In Canada, examination of applications occurs only upon request and such a request can be deferred for up to five years from the filing date. Once a request for examination has been made, the application is placed in queue and is examined relative to its order in the queue. In certain situations, an Applicant may wish to expedite or streamline prosecution thereby reducing financial and human resources. There are three options for requesting expedited examination in Canada:
- the Patent Prosecution Highway program;
- Special Order, under paragraph 28.(1)(a) of the Patent Rules; and
- expedited examination of Green Technologies under paragraph 28.(1)(b) of the Patent Rules.
Patent Prosecution Highway (PPH): Now Available for European Applications
The PPH project is an initiative aimed at expediting the patent prosecution process, whereby a patent office in one country may rely on the search and examination work conducted by a participating foreign patent office indicating that a claim is allowed or allowable. This expedited process can reduce prosecution costs to both the patent applicant and the patent office.
The Canadian Intellectual Property Office (CIPO) has entered into PPH agreements with patent offices in a number of foreign countries, including the United States (US), United Kingdom, Germany, Japan, South Korea, Denmark, Finland, and Spain. In January 2015, CIPO entered into a new pilot agreement with the European Patent Office. This bilateral program is based on both nationally filed and Patent Cooperation Treaty (PCT) applications. Once the applicant has obtained allowable claims in Europe or a participating PPH country, a request for expedited examination under the PPH can be filed with CIPO, provided that the Canadian application entered the National Phase on or after January 6, 2015.
In order to enter the PPH, the Canadian claims must "sufficiently correspond" to the allowed claims, the application must be laid open to public inspection, and examination must be requested. Amendment of the claims is permitted at the time of the request and it is noted that "sufficiently correspond" is flexibly interpreted in Canada (e.g. "use' claims may be pursued in Canada on the basis of allowed "method" counterparts). Importantly, the request must be made before examination in Canada has commenced. According to statistics released by CIPO, PPH applications have a higher grant rate and receive fewer Office Actions than applications being examined in the regular stream. There are no government fees associated with entering the PPH program.
Special Order
In cases where expedited examination is desired, but examination has already commenced, it may still be possible to advance prosecution by requesting "Special Order" under paragraph 28.(1)(a) of the Patent Rules. In order to be accepted for Special Order status, the Applicant must pay a $500 government fee and submit a declaration that states that failure to advance the application is likely to prejudice the Applicant's rights.
The Canadian Patent Office requires that an application be examined within 2 months of receiving a request for examination under Special Order status. A response from the Applicant is required within 3 months from the date of issuance of an Examiner's report and an Examiner's report must be issued within 2 months of receiving such a response.
Under the current Act and Rules, Canada has flexible abandonment and reinstatement procedures. It should be noted that if an application that is being prosecuted under Special Order is allowed to go abandoned, it will lose its Special Order status. This is not the case with applications being prosecuted under the PPH.
Green Technologies
If an application relates to "a technology, the commercialization of which would help to resolve or mitigate environmental impacts or conserve the natural environment and resources" examination may be advanced under paragraph 28.(1)(b) of the Patent Rules, by requesting advancement and submitting a declaration. No government fee is required.
Conclusion
In Canada, there is an opportunity to defer examination up to 5 years from the filing date, which may be desirable in cases where an Applicant wishes to delay examination and, consequently, defer costs and decisions. There are several routes for expediting patent examination in Canada and for reducing worldwide prosecution costs. The route that an Applicant chooses will depend on the technology and the status of prosecution of the application in Canada and elsewhere. Borden Ladner Gervais can assist in determining an appropriate strategy for accelerating or deferring examination of a particular case in Canada.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
