Canada celebrated the 150^th anniversary of its Confederation on July 1, 2017 and at the heart of the Sesquicentennial Anniversary is the design of an official logo. Because care must be taken in using the official Canada 150 Logo, this article is intended to serve as a helpful guidepost for businesses navigating the usage process.

The Look and Feel of the Canada 150 Official Mark
The winning design for the official Canada 150 Logo was chosen as part of a nationwide competition that took place over the course of 2014-2015. Recognizing the distinctive design elements of the official logo is integral to its use.

The Canada 150 Logo is composed of a series of diamonds or “celebratory gems,” which are arranged in the shape of the iconic maple leaf. The four diamonds at the base of the leaf represent the original provinces that formed Confederation in 1867: Ontario, Québec, New Brunswick, and Nova Scotia. Diamonds extend from the base to create the leaf’s nine points, representing in total the 13 Canadian provinces and territories.

In conjunction with the image, a typeface that supports Canada’s two official languages (English and French), as well as the country’s Aboriginal languages, has also been created.

What Is An Official Mark?
The Canada 150 Logo is protected as an official mark pursuant to subparagraph 9(1)(n)(iii) of the Canadian Trade-marks Act.  Subparagraph 9(1)(n)(iii) provides that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, any badge, crest, emblem, or mark adopted and used by any public authority in Canada as an official mark for goods or services, in respect of which the Registrar of Trademarks has given a public notice of its adoption and use.

Marks that have been adopted and used in Canada as official marks by a public authority cannot be adopted by any other person once public notice is given by the Registrar of Trademarks. Official marks are granted extraordinary protection, often described as broader than the rights afforded to regular trademarks, in that the owner of an official mark obtains exclusivity for all goods and services.  In contrast, the rights afforded to the owner of a regular trademark are tied to specific goods and services.

Official marks provide other significant advantages to entities that qualify as a public authority and register a trademark as an official mark. The application process is a simplified version of the regular trademark application process.  Applicants seeking public notice under subparagraph 9(1)(n)(iii) must qualify as a “public authority” and produce evidence of adoption and use of the official mark.  The requirements typically imposed to ensure that a trademark is registrable and that the applicant is the person entitled to secure its registration do not apply to official marks.

The two-part test for whether an entity is a “public authority” was set out in Canada (Registrar of Trade-marks) v Canadian Olympic Association, (1982), 67 CPR (2d) 59 (FCA).  The two factors that must be examined include:

1. whether the body is subject to a significant degree of governmental control; and
2. whether the body must be required to dedicate any profit earned for the benefit of the public and not for private benefit.

Government control calls for some ongoing government supervision of the activities of the body by a Canadian government directly or through its nominees; public duty means something that is to the public benefit. In determining whether the activities of the entity benefit the public, the Registrar of Trademarks will also consider the entity’s mission, duties, and power.

Once the requirements are met, the Trademarks Registrar has limited discretion to refuse an application.   The official mark is published in the Canadian Trade-marks Journal and automatically becomes a prohibited mark under section 9 of the Trade-marks Act, in that it cannot be adopted by others in connection with a business, whether as a trademark or otherwise.

An official mark need not serve to distinguish goods or services, it may be merely descriptive, and it may be confusing with another’s mark, one public notice has been given an official mark is virtually unexpungeable. However, the prohibition applies only to uses adopted after notice was given of the adoption of the mark by the public authority.  Parties having prior use, or claiming under those having prior use, may continue to use, but only with those goods or services for which prior use can be established and not with others.

Notwithstanding the prohibition, the Trade-marks Act provides that consent may be given by the public authority to the adoption, use, or registration as a trademark or otherwise, of any mark intended to be protected by section 9.

Other Canadian symbols, the use of which is prohibited under section 9(1) of the Trade-marks Act include the Canadian flag and the 11-point maple leaf.  However, under section 9(2) of the Trade-marks Act, use of the flag and leaf are permissible on souvenirs, publications, and generally in a manner conforming to good taste provided it is without any attempt at proprietorship or to mislead the public as to a connection between the user and the Government of Canada.

Conclusion
Official marks are a unique aspect of Canadian trademark law and pose interesting challenges for trademark owners and users.

Canada implemented the Comprehensive Economic and Trade Agreement (CETA) with the European Union on 21 September 2017. As a result, patent term extension of up to two years is now available for patents pertaining to new medicinal ingredients or new combinations of medicinal ingredients for human or veterinary use.

What Protection is Available
Patent term extension is provided in Canada in the form of a Certificate of Supplementary Protection (CSP). A CSP is available only for the first authorization for sale of a drug containing a new medicinal ingredient or combination of medicinal ingredients in Canada.  An authorization for sale is specifically defined as a Notice of Compliance (NOC) issued by Health Canada, and interim orders or limited purpose authorizations are not counted.  Thus, for a drug to be eligible for a CSP, the drug must not have been previously authorized for sale in Canada by issuance of a NOC.  However, a drug authorized for human use and a drug authorized for veterinary use are treated separately, so that two separate CSPs would potentially be available, one for each of these different uses.

Additionally, each application for a CSP may set forth only one patent. Thus, the term of only one patent can be extended in respect of each new medicinal ingredient or combination of medicinal ingredients for which a NOC is obtained in Canada.  However, the converse does not apply:  if a patent covers multiple new medicinal ingredients or combinations thereof, Health Canada will consider multiple applications for a CSP based on that patent.

There are also limitations on what constitutes the same medicinal ingredient or same combination of medicinal ingredients for purposes of applying for a CSP: for example, esters, salts, complexes, chelates, clathrates, non-covalent derivatives, enantiomers, mixtures of enantiomers, solvates, polymorphs, in vivo or in vitro post-translational modifications, or any combination of such variations of a medicinal ingredient, are all considered to be the same medicinal ingredient for the purposes of determining eligibility for a CSP.  Additionally, combinations that differ only in the relative proportions of the medicinal ingredients are considered to be the same.  The same definitions apply in determining whether a patent covers a particular medicinal ingredient or combination of medicinal ingredients covered by a NOC.  Thus, for example, where a patent contains claims directed only to a particular compound but the approved product is a specific salt thereof, an application for a CSP will still be possible.

Eligibility Requirements
To be eligible for a CSP, a patent must contain at least one claim directed to one of:

• the medicinal ingredient or combination of all medicinal ingredients contained in the drug for which the NOC was issued;
• the medicinal ingredient or combination of all medicinal ingredients as obtained by a specified process (product-by-process) and contained in the drug for which the NOC was issued; or
• a use of the medicinal ingredient or combination of all medicinal ingredients contained in the drug for which the NOC was issued.

Patents containing only pure process claims are not eligible, since the process claim is not considered to protect the medicinal ingredient or combination of medicinal ingredients. Also, claims directed to formulations containing the medicinal ingredient are not considered to protect the medicinal ingredient or combination of medicinal ingredients per se, and so a patent containing only these types of claims would not be eligible to support a CSP.

Procedurally, to be eligible for a CSP, the relevant patent must be in force, and the application for the patent must not have been filed prior to 1 October 1989 (i.e. the date when Canada changed to a fixed patent term based on the filing date of the application rather than the grant date). Also, the NOC for the corresponding drug must have been granted after 21 September 2017, when the new provisions providing for CSPs came into force.

Term and Scope of Protection
The term of a CSP will be calculated as follows: [date NOC issued] minus [date of filing patent application] minus [five years], but is capped at a maximum of two years.  The Minister of Health has discretion to reduce the term of a CSP by any period that the Minister considers that the patentee’s failure to act resulted in a period of unjustified delay in the process of obtaining the NOC.

The rights conferred by a CSP are commensurate in scope with the patent, but only with respect to making, using and selling any drug that contains the medicinal ingredient or combination of medicinal ingredients set out in the CSP, whether alone or in combination with other medicinal ingredients. There is also an exception to those rights permitting manufacture for the purpose of export from Canada.

When to Apply
The deadline to apply for a CSP is 120 days from the grant of the NOC (if the patent is granted before the NOC is granted) or 120 days from the grant of the relevant patent (if the NOC is granted before the patent is granted).

In addition to this deadline, there is a timeliness requirement for making the application for a NOC in Canada in order to be eligible to apply for a CSP. Where an application for marketing approval has been submitted in any one of: the European Union, a country that is a member of the European Union, the United States, Australia, Switzerland or Japan, the application for a NOC in Canada must be submitted within twelve months of the first such application for marketing approval.

A transitional exception is provided for applications for CSPs that are filed by 21 September 2018: in such cases, the application for a NOC in Canada must be submitted within twenty-four months of the earliest application for marketing approval in any of the above-listed countries.

The government application fee for a CSP is initially set at $9,011, and will increase by 2% per year.

Conclusion
The addition of patent term extension in Canada to help compensate patent owners for delays in obtaining regulatory approval to sell new drugs brings Canada’s patent system into better alignment with those of its major trading partners. It also adds new complexities for patent owners to ensure that the requirements for obtaining a CSP are timely complied with.

Since patent rights are territorial, a patent application must be filed in each country in which patent protection is sought. In addition, the novelty requirement means that a patent application must be filed prior to the earliest non-confidential disclosure of the invention anywhere in the world, subject to a one-year grace period in certain countries such as Canada and the US. However, the Paris Convention for the Protection of Industrial Property (the “Paris Convention”), to which 177 countries are signatories (including Canada and the US), allows an applicant from one contracting state to use the filing date of their first-filed patent application as the effective filing date for subsequently filing applications in other contracting states if each subsequent application is filed within 12 months of the first-filed application’s filing date. Thus, in general, so long as an initial application is filed prior to any public disclosure, and subsequent applications in other countries are filed within 12 months of the first application’s filing date, the applicant may make public disclosures of the invention as of the first application’s filing date without violating the novelty requirement for the subsequent applications. This article discusses some considerations for deciding where and what to file as the first application.

For many applicants, a provisional patent application is an attractive option for the initial application. A provisional filing can help defer a portion of the filing costs since it requires lower filing fees than a non-provisional application, and does not need to include a full set of claims (i.e. the numbered claim paragraphs found in each patent which define the scope of protection conferred by the patent). If it is properly drafted with an enabling disclosure, a provisional application allows the applicant to make public disclosures of the invention as of the provisional application’s filing date, since the filing date of the provisional application may be used as the effective filing date for subsequent applications under the Paris Convention. A provisional application is not examined and cannot result in a granted patent, but acts as a placeholder for the subsequent filing of a non-provisional application. While a provisional application cannot be filed in Canada, Canadian applicants can file a provisional application in Paris Convention signatories that provide a provisional filing option (e.g. the US). To claim the effective filing date of the provisional application, a non-provisional application in a Paris Convention contracting state or a Patent Cooperation Treaty (PCT) application needs to be filed within 12 months of the provisional application’s filing date. Descriptions of any developments to the invention conceived after filing the provisional application (and before filing the non-provisional or PCT application) can be added to the disclosure in the non-provisional or PCT application, although any specific claims directed to such developments will have the effective filing date of only the non-provisional or PCT application rather than of the provisional application.

Where the applicant does not anticipate making further developments to the technology or does not need to defer costs through a provisional filing, or simply wishes to expedite the patent protection process, the applicant may decide to start with filing one or more non-provisional applications in the desired countries, or a PCT application (the latter would be followed by national phase filings in the desired countries). Strategic considerations–including the particular countries in which the applicant desires protection, budget and timing of available funds, prosecution strategy considerations for increasing the odds of obtaining an allowance, and any applicable litigation considerations–may determine whether it is preferable to file directly in individual countries or via a PCT application. For example, a PCT application allows the deferral of national filings (and the associated costs) by up to generally 30 months from the priority application. A PCT application also results in a Written Opinion on patentability by an International Searching Authority which may help inform the applicant’s national phase filing decisions as well as prosecution during national phase. Thus, a PCT application may be preferable in cases where the applicant desires patent protection in a larger number of countries, or needs further time to make filing decisions and acquire funding to support the patent filing and prosecution costs.

Where the applicant requires patent protection in a country that is not a signatory to the Paris Convention, then the applicant must file a separate patent application in that country prior to making any non-confidential disclosure of the invention. A list of all of the contracting states of the Paris Convention can be found here.  Countries that are not parties to the Paris Convention may nonetheless recognize a right of priority in some cases, e.g. Taiwan allows a foreign applicant to claim priority to a first-filed foreign application in certain cases, e.g. where the first-filed foreign application is in a WTO member state and filed by a WTO member national or filed in a country with a reciprocal priority agreement with Taiwan

In some countries, foreign filing license requirements or restrictions may dictate that the applicant file their first application domestically, if one or more of the inventors or applicants reside in or if the invention was developed in that country. Countries with foreign filing license requirements or restrictions include: the United States, China, Russia, India, France, Italy, Spain, Greece, Singapore, Malaysia and Vietnam. Some countries have foreign filing license requirements and restrictions with respect to applications covering particular subject matter (e.g. national security or military). Canada has a unique foreign filing license requirement attaching only to government employees.  Canada’s Public Servants Inventions Act imposes certain requirements on government employees who make an invention, including a requirement to disclose in the patent application that she/he is a public servant, and a requirement to obtain the consent of the appropriate minister prior to filing a foreign patent application. Failure to comply with a country’s foreign filing license requirements or restrictions may jeopardize any patent rights obtained and/or may result in sanctions.

Since patent filing requirements and restrictions vary between countries and depend on the particular circumstances, if you wish to obtain protection abroad it is advisable that you consult with a patent attorney prior to filing a first patent application.

by Amy Fong

In 2014, the Canadian government passed Bill C-31, which formally introduced amendments to the Trade-marks Act (the “Act”). These amendments were proposed to modernize Canada’s trademark laws and prepare Canada to accede to several international treaties including the Singapore Treaty, the Madrid Protocol, and the Nice Agreement. The changes are expected to be made effective in early 2019, after revisions to the Trade-marks Regulations (the “Regulations”) have been finalized.

In June 2017, the Canadian Intellectual Property Office (“CIPO”) published proposed amendments to the Regulations. Some of the more substantial changes to the Act and Regulations are highlighted below and include the removal of the requirement for declarations of use, shortened renewal periods, and the implementation of the Nice international classification system.

The “Use” Requirement
Current Canadian trademark law requires applicants to demonstrate use of a trademark in order to secure a registration. Applicants must submit a declaration of use either at the time of filing or after the application is allowed (where the application was based on proposed use).

Under the changes to Canada’s trademark laws, applicants will no longer need to specify whether or not the mark has been used in Canada at the time of filing an application or to commence use of the mark in Canada prior to registration. While the changes will undoubtedly simplify the application process, they are anticipated to have significant impacts on rights holders. Since applications will no longer contain an indication of when use of a mark began, that information will not be available to potential opponents or litigants. The increased opacity of the process may make opposition and litigation more frequent and uncertain.

Shortened Renewal Period
Currently, a trademark registration must be renewed every 15 years. The changes will reduce this renewal period to 10 years for renewals due after the amendments come into force. Where a trademark owner renews a trademark which is due for renewal after the coming-into-force (“CIF”) date, under the currently proposed regulations, the shortened renewal period will be applied.

The Nice Classification System
Accession to the Nice Agreement was a requirement for accession to the Madrid Protocol. The Nice Agreement establishes the Nice Classification which is a system for classifying goods and services. When the amendments to the Act and Regulations come into force, applicants and owners of trademark applications and registrations will be required to classify the listed goods and services under the Nice system. Application and renewal fees will be based on the number of listed classes. For applications and registrations involving more than one class of goods or services, the application and renewal fees will be higher than they are now.

Under existing Canadian trademark law, applicants are not required to classify the goods and services claimed in an application. Similarly, application and renewal fees are not dependent on the number of classes of goods and services claimed. This currently allows applicants to file for a trademark and claim many goods and services while paying the same fee as they would for only a single class. Potential applicants who are planning to apply for a trademark claiming more than one class of goods or services should consider applying before the CIF date to take advantage of the lower fees.

It is possible, but uncertain, that trademark owners may save money renewing a registration early, even if the deadline for renewal is not until after the CIF date, if the registration covers multiple classes of goods or services. The CIPO has provided inconsistent information as to whether owners completing renewals before the CIF date that are not due until after the CIF date will be required to pay the difference in the renewal fee if the renewal fee is greater under the new tariff of fees.

Registration of Foreign Trademarks that are Not Without Distinctive Character
Section 14 of the Act currently permits an applicant who owns a trademark registration in another country to register a mark in Canada which might otherwise be non-registrable if it is not confusing with a registered trademark and is not without distinctive character. For example, a mark which is descriptive of its associated goods is not normally registrable in Canada under section 12 of the Act, but could be registrable by virtue of section 14 if the mark had been registered and used abroad and is not without distinctive character in Canada.

Section 14 of the Act is being repealed and this avenue for obtaining a registration in Canada will no longer be available. Owners of foreign trademarks that are potentially descriptive should consider using this provision in relevant cases prior to the CIF date. While a mark that is potentially unregistrable pursuant to section 12 will still be able to be registered based on a showing of acquired distinctiveness pursuant to sub-section 12(2), the evidentiary requirements for a showing of acquired distinctiveness pursuant to sub-section 12(2) are considerably higher than what is required to establish that a trademark is not without distinctive character pursuant to section 14.

Associated Marks
Under the existing Act the owner of a trademark may register a confusing trademark if the applicant is the owner of all such trademarks. All such marks are known as “associated marks.” Currently, the owner of associated marks may not transfer an associated mark unless all of the associated marks are transferred to the same recipient. Under the changes to the Act, the owner will not be restricted from transferring ownership of associated marks.

The Madrid Protocol
Canada’s accession to the Madrid Protocol will mean that owners of Canadian trademarks will be able to apply for an international registration with CIPO, though which they may apply for trademarks in any country which is a party to the Madrid Protocol. Protocol applications are expected to streamline timelines and reduce costs for applicants. There are 98 contracting parties to the Madrid Protocol, including the United States, the European Union, Japan, Korea and China.

Currently, Canadians can only apply for international registrations if they maintain a “real and effective industrial or commercial establishment” in a member country. A real and effective establishment might include a branch office conducting transactions but might not include a mere warehouse. The member country in which the Canadian applicant maintains the industrial or commercial establishment would then be the “home country” for the purposes of the Madrid Protocol. For more information refer to this article on the Madrid Protocol.

Summary
The changes anticipated to come into force in early 2019 are expected to have an extensive impact on the Canadian trademark system. Potential applicants should consider whether they want to take advantage of the law as it currently exists before changes are made, especially with respect to the changes in filing and renewal fees.

By: John H. Lambert and Stephanie A. Melnychuk

“Patent prosecution” is a term used to refer to the road that a patent application follows en route to grant or, in some cases, abandonment. In Canada, participation in this process is typically ex parte and limited to patent applicants and their representative (i.e. their patent lawyer or agent). However, in certain circumstances, third parties may make their opinions heard during patent prosecution and after grant.

Examination and Prosecution – Protests and Prior Art Submissions
Third parties can file a request for examination, or even a “special order” accelerated examination in circumstances where failure to advance the patent application prejudices the rights of the third party requester. Third parties are also generally allowed to submit prior art and other non-patentability arguments to the Patent Office, although it is up to the Examiner to determine the weight of third party submissions.

Pursuant to section 34.1 of the Patent Act, any person may submit prior art (e.g. patents, patent applications, printed publications, etc.) that may be relevant to the patentability of any claim in a pending patent application. Hence, an intervener may interfere with the patent prosecution process by providing the Examiner with arguments that could be used to reject an applicant’s patent application. The Examiner will notify the intervener and the applicant that the prior art submission has been received, but will not inform the intervener about any actions taken.

In addition to prior art submissions, one of the other few exceptions to ex parte prosecution of Canadian patent applications is the filing of protests under section 10 of the Patent Rules.  There is case law that suggests section 10 of the Patent Rules allows third parties to file a protest against the grant of a patent on the basis that the patent application contravenes section 38.2(1) of the Patent Act for adding new subject matter.[1]

Even after a notice of allowance has been issued, an Examiner has discretion to consider protests and prior art submissions, and withdraw the notice before the patent grants.

Post Grant
After the grant of a patent, a third party may request re-examination of any claim of a patent by filing prior art and paying a fee. The third party requestor must include a written submission setting forth the pertinence of the prior art in relation to the claims of the granted patent. A re-examination board will consider whether a substantial new question of patentability has been raised by the prior art submission. If the re-examination board determines that a substantial new question of patentability has been raised, the patentee may be required to narrow or cancel some of the claims in issue. This may be an attractive way to challenge a patent without resorting to litigation.

Re-examination has drawbacks, which may impact its attractiveness to third parties. For example, once a proceeding is initiated, the patentee may cancel or suggest amendments to the issued claims or submit new claims, provided the scope of the claims is not broader than that of the original patent.  The third party is unable to make further submissions with respect to the patentability of the issued claims and any amended or new claims.  Further, while the patentee has a right of appeal, the third party lacks standing to appeal.  The prior art available to the third party is also restricted.  Prior uses and sales cannot be raised.  Only patents, applications, and printed publications may be submitted for review with a request for re-examination.

In important cases, interested parties may wish to consider initiating a court proceeding to impeach an issued patent. All invalidity issues may be raised, but the interested party runs the risk of facing a counter-claim for infringement.  The significantly higher costs and longer timeline associated with an impeachment action should also be considered with experienced patent counsel when determining whether re-examination or an impeachment action is the best way forward.

Conclusion
Multiple avenues exist to challenge the grant of a patent in Canada in appropriate cases, whether before or after the patent is granted. Re-examination provides third parties with a cost-effective mechanism for challenging the validity of a granted patent, although a court action to impeach the patent may be preferable in appropriate cases.

[1] Pharmascience Inc. v. Commissioner of Patents et al. (1998), 85 C.P.R. (3d) 59 at 66 (FC), affirmed 5 C.P.R. (4th) 428 (FCA)

By: Jeff K. Sun and Stephanie A. Melnychuk

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