files a patent application (the “priority application”) in a national patent office of a signature country, all the other signature countries will give the applicant one year in which to file in their national patent offices while still enjoying “priority” back to the initial filing date. This is very important, because in most countries, the “priority” date of a patent claim is the date as of which it must be new and non-obvious. Therefore, having a priority date before the first public disclosure of your invention is important.

A priority filing can be a complete filing, reflecting the full and final output of a particular research project or line of inquiry. In such cases, it will often be filed as what is called a “formal” filing, meaning that there is no intention to replace it in that country within the year (and usually meaning that any corresponding filings in other countries will contain the same information without significant changes).

Often, however, people are in a hurry when preparing their priority patent applications. They may be afraid of being scooped by someone else, or they may want to publish their work to get academic recognition for it. However, the work is often not as complete as it could be, or the market potential of the invention is still uncertain. In such situations, the priority application will be filed with as much information as is available at the time. However, within the one-year period of the priority filing, the inventors will work to expand the invention or round out the examples and variants to cover commercially relevant areas, and will file an expanded “formal” application. Such new material should be kept confidential until filed in a patent application.

Applicants will generally file the formal patent application not only in the countries in which they did not originally file, but also in the same country in which they filed the Priority application. They do this because they believe the new filing is a fuller and better representation of the full scope of their invention. Any new material added to a filing will only get the priority date of its actual filing. Thus, when filing provisionals, it is important to be thorough and to ensure the filing is as broad as possible at the time.

When a priority patent application is not a formal patent application, it is often called an “informal” (Canada) or “provisional” (U.S.) application. While U.S. provisionals die automatically one year from filing (therefore absolutely requiring replacement or conversion within the year), Canadian informals remain alive unless the applicant either asks that they be withdrawn or until some action required to keep them alive (such as paying a fee) is omitted.

Thus, when you hear someone refer to a provisional or informal application, they are referring to an application that will ordinarily be replaced within a year of filing by a formal application.

Formal applications come in various forms. The simplest is a regular national filing—for example, a Canadian or U.S. patent application.

You may have also heard of “PCT” or “International” patent applications. These are applications filed pursuant to another international agreement known as the Patent Cooperation Treaty. This treaty provides an administrative structure facilitating the time-limited preservation of patent rights in a large number of countries through a single patent filing. It is important to note that there is no such thing as an international patent. The PCT provides: a means for centralized filing; limited centralized examination; some guidance with respect to patentability; and a time delay before the costs of translation and large-scale national filings must be incurred. However, it does not actually provide rights to an issued patent. Eventually (typically 30 months from the first priority filing), the PCT application will have to be entered into National Phase in the national (or in some cases regional) patent offices of countries of interest.

Europe has its own regional patent office, and an applicant can file directly in Europe or enter regional phase in Europe out of the PCT. Unlike the PCT process, a European patent application can mature to a European patent. However, in order for the patent to be enforceable in a country, it must be nationalized in that country. This involves translation, for some countries, and the payment of fees, but not further examination.

You may have heard the terms “divisional,” “continuation,” or “continuation-
in-Part.” These relate to formal filings that are the progeny of an earlier formal
application within a particular country.

Divisional applications are quite common in many countries and arise when the claims of a patent application are split (or “divided”) to cover two or more patentably distinct features or embodiments of the invention. The result is that a single initial application may be divided into a large number of divisionals, each of which could, in theory, be issued as a separate patent.

“Continuation applications” and “continuation-in-part applications” (“CIPs”) are creatures peculiar to U.S. law, and are really only available there. A continuation application is just that: it is a continuation of an earlier U.S. application. The complex rules surrounding U.S. patent practice make the use of such applications desirable at times. “Continuation-in-part” applications are applications that contain the same subject matter as a previously filed formal application, but also contain new material (thus, they are only partial continuations).

The diagram illustrates a typical patent family. In this case, it shows a family that was filed without the use of the PCT. However, the end result would look essentially the same if the PCT had been used. The most significant difference would be that in between the Priority application, there would be a single PCT application, and all the national filings would derive from the PCT application.

—Margaret McKay is a Patent Agent with NRC Intellectual Property Portfolio Management, Technology and Industry Support in Ottawa.

This article is written for general interest only and nothing herein constitutes legal advice or creates a solicitor-client relationship.