It is said that good things happen when you get your priorities straight. The lessons that Bayer Cropscience (BC) learned in the Canadian Federal Court’s recent decision in Bayer Cropscience v Canada (Attorney General), 2017 FC 178 should serve as a cautionary tale for others when claiming priority not only in Canada, but in other jurisdictions too.
On April 3, 2012, BC filed US patent application 61/619,691 with the United States Patent and Trademark Office (USPTO) (the ‘691 US priority application). The USPTO did not at that point assign a filing date due to the failure of filing accompanying drawings. On April 19, 2012, BC filed the drawings and the USPTO assigned a filing date of April 19, 2012, which BC did not contest. On March 15, 2013, BC filed an international (PCT) application claiming priority from the ‘691 US priority application. BC asked for a priority date of April 3, 2012, but since this request had no basis, the PCT application was given a priority date of April 19, 2012. On April 14, 2015, on BC’s request, the USPTO amended the filing date of the ‘691 US Priority Application to April 3, 2012 as the USPTO conceded that the requested drawings were not, in fact, required.
On August 7, 2015, the PCT application entered national phase in Canada as Canadian patent application 2907271 (the ‘271 application). BC tried to request a priority date of April 3, 2012, but the Commissioner of Patents in Canada denied the request and concluded that the correct date was April 19, 2012. BC contested this date at trial and maintained that the Commissioner incorrectly recorded the priority filing date for the ‘271 Application. The Commissioner replied that, in accordance with section 88(1)(b) of the Canadian Patent Rules, BC’s request to have the priority date changed had to have been made within 16 months of the filing date of the ‘691 US priority application, namely before August 19, 2013. When the USPTO finally amended the filing date of the ‘691 US priority application on April 14, 2015, it was already long overdue for BC to change the priority date of the ‘271 Application.
BC’s experience serves as a lesson for others when claiming priority in Canada. It is vital that the 16-month deadline from the date of the priority application be docketed as there may be no recourse after the fact. If there is any question concerning the correct filing date of an application that may used as a priority for further applications, it is important that the matter be resolved as soon as possible. This is especially true in the case of PCT applications where at the time of filing, the applicant may not know all the jurisdictions in which national phase will be entered.
It is strongly recommended, therefore, that to avoid potential date pitfalls when entering national phase, filing dates and priority dates should be confirmed at the time of filing of the PCT application, preferably at the time of filing the priority application. In other words, make your priority claims a top priority.