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When You Need Action on Your Patent Application: Expediting Examination in Canada

Canada has a deferred examination system, wherein patent applications are examined only upon request. Once examination has been requested, patent applications enter a queue. The Canadian Intellectual Property Office (CIPO) currently has a 2-3 year backlog of applications awaiting examination.

In appropriate cases, there are a few ways for an applicant to accelerate the examination of an application. Expedited examination can reduce the wait time for a first office action to as little as 2 to 3 months.

Accelerated Examination under Rule 28(1)(a)

If failure to advance the application is likely to prejudice the applicant’s rights, an applicant can ask CIPO to expedite examination of the application under paragraph 28(1)(a) of the Patent Rules. The applicant has to pay a CA$500 government fee and make a statement that failure to advance the application is likely to prejudice the applicant’s rights. The application must be published before it can receive expedited treatment. Canadian patent applications are automatically published by CIPO 18 months after the priority date. If publication has not occurred when expedited examination is requested, immediate publication can be requested.

Accelerated Examination under the Green Tech Initiative

An additional mechanism to expedite the examination of applications relating to so called “green technology” is provided under paragraph 28(1)(b) of the Patent Rules which came into force on March 3, 2011 .

Under this programme, an applicant can request expedited examination of an application by submitting a statement 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”. The request does not currently require any supporting affidavit or further explanation. No extra government fee is required. In order to receive expedited treatment under the Green Tech Initiative, the application must be published.

Patent Prosecution Highway (PPH)

The Patent Prosecution Highway (PPH) is an initiative currently being used by a number of intellectual property offices around the world. The PPH provides a means of accelerating examination of patent applications where examination of a corresponding application has already been conducted by another intellectual property office and has resulted in one or more allowed claims.

CIPO currently has PPH pilot projects with the patent offices of: the United States, Japan, United Kingdom, Spain, Finland, Denmark, Germany and South Korea.

A patent application examined in the United States, Japan, United Kingdom, Spain or Finland can potentially serve as the basis for requesting expedited prosecution of a Canadian application under the PPH if:

the Canadian application claims priority to the corresponding application or vice versa,

the Canadian application and the corresponding application share a common priority document,

the Canadian application and the corresponding application are national phase applications derived from a common PCT application having no priority claim, or

the Canadian application is a divisional of another Canadian application that meets any of the above criteria.

Slightly different requirements apply for Canadian applications corresponding to Danish, German, or South Korean patent applications.

There is currently no government fee for requesting expedited prosecution under these PPH pilot projects. The request requires filling out a specific PPH request form and often requires amending the Canadian claims to conform to those allowed by a foreign patent office.

Strategic Considerations

According to CIPO’s announced service standard, the target turnaround time is the same for the three types of expedited examination, whether under Rule 28(1)(a), Rule 28(1)(b) (i.e. GreenTech), or PPH, i.e., first action within 3 months after CIPO accepts that the application qualifies for expedited examination.

A request under Rule 28(1)(a) is more generally applicable, although it requires a CA$500 government fee. Currently, requests under Rule 28(1)(b) or the PPH do not require any extra government fees.

The PPH likely has a higher rate of first action allowance since an application under the PPH contains claims similar to claims already found allowable by another patent office. The PPH might also be slightly faster because Canadian examiners know in advance that the claims to be examined have already been allowed by another patent office and so may consider PPH cases easy to move ahead.

By Edmund Y. Xie

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