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Strategic Considerations and Patent Application Examination Options in Canada

For many patent applicants, Canada’s deferred examination system is a desirable feature of its patent regime. Since patent applications are examined only upon request, the current system provides applicants with 5 years from the filing date to delay prosecution and associated costs. However, recent amendments to Canada’s Patent Act and proposed amendments to its Patent Rules will shrink this window to 3 years.

Delaying examination isn’t always desirable and there are a number of mechanisms to expedite examination instead.

Accelerated Examination (“Special Order”)
If failure to advance an application is likely to prejudice the applicant’s rights, the applicant can request accelerated examination with the payment of a CA$500 fee in addition to the usual examination fee. To qualify for accelerated examination, the request must assert that failure to advance the application is likely to prejudice the applicant’s rights. In no case will examination commence before the application is published.  Since Canadian patent applications are automatically published 18 months after the priority date, applicants wanting to accelerate examination may request earlier publication.

Accelerated Examination for Green Technology
An applicant can request expedited examination of an application by submitting a declaration that “the application relates to technology the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources.” No additional fee beyond the usual examination fee or supporting information is required, but the application must first be published before examination will commence.

It is important for applicants to note that accelerated examination status (under both the Special Order and Green Tech programs) will be lost if the applicant requests an extension of time to meet certain deadlines or if the application is deemed abandoned.

Patent Prosecution Highway (PPH)
The Patent Prosecution Highway (“PPH”) is an initiative derived from the partnership between the Canadian Intellectual Property Office (“CIPO”) and a number of other patent offices around the world. The PPH allows applicants to accelerate patent application examination where examination of a corresponding application has been conducted by a partner office and has resulted in one or more allowed claims. The CIPO currently has partnerships with over two dozen foreign patent offices, and the full list can be found here.

To qualify for the PPH, the PPH request must be received by the CIPO before the Office has issued a first examiner’s report, and the application must be published before examination will commence. No additional government fee is required for this request. A PPH request typically requires the voluntary amendment of the Canadian claims to bring them in line with the claims allowed by a partner patent office.

Strategic Considerations
Canada’s deferred examination system alongside the PPH and accelerated examination initiatives offers unique patent examination strategies. For example, during the time examination is deferred, corresponding applications can be prosecuted in partner countries, and on a successful conclusion, a PPH request can be made in Canada.

The CIPO also offers a unique strategy for fast-tracking applications in other countries participating in the PPH partnership. First, the special order mechanism described earlier could be used to expedite the examination of a patent in Canada and secure allowance within a few months. Following this, the CIPO can then be used as the Office of Earlier Examination for PPH requests in participating foreign offices to expedite grants around the world.

Statistics provided by the PPH Portal from July 2016 to December 2016 illustrate the speed and cost efficiency that the PPH brings. During this period, the grant rate of PPH applications in Canada was 89% compared to 65% for all applications. The first action allowance rate for PPH applications was 33% compared to 5% for all applications. The average pendency from a PPH request to first office action was only 0.8 months vs 11.5 months, with pendency to a final decision of 5.4 months for PHH applications vs 31.2 months for all applications. The average number of office actions was also lower for PHH applications at 0.9 vs 1.6 for all applications.

Although there are many options for expediting examination, peculiarities in Canadian patent law require careful consideration before using them. For example, methods of medical treatment claims are generally not allowed in Canada; however, it may be possible to obtain claims with similar scope through reworded “use” claims, even using the PPH program. Also, the Canadian position on double patenting is particularly strict, so that all desired claims to the same invention must be obtained in the same application.  For complex inventions, it may be advantageous to allow examination of corresponding applications to proceed in foreign jurisdictions, so that the applicant has a good idea of the claim scope it would like to obtain in Canada.  It is important to secure proper advice at the outset to determine the best examination strategy for a given application.

By:  Josh C.  Ma and Stephanie A. Melnychuk



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